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Gucci Awarded $4.7M in Guess Case

Luxury brand wins three-year legal battle, but fails to get big payout.

NEW YORK — Gucci won its class-versus-mass trademark battle against Guess Inc., but it wasn’t exactly the financial victory the brand was seeking.

This story first appeared in the May 22, 2012 issue of WWD.  Subscribe Today.

A federal judge in Manhattan on Monday awarded Gucci $4.7 million in combined damages from Guess and its footwear licensee Marc Fisher Footwear — a fraction of the more than $221 million Gucci wanted.

Gucci argued at trial that the Guess designs in question were “studied imitations of Gucci trademarks” and that the company had “knocked off” more than $200 million in its product.

Guess’ chief executive officer Paul Marciano, who testified at the trial, issued a statement late Monday noting the case should have been resolved by the two companies and not the court.

“Gucci’s request in court was unconscionable by its scope and the amount of damages they claimed,” Marciano said. “They ‘forgot’ to claim certain trademark rights that Guess used for 23 years, such as the script logo and the court sided with Guess.”

The ceo hinted that the legal battle might not be over.

“I believe Gucci is currently court-forum shopping to find a friendly court but Guess will vigorously defend our rights in every jurisdiction,” he said, without elaborating.

An e-mail to Gucci’s lawyer was not immediately returned Monday night.

Still, the three-year-long case and subsequent ruling could have a chilling effect on the fashion world, limiting one company’s use of a design that might be similar to another’s. The Gucci v. Guess case was the second high-profile trademark infringement suit working its way through the New York courts. Gucci’s sister brand Yves Saint Laurent, also part of PPR, is the subject of a trademark infringement suit filed by Christian Louboutin over the use of red soles on shoes. A ruling in that case is pending.

Marciano said an injunction issued by the court applied to a logo that Guess stopped using three years ago after Gucci filed its complaint. He also said the company would continue to use the Quattro G diamond pattern without Gs at the point.

Gucci filed the suit in 2009. At issue was whether Guess infringed on Gucci’s rights by using a variety of design elements, including a block letter “G,” a combination of green-and-red stripes and diamond-logoed motifs.

U.S. District Court Judge Shira Scheindlin wrote that Gucci had proven its dilution claims under the Lanham Act and limited Guess’ use of the Quattro G pattern in brown and beige colorways. The judge also found that Marc Fisher’s use of the green-red-green stripe was identical to Gucci’s trademark and likely to cause trademark dilution.

Scheindlin, however, denied Gucci’s claim of counterfeiting, noting “courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch.”

Gucci was granted profits for Guess’ use of the Quatro G pattern in brown and beige colorways and the green-red-green stripe.

Gucci was also granted a permanent injunction barring Guess from using the Quattro G pattern, the green-red-green stripe and certain other square G marks.

“Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion — what Oscar Wilde aptly called ‘a form of ugliness so intolerable that we have to alter it every six months,’” Scheindlin wrote. “With the instant [i.e., immediate] disputes now resolved, and with Gucci’s entitlement to the relief noted above, it is my hope that this ugliness will be limited to the runway and shopping floor, rather than spilling over into the courts.”