Guess why Gucci’s® Trademarks failed: How Image Rights provide brand protection.

By Dr Angela Adrian

Categories

Strategic brand management is at the core of any global company’s success. Sound traditional strategy advocates that companies protect their patents and trademark rights early and proactively. However, this advice is dated and static. A new dynamic and flexible intellectual property right has arrived: image rights.

Image rights encompass the commercial exploitation of a brand’s identity and associated images linked to that brand. They are related to the distinctive expressions, characteristics or attributes of, or associated with, a brand’s personality. They can grow and develop in tandem with your brand. Just as you do not have to register your child’s birth and existence each year, nor do you have to register your brand’s growth and changing personality. You just add an image to your portfolio as if you were adding a photo your family album. Image means the public perception, not just a snapshot. That is why it is defined as: “the voice, signature, likeness, appearance, silhouette, feature, face, expressions (verbal or facial), gestures, mannerisms, and any other distinctive characteristic or personal attribute of a personage, or . . . any photograph, illustration, image picture, moving image or electronic other representation (‘picture’) of a personage and of no other person . . .”

The dynamic aspect of image rights help to protect against the genericide of a brand. A trademark is said to become genericized when it began as a distinctive product identifier but has changed in meaning to become generic. The House of Gucci® provides a cautionary tale as to how this occurs.

Gucci’s® trademarks have been at risk. The brand has not been maintaining its image properly vis-à-vis its trademarks. There have been claims that the ‘G’® logo is generic as well as having fallen out of use. Gucci® first filed a lawsuit against Guess® in 2009 – in both New York and Milan – accusing the brand of counterfeiting, unfair competition and trademark infringement, with particular reference to the use of a similar ‘G’ stamp appearing on shoes and accessories. Gucci® lost a four-year legal battle against Guess® in Milan. Not only did Guess® ask the Tribunale di Milano dismiss Gucci’s® claims, but also declare its trademarks invalid on absolute grounds of non-registrability or, alternatively, loss of distinctive character. The Italian court agreed by not only confirming that Guess® copied none of Gucci’s® trademarks, but also declaring some of Gucci’s® trademarks invalid for lack of distinctive character, including the Gucci® Flora-related trademarks (national trademark no 971291, and Community trademarks 4462735 and 5172218) invalid. (See, Guccio Gucci Spa v Guess? Inc, and Guess Italia Srl, Tribunale di Milano, Sezione specializzata in materia di impresa (Sez A), Sentenza no. 6095/2013, RG 36857/2009, Judgment of 10 January 2013).

The case in New York proceeded to a bench trial before Judge Shira A. Scheindlin, where Gucci® largely won its claims against Guess® based on trademark infringement and dilution claims, obtained a permanent injunction against Guess® and its licensees, and the cancellation of one of Guess’ ® marks. “Gucci® firmly believes that the decision of the court of Milan is extremely incorrect, in particular because, in Gucci’s® view, such decision does not take into account that Guess’® use of trademarks similar to Gucci’s® ones – famous, well-known and appreciated around the world – displays an unlawful and parasitic free-riding on Gucci’s® trademarks and, in general, on its brand image,” read a release from the fashion house. (See, Gucci v. Guess?, 2012 U.S. Dist. LEXIS 70833 (S.D.N.Y. May 21, 2012)).

Nonetheless, in a decision by the UK Intellectual Property office of 5 November 2013, Gucci’s® trademark for its interlocking GG® logo has been revoked in certain classes on the grounds of non-use. The mark was registered in 1984 for goods in classes 3 (broadly for cosmetics, perfumes and toiletries), 14 (jewellery), 18 (bags and purses etc.) and 25 (for various items of clothing in addition to scarves, socks, belts and shoes). The applicant was fashion brand Gerry Weber, who made their application on the basis that there had been no use of the mark during a five year period (U.K. TMA (1994) s46(1)(b)).

Gucci® followed traditional advice:

  1. They filed for Copyright protection for their designs. This is necessary in the United States to enforce any copyright claims.
  2. They filed Trademark applications in all countries where their products were sold.
  3. They recorded these Trademarks with the appropriate Customs Offices around the globe to ensure proper policing and enforcement against counterfeit activity.
  4. The ensured that their Distributor Agreements allowed for assistance in policing and preventing piracy.

However, traditional strategy failed because:

  1. They did not keep an organized portfolio to track their renewal deadlines. Nor, did they update their portfolio with new applications as their brand developed.
  2. They did not seem to have a Global Trademark Monitoring system in place in order to catch these knock-off ‘G’s early.
  3. They did not seem to police the Internet very well in order to enforce their rights. There was no strong clear message discouraging pirates and infringers.
  4. Their Brand Marketing was also not a clear strong message. They rested on their laurels.

Making intelligent branding decisions is critical in today’s global marketplace. Smart decisions must be made about which trademarks to adopt, where to register those marks, and how to enforce them. Gucci® is a very important case as it is relevant to the on-going international battle over what will constitute genericide. Likewise, this will have huge ramifications on counterfeiting.  If a major label like Guess® can copy Gucci®, so can anyone else. A Registered Image becomes the last bastion once trademarks have failed through generification. Registering before one enjoys universal recognition is important.  Guess is heading towards a major come-uppance because they are obliterating clothing brand cache. People buy cheap ‘G’s to give the impression of buying a Gucci® ‘G’ ®. With these on-going lawsuits, the Guernsey Registry would be in a difficult position determining which images would be acceptable representations of the Gucci® personage. Other brands may want to consider protecting themselves before it becomes too late.

 

© Icondia 2015