Gucci loses their registered trademark for their iconic GG logo in the UK

GUCCIO GUCCI S.P.A. V GERRY WEBER INTERNATIONAL AG

Gucci loses their trademark for their iconic GG logo in the UK.

It has been brought to the Goss-IPgirls attention courtesy of Aaron Wood that Gucci the Italian fashion and luxury goods brand, has (had revoked) lost its trademark for its famous interlocking GG Monogram Signature Logo in the UK. 

In a decision given on the 5th of November which concerned an application for revocation of Gucci’s interlocking double GG mark seen above, filed (on the 15 June 2012, by Gerry Weber International AG (“the applicant”)) under section 46(1)(b) of the Trade Marks Act 1994 for revocation on the grounds of non-use.

It was claimed that no use was made of the mark for the goods in class 3, 14, 18 and 25 as registered in the five year period 1 February 2003 to 31 January 2008; and alternatively, no use was made of the mark for the goods as registered in the five year period 15 June 2007 to 14 June 2012.

In an interesting set of proceedings, Gucci were able to retain the registration of their iconic GG trademark for non-medicated toilet preparations; perfumes in class 3, showing evidence that the mark was used from October 2010 for the fragrance Gucci Guilty in the UK.

However their trademark for ready to wear and couture clothing, handbags, wallets, sunglasses, watches, shoes, jewellery, and associated accessories, in classes 14,18, and 25 were revoked from 1 February 2008 for all other goods for which it is registered. 

The decision referred to the case of Stichting BDO and others v BDO Unibank, Inc and others [2013] EWHC 418 and jurisprudence from the Court of Justice of the European Union (“CJEU”) in relation to genuine use of a trade mark.

The decision to revoke the mark was based heavily on the poor evidence that Gucci filed.  Who were pulled up for making broad claims without referring to specifics for evidence that fell far short of the mark for showing genuine use. Gucci's evidence put forward about its reputation, and the company’s length of trading were said to be of no assistance “evidence of the fame of the proprietor of a mark is not evidence of use of a mark owned by that party”. Gucci held that the registered proprietor advertises in national magazines and the press, but were unable to show any such advertisements. (The only advertisement which were shown were dates from 1981, over two decades before the relevant dates).  

The Goss-IPgirl is quite shocked at the evidence put forward by Gucci, which was insufficient to show any real commercial exploitation of the mark on the market for the relevant goods or services, and to be deemed as more than merely 'token' use. This is a shocking decision for such a huge luxury fashion brand and the Goss-IPgirl wonders if this will act as warning to other large luxury fashion brand that they either have to ‘use it or lose it’ who are often guilty (excuse the pun) of trademark squatting that their are serious ramifications for non-use, in the UK.

The Goss-IPgirl would like to know your thoughts?

(If interested, the decision can be read here.)