Guess Must Pay Gucci at End of ‘Ugly’ Design Spat

     MANHATTAN (CN) – A federal judge urged fashion houses to keep “ugliness” on the runway rather than in the courts in a 116-page decision that orders Guess to pay Gucci more than $4.5 million for trademark violations.



     “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,'” U.S. District Judge Scheindlin wrote.
     “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,” she added.
     Disregarding that remark, Gucci CEO and President Patrizio di Marco applauded the decision.
     “The company has a responsibility to those who have devoted themselves to the great traditions and excellence of the Gucci brand throughout its over 90 year history, and who have successfully maintained the highest levels of luxury and exclusivity,” di Marco said in a statement. “Gucci is extremely pleased with this decision, which should serve as a powerful deterrent for those who attempt to unlawfully exploit Gucci’s intellectual property.”
     Attorneys for Guess did not return a request for comment.
     Toward the beginning of Scheindlin’s ruling, she took some shots at Guess’ business model, which she said exposed the designer as a “trend follower, not a trend leader.”
     “In anticipation of each selling ‘season,’ Guess’s in-house design team researches trends in the fashion industry, and creates apparel designs consistent with the carefully cultivated Guess brand,” the decision states. “Guess’s in-house counsel checks these designs for compliance with intellectual property laws.
     “Guess provides its licensees with ‘trend inspiration’ via semi- annual trend design meetings. At these meetings, Guess distributes ‘trend design books’ that include cuttings from magazines, trend watch services, and the results of shopping trips, amongst other things, all in an attempt to create a cohesive look and feel across all Guess-branded products.”
     Scheindlin politely added that Guess “does not have an unblemished record” when it comes to trademarks.
     “During the last decade, Guess has received approximately one dozen trademark complaints from other fashion companies complaining about Guess products that allegedly infringed on the trademark rights of the senior user,” she wrote. “In each instance, Guess either immediately stopped using the mark or amicably resolved the matter with the competitor.”
     Guess is far less forgiving of other companies’ alleged trespasses against its trademarks.
     “Like Gucci, Guess actively protects its intellectual property rights, using more than one hundred law firms to do so,” the order states. “By way of example, Guess has enforced its registered Quattro G Pattern against such companies as Aldo and Wal-Mart. Guess also works with U.S. Customs and Border Protection to prevent counterfeits from entering the country.”
     Gucci’s 2009 complaint claimed that Guess had tried to “Gucci-ize” its product line.
     At a bench trial earlier this year, Scheindlin pressed Gucci lawyer Jonathan Moss about why it took so long for his company to complain about Guess products that had been on the market since 2003.
     Moss replied that “budgetary” issues made the company wait before suing Guess, but Scheindlin said she had her doubts.
     “Gucci’s behavior with respect to Guess is not consistent with its conduct towards other brands,” the judge wrote Monday. “Over the years, Gucci has sent out hundreds of cease and desists letters to entities ranging from national companies such as Bebe, Juicy Couture, and Williams-Sonoma, all the way to small-time infringers, such as a counterfeiter working out of her Los Angeles apartment and a rabbi in New York, who they suspected might sell counterfeit Gucci products to benefit his synagogue.”
     Since Gucci did not wait long enough for the statute of limitations to expire, however, Scheindlin granted an injunction that bars Guess from using the Quattro G Pattern, the GRG Stripe and Certain Square G Marks.
     Guess vaulted other infringement claims by transforming the original designs into the “garish, ‘bling-y,'” signature “Guess Girl” brand, according to the ruling.
     “These products frequently feature bright and/or neon colors, garish or ‘bling-y’ hardware, and generally succeed in communicating the ‘Guess Girl’ image that defendants have been careful to cultivate over the years,” she wrote.
     The decision lists the infringing products on eight pages of appendices.

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