The Intellectual Property Office (IPO) in UK revoked Gucci’s GG Trademark on the ground of non-use. Gucci registered the interlocking GG logo back in 1984. In June 2012, fashion rival Gerry Weber applied to the IPO, UK to revoke the mark for a lack of use, dating from 2003 to 2012. The UK Trademarks law has provisions for revoking Trademarks if they are not used within a five-year period following their registration.
The GG logo was registered under four different classes, 3, 14, 18 and 25, in the UK, which covers goods such as antiperspirants, watches, handbags and t-shirts. Nevertheless, Judy Pike of IPO, UK clearly states in the decision that Gucci can continue using the mark for goods under class 3 including perfumes and soaps but the mark covering classes 14, 18 and 25 have been revoked by the said decision.
The proceedings found Gucci’s evidence unspecific. Garry Webber on the other hand claimed that 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”. Gucci however produced some invoices for class 3 goods to show use of the mark under this class, which helped the mark to retain its registration for this specific class.
The decision now impedes Gucci’s right to protect the GG logo under classes 14, 18 and 25, which cover goods such as scarves and coats, whereas class 3 covers “Non-medicated toilet preparations, cosmetic preparations, perfumes, soaps, dentifrices, preparations for the hair; anti-perspirants, depilatory preparations”, in the UK.
Sammon stated that “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.”
The decision however can be termed, as a wake-up call to brand owners that the evidence required in IPO proceedings, and the detail of such evidence, is crucial to the case. Gucci has the right to appeal against the decision and have to successfully make a point that the law had been applied incorrectly.
The story was first published in INTELLECT Issue no.1, dated November 2013.