A NY district court issued a decision in the three-year legal battle between Gucci and Guess over the latter company's alleged infringement of Gucci’s trademarks and a trade dress. Guess was found to have infringed three of the marks, as well as the trade dress, but Gucci did not receive anywhere near the amount of compensation it sought, with Gucci’s procrastination in enforcement and absence of evidence of actual damages being some of the factors that lowered the amount of award.
was filed by Gucci more than three years ago, on May 6, 2009, alleging that Guess infringed the following four of Gucci’s trademarks and a trade dress:
(1) The Green-Red-Green Stripe mark (“GRG Stripe”)
(2) The Repeating Interlocking GG Pattern
(3) The Diamond Motif Trade Dress
(4) The Stylized G Design mark (“Stylized G”)
(5) The Script Gucci Design Mark ("Script Gucci")
In its 116 page opinion, the judge found Guess to be an intentional and willful infringer. But the court also found that Gucci’s delay in bringing the claim unduly prejudiced Guess and that Gucci provided no evidence of actual damages, as well as failed to meet its burden of proof in its request for royalties.
In the end, the court permanently enjoined Guess from using the three trademarks and the trade dress and ordered Guess to disgorge its profits received from using the trademarks.
As to the Script Gucci mark, the court found that the script mark used by Guess (shown below) did not infringe.
Gucci was awarded $4,66 million, while both companies received the following message from the judge:
“Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion – what Oscar Wilde aptly called “a form of ugliness so intolerable that we have to alter it every six months.” With the instant disputes now resolved, and with Gucci’s entitlement to the relief noted above, it is my hope that this ugliness will be limited to the runway and shopping floor, rather than spilling over into the courts.”
Not surprisingly, Guess did not admit losing the case, instead making the following statement through its CEO Paul Marciano:
“Guess shares the sentiment expressed by the Court that disputes like this should be resolved by companies rather than spilling over into the courts. ...
“Gucci's lawsuit asked for damages of approximately, $100 million dollars,
tripled. The opinion and order resulted in an award of damages of
approximately $2.5 million against Guess and our handbag and belt licensee and approximately $2 million against our footwear licensee. ..
"The results in this case show that Gucci grossly overreached in
its claims and the entire case could have been avoided with a single letter or phone call."
The case is Gucci America v. Guess Inc., 09-4373, U.S. District Court, Southern District of New York (Manhattan).