• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
      • Eva Maria Amoah
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

European Court: Gucci loses two trademark appeals against Guess

24. October 2016

Luxury brand Gucci has lost two trademark appeals at the European General Court, in the latest round of the Gucci vs. Guess battle that started back in 2012. In two decisions made on October 11 (first, second), the General Court dismissed both appeals from Gucci. 

Last week the EU General Court (Third Chamber) ruled against Gucci in two trademark matters. The first claim concerned Guess’s current European trademark registration for its four interlocking capital letter ‘G’ stylised logo, with the second claim concerning the label’s pending application for an international trademark for its interlocking logo. The Italian luxury brand Gucci argued that Guess’s logo infringed on its international and European Trade trademarks for its own interlocking ‘G’ logo. In addition Gucci argues that Guess ‘G’ logo was too similar to its previous ‘G’ logo.

gucci_vs_guess_mark_g
Left: Guess’s already registered Mark, trying to extend to an International Mark // Right: Gucci’s registered Trademarks

In July 2014, the Cancellation Division at the European Union Intellectual Property Office (EUIPO) rejected Gucci’s application for a declaration of invalidity. One month later Gucci filed a notice of appeal. The appeal was dismissed in May 2015 by the Fourth Board of Appeal of the EUIPO, which found that the “signs at issue gave a completely different overall impression, with the result that they could not be regarded as similar”.

Gucci appealed claiming that the signs are highly similar, inasmuch as each of them consists of a combination of capital ‘G’ letters, with the result that they will convey the same overall impression to the relevant public, the attention of which will be attracted more by the element ‘g’, which they have in common, than by their minor differences. Furthermore, the earlier marks have an exceptionally high level of distinctiveness and an indisputable reputation. In addition, the likelihood of confusion is further increased by the fact that the opposition was based on the earlier marks’ membership of a family of marks, which all consist of a combination of capital ‘G’ letters.

No likelihood of confusion

The General Court dismissed the appeal: “Contrary to the applicant’s arguments, the relevant public, which will not break down the contested mark into its various elements, but will retain the image of the sign as a whole, will not perceive in that mark the capital letter ‘G’, but rather an abstract ornamental motif.”

The Court further held that Guess’s logo “could be perceived both as reproducing stylized letters, such as the capital letter ‘X or the letter ‘e’, and as a combination of figures and letters, such as the figure ‘3’ and the letter ‘e.’“ Gucci’s marks clearly consist of “the capital letter ‘G’ positioned in a normal way and that that on the right, which was inverted, mirrored it.”

boxing-winner-gucci-vs-guess

The General Court held that “the marks at issue create a different visual impression” and even if Gucci can be shown that Guess’s logos were originally based on the letter “G,” that does not change the fact that the two brands’ trademarks are “dissimilar,” of “completely different structure,” and give a “completely different overall impression.”

Since Gucci, the party that initiated the proceedings, was unsuccessful, the court has ordered it pay the relevant costs associated with the case, including the costs incurred by Guess before the Board of Appeal of the European Union Intellectual Property Office.

 

Do you need help in protecting your trademark?

Beside your mark, is there another trademark that could confuse similarity with yours? Speak to us so that we can examine your case and do the necessary legal steps to protect your trademark!

Request a free call-back without and obligations now:

Call-to-Action-Graphic-Request-a-free-Callback

Source: Judgement of the General Court (Third Chamber) #1 + #2

  • share  
  • share 
  • share 
  • tweet 
  • share 

Category iconTrademark Law Tag iconEUIPO,  European Union Intellectual Property Office,  Gucci,  Guess

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

25. February 2022
CODE-X vs. Cody’s: Likelihood of confusion in drinks?

CODE-X vs. Cody’s: Likelihood of confusion in drinks?

24. February 2022
EOS lip balm no 3D trademark – appeal before ECJ not admissible

EOS lip balm no 3D trademark – appeal before ECJ not admissible

21. February 2022
CFI: Pumpkin seed oil + PGI symbol

CFI: Pumpkin seed oil + PGI symbol

15. February 2022
SPOTIFY v POTIFY – a ‘pot’ app

SPOTIFY v POTIFY – a ‘pot’ app

10. February 2022
CFI: Shoes MADE IN ITALY

CFI: Shoes MADE IN ITALY

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]