Guess Inc. emerged from its second trademark faceoff against Gucci with a big win.
An Italian court in Milan rejected Guccio Gucci SpA’s claim that Guess had violated several of its trademarks and even took the step of canceling three of the marks Gucci had registered for Italy and the European Community.
Gucci said it will “certainly bring an appeal.”
It’s a win for Guess, after Gucci prevailed last May in federal court in Manhattan on a suit raising ostensibly the same issues. Gucci won a qualified victory, when the court awarded it only $4.7 million in damages, a fraction of the more than $221 million it sought.
The Milan decision, an 83-page verdict made public Friday, serves to cancel the diamond pattern, G logo and “Flora” pattern trademarks previously registered by Gucci in Italy and the EU, noting specifically that the “Flora” logo is “not distinct.” Additionally, the court held that Guess’s Quattro G-diamond pattern isn’t related to Gucci’s interlocking double-G pattern.
Guess sought the nullification of the designs in a counterclaim following the 2009 filing of the suits in New York and Milan by Gucci.
A Guess spokeswoman confirmed that Gucci’s other suits against Guess in both China and France are ongoing.
Paul Marciano, chief executive officer of Guess, commented, “In my opinion, the three-year battle in New York and four years in Milan was a result of massive and unnecessary litigation that should have been easily resolved with a simple phone call, which Gucci never made.”
Marciano continued, “The tactics of Gucci are nothing less than bullying. Because of their endless resources, Gucci has been forum shopping all over the world to try and stop Guess from expanding its successful accessories business. It’s fundamentally wrong and unconscionable.”
Gucci described the use of a number of G-based logos by Guess as “unlawful and parasitic free-riding on Gucci’s trademark and, in general, its brand image.”
Gucci said it would “certainly bring an appeal against the above decision, which in its view is potentially dangerous for the protection of ‘Made in Italy.’ In particular, Gucci will ask that the Court of Appeals entirely set aside said decision, by granting both its trademark infringement and unfair competition claims against Guess.”
Pier Luigi Roncaglia, of the Italian law firm Studio Legale SIB, which provided outside counsel for Gucci, said that the trademark matter was secondary in the decision and that the marks were generally not being used by the brand.
“The important aspect of the decision was unfair competition,” he told WWD. “Our main argument, and the one that was recognized in the case in New York, was that those marks were associated with the reputation of Gucci and that Guess was trying to get a free ride based on Gucci’s reputation. That was the core of the litigation and the judge [in Milan] ignored the decision in the U.S., which essentially said that Guess didn’t independently create those designs. That will be the basis for our appeal and the strongest argument for a reversal of the decision.”
Daniel Petrocelli of the law firm O’Melveny & Myers LLP, which has provided outside counsel for Guess for many years, asserted, “This case was heard in the birthplace of Gucci and the bottom line is that every single one of its claims was rejected and Guess’ counterclaim was granted.”
He said that Gucci and Guess were still waiting for the scheduling of cases in China and France.
A trademark attorney not involved in the case, Robert Tucker, a partner at Tucker & Latifi LLP in New York, said, “That a court in New York and another in Milan came down with different findings on the same issue is not unusual. Gucci was probably buoyed by the decision in New York and figured it had a slam-dunk in Italy, where it would enjoy hometown advantage.
“These two companies shouldn’t be litigating,” he said. “Any time it’s one titan versus another, it’s really important to look at the downside.”
“I think what’s so interesting about the #MeToo movement and this whole new wave of feminism in general, is that women are finally seeing, ’Oh I can start my own company, oh I can lear to code, oh I can leave my nine-to-five job and do the thing I want to do,” said @brooklyndecker ahead of her @sxsw talk for @createcultivate. The former model took the stage to share wisdom about networking and female-driven entrepreneurship. #wwdeye #sxsw (📷: @jgreenery)
“I was making the guacamole when my scout saw me,” says model @stuckinteenage on being discovered just six months ago while working at @chipotlemexicangrill. Since then Williams has signed with @dnamodels, walked in her first show at @calvinklein and landed on the cover of @vogueitalia – a high point of any model’s career. To read @lisajlockwood’s full interview with the model on her experiences thus far, head to WWD.com – link in bio. (📷: George Chinsee)
“I love the idea of dialogue, period. It’s where I’ve always gotten my inspiration from: hearing other women speak, their journeys and their paths,” said @hereisgina, who delivered the keynote speech at the @sxsw conference for @createcultivate, the online platform and conference series for women. For her two panels, Rodriguez chose female empowering, female-led and female entrepreneurs to focus on. Head to WWD.com to read more about her thoughts on Time’s Up, growing up in a family of women and why we “need a girls’ club.” #wwdeye #sxsw (📷: @jgreenery)
Leading luxury brand are shaking things up to keep up with streetwear. Case in point: the arrival of @mrkimjones as artistic director of @diorhomme. Jones, who succeeds @Kris_Van_Assche, is seen as one of the handful of designers who can actually straddle the luxury and streetwear worlds — which could lead to even more changes at established brands. What could this mean for the rest of the menswear landscape? Head to WWD.com to find out what experts predict #wwdfashion (📷: @franckmura)
“It’s like buying groceries. You’re going to buy the best mango, the best mozzarella, the best things. You have to, or others are going to take it all,” said @gabrielahearst on why she uses only the finest fabrics. Last week, Hearst received her first @cfda nomination for Womenswear Designer of the Year, and earlier this month she opened a permanent showroom in Paris. To read @jessiredale’s interview with the designer and find out why this is shaping up to be a big year for her, head to WWD.com. #wwdfashion (📷: @francoisgoize)
“It’s an interesting thing, playing a younger version of your mother. It’s an interesting concept. I adore my mom and love her in every capacity, but it was just something that had never crossed my mind,” says @anniemstarke on playing a young Joan Castleman in “The Wife.” The same role will be played by her mother Glenn Close. Read more about her growing up in the film industry as the daughter of producer John H. Starke and Close and what she has planned for the future #wwdeye (📷: @nataliamantini)
@asics is launching a new streetwear sneaker inspired by its latest ambassador, @steveaoki. The Hyper-Kenzen x Aoki, which will launch at @footlocker stores exclusively tomorrow, is a slip-on style that incorporates the brand’s proprietary Gel technology through beads integrated into the midsole for comfort and endurance. Read the full story on WWD.com.