Fashion brand Gucci has been stripped of UK legal rights to its famous double G logo, after it failed to provide sufficient evidence that it was using it, during a dispute with rival fashion brand Gerry Webber International.
The recent decision by the UK Intellectual Property Office (UK-IPO) related to a non-use revocation action which was filed against Gucci’s UK registration for its iconic logo, which covered cosmetics and perfumery in class 3, jewellery in class 14, bags in class 18 and clothing in class 25.
A non-use action of this kind can be brought by any third party who alleges that during the last five years the mark has not been put to genuine use in the market place. Such actions are often brought strategically in order to cause the trade mark owner difficulties, in particular when everyone knows full well that the mark has actually been used. It causes trouble because the onus is on the owner of the trade mark to file the necessary evidence of genuine use within the relevant period, which can sometimes prove trickier than anticipated.
In this case the defense evidence filed by Gucci’s in-house counsel was simply not good enough to maintain the mark, which dates back to 1984. The UK IPO Hearing Officer substantially criticised the evidence, referring to it as unspecific, and having a marked lack of sales and marketing figures pertaining to the UK, and a lack of invoices or other dated sales and marketing materials specific to the UK.
The decision maintained the class 3 goods, but cancelled everything in classes 14, 18 and 25. The Hearing Officer accepted that a limited number of invoices relating to class 3 goods were sufficient to maintain the registration in that class. This decision is, of course, open to appeal.
The decision did not highlight any particularly important legal issues other than the need for brand owners (large or small) to put together verifiable, detailed and documented objective evidence of genuine use to support their case, and not to rely on probabilities or suppositions.
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