Following last week’s news that Gucci had lost its famous double G logo in the UK, we’ve been inundated with emails from concerned fashion law fans and fashion trademark holders. How did they lose it? Why did they lose it? Could I lose my trademark? Out of all the intellectual property rights available to protect fashion brands, trademarks are the most widely used and probably the most widely misunderstood. Here we take a look at what happened to Gucci and how you can prevent the same thing happening to you!
Gucci first registered the double G motif back in 1984 in the UK in four different classes - 3, 14, 18 and 25. This spans handbags, T-shirts, watches and cosmetics. UK trademark registrations last for 10 years. After this they can be renewed for further 10-year periods for as long as you wish to use the trademark. Gucci had renewed the trademarks accordingly and continued to own the trademarks.
However, in 2012, fashion brand Gerry Weber applied for the trademark to be repealed because of lack of use between 2003 and 2012. As regular readers of Wigsandgowns will know, UK trademarks can be revoked if they are not used within five years of their registration or for a consecutive five year period at any time afterwards. Gerry Weber claimed that Gucci had not used the trademark and therefore should not be allowed to own it anymore.
Now, when we originally heard about the challenge, our thoughts were that of course Gucci used the trademark, we’re sure we’ve seen those interlocking Gs across a number of product types including belts, handbags and perfumes in recent years? Perhaps, but unfortunately for Gucci, its legal team failed to provide sufficient evidence of this!
According to the decision, while Gucci provided a range of examples of the use of the GG logo, these didn’t include specific dates. The only advertisement that they produced was from 1981, over two decades before the relevant dates! The Italian fashion house also provided sales figures from those years, but didn’t make clear as to whether or not these were UK-based. Overall, Gucci failed to show any real commercial exploitation of the mark in the UK marketplace. The IPO deemed the evidence too vague to be proof of genuine use, and revoked the mark covering classes 14, 18 and 25. They did however, provide acceptable forms of evidence for the use of the logo in relation to cosmetics – they presented advertisements for Gucci’s ‘Guilty’ fragrance featuring the interlocking Gs. The IPO therefore ruled that the trademark will not be revoked for class three products ”non-medicated toilet preparations, cosmetic preparations, perfumes, soaps, dentifrices, preparations for the hair; anti-perspirants, depilatory preparations”.
The lesson is clear – you need to use it or lose it! If you register a UK trademark, don’t sit on it. Use it in your marketing and build up commercial awareness of your mark. Don’t let your guard down – your competitors could be waiting in the wings, ready to pounce!
And the second lesson? Don’t get lazy with your evidence. If the IPO want to see evidence, make sure you provide every shred you have, including specific dates, figures, country breakdowns and examples of marketing campaigns. We’re pretty sure Gucci had this information on file but because they failed to present it in a clear and concise manner, the company has lost its most valuable asset – its trademark. Don’t let sloppy evidence ruin your brand. Keep clear records and keep your intellectual property safe!