The Court of Milan, with judgement No. 6096/2013, published on 2 May 2013, delivered its decision in relation to the well-known controversy between Gucci and Guess.

The facts: Gucci, in May 2009, summoned the American maison before the Court maintaining that the sharing of the same initial letter (“G”) was not a sufficient reason to legitimize the use of distinctive signs excessively focussed on the use of the “G” and judged too similar to its own signs.

The marks enforced were the following: the “G” in italics; the word “Gucci” in block letters with the characters gold in relief (against the word “Guess” with identical graphic format); the two opposing “G” letters; the squared “G” letters and their serial reproduction; five groups of two inverted opposing “G” letters; the letter “G” by itself with dots and its serial repetition; the striped green/red/green ribbon; the “floral” fabric.

Gucci had accused Guess of infringement and asked the Court to ascertain that, through the use of these signs, the American company had become responsible also for the performance of acts of unfair and parasitic competition, ex article 2598 Civil Code, The company of Florence intended to demonstrate the studied and specific strategy, implemented by Guess, of the systematic imitation of its signs and goods, aimed at becoming its alternative, in a lower price range.

In its appearance before the Court, Guess did not only defend itself by rejecting the accusations but also, in counter-claiming, accused 17 Gucci marks, from amongst Italian, community and international marks, of invalidity maintaining that they were null for lack of the legal requirements or, and subordinately, that they had lapsed as a result of loss of distinctive capacity or for lack of use.

Having examined the deeds and the judgement already given between the parties by the District Court of New York, reconstructed the historical background of the productions, the distinctive signs and the designs in conflict, evaluated the characteristics of the Gucci marks, confronted the rights of the plaintiff with the Guess products, as well as the goods one with the other, the judgement of the Milanese Court was the following; the American maison does not violate the rights of Gucci and its conduct does not include unfair or parasitic competition as its goods are sufficiently different. Moreover: six marks owned by the plaintiff were declared null.

The Court had examined the charges of infringement and servile imitation individually – and then in their entirety, to verify parasitic competition.
From the reasons, it is possible to draw points of importance:
– in evaluating infringement, as always, the criterion of likely confusion between signs follows the opinion of the average consumer; in the clothing sector, above all for luxury goods, the average consumer will have an unquestionable propensity to appreciate the differences and will be particularly attentive;
– the marks composed of only one letter are to be considered “weak”. They are valid only as composed of the particular graphic format indicated in the registration (as the “G” of Gucci in italics). In the judgement of likely confusion, this particular graphic format cannot be disregarded;
– on the contrary, if the graphic format were not characteristic, they would be considered null, without secondary meaning. Thus the judgement for the “G” by itself (or repeated serially) with the dots, because according to the Court, “this is a simple “G” not made distinctive by a particular graphic element predominance, or by any kind of ornament or decorative element”.
The squared “G” of Gucci would have had the same result had it been registered;
– in the case of marks composed of a drawing it is necessary to consider that “a shape can be registered as a mark only if and because it carries out essentially or prevalently the typical function of the mark, and therefore performs a distinctive rather than aesthetic-ornamental function”
– a shape mark is null ab origine for lack of distinctive capacity when the shape gives substantial value to the product: these are shapes (such as the floral motif of Gucci) that constitute a special ornament, such as to induce the consumer to purchase the product precisely for its mere aesthetic value.

The application of these principles determined the outcome of the judgement; there is no doubt, however, that the Appeal Court must also judge on the question.

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