Dawn Ellmore Employment’s Luke Rehbein on the LinkedIn story shared by the Trademark Lawyer Magazine on 28 October 2019.

LinkedIn is a useful way to keep informed on changing headlines within the world of Intellectual property (IP) and trade mark news. I like to keep informed on some of the big trade mark battles involving major brands. This recent story covering Gucci’s struggle with trade marks in Italy shows that just because a brand is powerful and well-established, does not mean it’s an easy ride for IP ownership.

Dawn Ellmore Employment - Luke Rehbein- Gucci LinkedIn Trademark 2Image credit: Goodpics – stock.adobe.com

LinkedIn story from Trademark Lawyer Magazine’s LinkedIn update on developments in Gucci’s Italian trade mark dispute

Gucci is one of the most famous and well-established global brands. But its power, size and influence has not ensured victory in a long-running trade mark dispute with a smaller Italian brand.

The dispute revolves around Gucci’s iconic ‘horsebit’ buckle design that adorns their trade mark loafers. And while this design has held a US trade mark since 2005, in Italy it’s a totally different story.

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LinkedIn story covers Gucci v Lattanzi battle for upmarket loafers

Gucci has been fighting a battle with another Italian fashion brand – Silvano Lattanzi – since 2011. Almost ten years ago, Gucci became aware that the Lattanzi brand was selling loafers with a similar horsebit design through a retailer in Tuscany.

The financial authority of Italy (the Guiardia di Finanza) assisted Gucci in shutting down the smaller label’s production. The products were seized as counterfeit goods and Lattanzi had to stop manufacturing the loafers using the horsebit symbol. Gucci demanded that production ceased as the design of the horsebit is inextricably linked in the minds of consumers with its brand.

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Defence team argue that design is used by many

However, in defence, Silvano Lattanzi’s team argue that the smaller brand has been using the horsebit design for decades. And as Gucci’s own trade mark for the design only dates back to 2005 in the Us, the defence argues that it isn’t owned by them and that Lattanzi is entitled to use it on its products.

Italian trade mark law states that trade mark rights are acquired and granted only by registration, and not by the first brand to use a mark. Even more significantly, Lattanzi states that as the design does not function as a trade mark, then Gucci has now claim to it at all. They say that the design itself does not indicate to consumers that there is only one source for the design. Rather, that it is used by various brands all over Italy and has been for decades.

Lattanzi maintains that the design is widely used across all kinds of brands and products throughout Italy. The team gives examples of other Italian brands using it, including Salvatore Ferragamo and Santoni.

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Gucci denied by the Triunale di Fermo Italian district court

Gucci showed the court that the brand has been using the design on show buckles since the 1950s. It further argues that while it applied for trade mark registration only in 2005, it has been in used for decades. Back in the 1950s, the son of the founder of Gucci, Aldo Gucci, first introduced the infamous loafer with horsebit buckle design onto the product list.

They argue that since the introduction of the loafer in the 1950s, it has become synonymous with Gucci through media coverage, massive sales success and enormous advertising spend. The loafers that use the horsebit buckle design have been long-term best-sellers for Gucci, further strengthening their argument.

Despite all this, the Tribunale di Fermo disagreed. The Italian district court remained unconvinced by Gucci’s argument and sided with Silvani Lattanzi with its decision in the first week of October 2019. Therefore, the smaller brand is not found to be counterfeiting Gucci owned trade marks and is free to restart production.

After the decision, a lawyer for Lattanzi reiterated that his client was merely using an accessory that had existed for many years. The owner of the Lattanzi brand, Mr Lattanzo, says that the loafer is going back into production after an enforced hiatus of nine years.

Gucci has not commented yet, and it remains unknown as to whether they will launch an appeal against the decision. Contact me on LinkedIn here.