Guess What?

The Court of appeal of Milan rendered a new decision in the dispute between Gucci and Guess on the alleged imitation of some of Gucci’s iconic design elements in its products, such as the large block letter “G” and red and green stripes.

In their defense, Guess slammed down the allegations and refuted by saying that the patterns and designs are in fact common in the world of fashion and it’s not particular to Gucci.

In a ruling rendered on September 15, 2014, no. 3308, the Court of Appeal of Milan has partially upheld the appeal filed by Guccio Gucci S.p.A. against the American brand GUESS reforming in part the judgment of first instance no. 6095 of 2013, which decided on the request by Gucci to declare the counterfeiting of numerous national brands and Community ownership of the actress, as well as unfair competition pursuant to art. 2598, n. 1 and 2 and 3, cod. civ., also in terms of parasitic competition especially with respect to the

This ruling seems to put an end to a battle which began in 2009 in front of the New York Federal Court.

Are decisions rendered by the UIBM subject to Res Judicata?

Following the introduction of administrative oppositions in front of the UIBM in 2009, the Italian doctrine has discussed on the possible preclusive effect of decisions rendered by the Italian trademark office.

The decision rendered by the Case T-11/13 (MEGO / TEGO) at the end of September, confirms what we knew: the decisions of opposition and nullity trademarks in front of the OHIM (but the same goes for the UIBM) do not have the effect of res judicata. This means that if an opposition has been rejected, the same party can bring another action for invalidity for the same reasons and under the same earlier grounds on which the Office has already taken a decision.

Of course the same applies when an action is introduced in front of a specialized court for nullity, revocation or infringement, when the UIBM has already rendered a judgment for the same trademarks.

Why should you protect your IP?

Protecting IP is becoming increasingly difficult, particularly with the proliferation of online sales. The Internet has created an ideal and, often, an almost anonymous selling place for sophisticated counterfeiters of products.

Why should you protect your IP? According to a 2013 report by PricewaterhouseCoopers, the value of the global impact of counterfeit goods and illicit trade is estimated to be US$650 billion per year. That is US$650 billion of lost revenue for brand owners, authorized manufacturers, distributors and retailers of genuine goods.

Ignoring the infringement of IP rights when it arises can dilute the strength of the right itself, undermining distinctiveness (in the case of a trade mark) and the ability to stop future infringement. This has a knock-on impact on the value of goodwill of a business.

The cure? Many businesses elect to protect their IP by registering trade marks, design rights, and patents with the relevant authority (whether that is a national authority, such as the Office for Harmonization of the Internal Market (“OHIM”) or the World Intellectual Property Organization (“WIPO”).

My suggestions of ways in which a brand can strengthen its position vis-à-vis counterfeiters include the following:

  • Create a strong brand identity, using the same logos, designs, packaging etc., consistently across product lines.
  • Use security features, such as stickers, serial numbers, holograms or mylar/security strips in products to help aid detection of counterfeit goods. These details will also assist in monitoring the security of your manufacturing, distribution and retail processes.
  • Create an authorized manufacturing, distribution and retail network for products.
  • Make each entity in your manufacturing, distribution and sales chain subject to contractual obligations to protect your IP and report to you any instances where it has become aware of possible infringement, either by itself or a third party.
  • Register your IP with relevant national customs authorities to enable them to detect and detain counterfeit goods that are imported and exported, allowing you to take action, where appropriate.
  • Periodically collect and review information about any counterfeit goods that are discovered. You may choose to employ a ‘watching’ service to assist with this monitoring. This information will help you identify jurisdictions and territories where counterfeit goods are being produced as well as any weak links in your manufacturing, distribution and sales chain and the common distinguishing features of counterfeit goods.
  • Clearly allocate responsibility within an organization for dealing with infringements and maintain a portfolio of relevant information so that documents such as registration certificates, precedent letters of complaint and text for witness statements are easily accessible.

For any questions on how to protect you IP, feel free to contact: Gianpaolo Todisco at gianpaolo.todisco@tsclex.com