Luxury fashion brand Gucci has had its GG trademark revoked after nearly 20 years on the UK register.
The UK Intellectual Property Office (IPO) wiped away the interlocking double G logo, registered in 1984, on the grounds of non-use.
But in the decision on November 5, the IPO’s Judy Pike said Gucci can continue using the mark to sell goods (including perfumes and soaps) under class 3.
Gucci registered the GG logo in four classes – 3, 14, 18 and 25 – in the UK. Between them, the classes cover goods such as antiperspirants, watches, handbags and t-shirts.
In June 2012 Fashion rival Gerry Weber applied to revoke the mark for a lack of use, dating from 2003 to 2012.
UK trademarks can be revoked if they are not used within a five-year period following their registration.
Gucci’s response, filed by in-house counsel Vanni Volpi, was criticised by Pike for being unspecific. For example, Volpi provided figures on sales of goods in various years, but did not state whether they were UK sales.
Gerry Weber claimed Gucci’s evidence fell “far short” of the mark for showing genuine use, which “cannot be proven by probabilities or suppositions, but must be demonstrated by solid and objective evidence”.
In a 44-paragraph ruling, Pike revoked the mark covering classes 14, 18 and 25. Her reasons included Gucci submitting leather belts in its exhibits, despite class 25 expressly limiting belts to textile belts, and a lack of sales invoices.
There were, however, some invoices provided for class 3 goods, and better evidence overall to show use in this class, meaning the mark stays registered for this specification.
According to the decision, class 3 covers “Non-medicated toilet preparations, cosmetic preparations, perfumes, soaps, dentifrices, preparations for the hair; anti-perspirants, depilatory preparations”.
The decision means Gucci cannot protect the GG logo under classes 14, 18 and 25, which cover goods such as scarves and coats, in the UK.
Matt Sammon, partner at law firm Marks & Clerk, said the case exposed the lack of detail in Gucci’s evidence.
“There were serious weaknesses in the evidence … You would assume they had a lot better evidence than that.
“The lack of evidence may have been down to a time constraint or overlooked, but I find it hard to imagine.”
Charlie Winckworth, of counsel at Hogan Lovells LLP, said it can be difficult to adduce persuasive evidence from “some time ago”.
“This can be particularly so where any sales figures or marketing spend that can be gleaned cannot be focussed solely on a narrow area of goods or services. In this instance Gucci appear to have found it difficult to break the various facts and figures down with sufficient granularity to satisfy the IPO.”
Sammon added that the GG logo is a “bit more integrated now” than when it was registered, and Gucci may have been trying to avoid drawing attention to this.
That’s because if the ruling had found the current logo different to the logo as registered, it may have opened the door to challenges of other Gucci marks, which may have been altered in the same way, on the grounds of non use.
But Sammon continued: “The lesson here is to keep the evidence specific to the point you’re trying to make … The key elements are specific sales figures and invoices; it’s inconceivable here that Gucci doesn’t have invoices.”
Winckworth added: “The decision serves as a stark reminder to brand owners that the evidence required in IPO proceedings, and indeed the detail contained in that evidence, is crucial to their case – even for such a famous brand as Gucci.”
Gucci can appeal against the decision, but a review would not consider any more evidence, only whether the law had been applied incorrectly.
Lawyers from Harrison Goddard Foote LLP, which acted for Gerry Weber, could not provide a comment when we published the article.
Gucci could not be reached for comment.