Gerry Weber International A.G. v. Guccio Gucci S.p.A., A/12/04709 (Commercial Court of Brussels, November 22, 2013)
The Commercial Court of Brussels recently ruled that Gucci’s two International Registrations for a version of the Italian fashion house’s overlapping “GG” mark, which were originally registered in the 1970s and 1980s, could not be supported by use of the mark in the modified form currently in use. The earlier “GG” mark, subject of the International Registrations, is shown below on the left. The newer version protected by Gucci’s 2011 CTM registration, currently in use in Benelux, is below and to the right.
The earlier mark consists of the double “G” letters in a wider, outlined font, the lower tips of the Gs “touching.” The current mark presents the letters in a slightly narrower font, filled in and bold, and the lower tips of the Gs do not “touch.”
Under Article 2.26 of the Benelux Convention on Intellectual Property, as well as under Article 15.1 of the Community Regulation (No. 2009/207/EC) and Article 12.1 of the Community Trademark Directive (No. 2008/95/EC), a trademark is subject to lapse or revocation if there has been no genuine use of the mark for a continuous period of five years. However, the Community Regulation and the Community Directive define “use” to include use of the mark in a form “differing in elements which do not alter the distinctive character of the mark in the form in which it was registered,” or, in the language of the Benelux Convention, as translated, such differing elements must not “adversely affect” the distinctive character of the mark in the form registered.
German fashion company Gerry Weber brought a revocation action against the extension of Gucci’s two International Registrations to Benelux, under Article 2.27.1 of the Benelux Convention providing that “[a]ny interested party may invoke lapse of the right in a trademark.” Notably, Gerry Weber uses the design pictured below in connection with its women’s apparel business.
During the proceedings before the Commercial Court, Gucci was unable to provide evidence of use of its mark in the particular format shown in its International Registrations. Gucci sought, instead, to rely on evidence of use of the mark in its modified form. Thus, the central question before the court was whether the above modifications to the Gucci “GG” alter or adversely affect the “distinctive character” of the earlier mark.
In theory, one effect of the provisions of the Benelux Convention and the Community Trademark Regulation and Directive allowing for modifications to registered marks is to enable rights holders to update their time-tested brands as tastes and styles evolve. Such updates are important, particularly as successful brands flourish over years and decades. This latitude is particularly relevant in the field of fashion, where a company’s responsiveness to industry trends and consumer demands is essential, both in the products it designs and in the overall presentation of its brand, even as it maintains its core identity through consistent use of the distinctive elements of its marks.
However, the Commercial Court of Brussels did not agree, in this instance, that the modifications to Gucci’s mark were mere updates that did not affect the mark’s overall distinctive character. The court held that the respective marks were presented in a different style, and particularly that the two Gs failed to touch in the current format, in contrast to the earlier version. Such relatively small differences were deemed sufficient alterations to the mark’s distinctive character, under Article 2.26.3(a) of the Benelux Convention, for the court to revoke the International Registrations for Benelux on the basis of non-use. Small modifications to marks composed of merely two letters may sometimes be considered to have a greater altering effect, as compared to more complex or lengthier marks. The court’s decision also speaks to the interest, articulated in the Trademarks Directive, of requiring genuine use of a registered mark to “reduce the total number of trademarks registered and protected in the Community and, consequently, the number of conflicts which arise between them.” Gucci’s older International Registrations fell victim to the effort to “clean house,” keeping the Register clear of marks that are not in use and making way for competing marks.
For trademark owners who wish to protect various iterations of their trademarks, this decision illustrates some of the perils of altogether abandoning use of an earlier, different format. The line that separates an acceptable “update” from an unacceptable alteration is not always consistent across courts and jurisdictions. The decision further underscores the importance of registering not only stylized versions of a core mark but, where possible, also securing registrations of the mark in standard characters, that impart broader protection. Otherwise, registrations for variations that are no longer in use in the particular format registered may indeed be vulnerable to revocation.