Gucci the Italian fashion house has had its famous interlocking GG Monogram trademark revoked in the UK, on the grounds of non-use.
Gucci first registered the motif in 1984 in the UK in four different classes - 3, 14, 18 and 25. This covers handbags, T-shirts, watches and cosmetics. Under British law, UK trademarks can be revoked if they are not used within five years of their registration.
Fashion brand Gerry Weber applied for the motif to be repealed in June 2012 for a lack of use between 2003 and 2012. It was claimed that no use was made of the mark for the goods in class 3, 14, 18 and 25 as registered in the five year period 1 February 2003 to 31 January 2008; and alternatively, no use was made of the mark for the goods as registered in the five year period 15 June 2007 to 14 June 2012.
In an application to revoke a trade mark for non-use, the burden of proof lies with the registered trade mark proprietor, who must demonstrate that he has made genuine use of the registered mark during the relevant period identified by the applicant. Gucci responded by providing figures of sales goods from those years, but didn't make clear as to whether or not these were UK-based. In an interesting set of proceedings, Gucci were able to retain the registration of their iconic GG trademark for non-medicated toilet preparations; perfumes in class 3, showing evidence that the mark was used from October 2010 for the fragrance Gucci Guilty in the UK.
However, their trademark for ready to wear and couture clothing, handbags, wallets, sunglasses, watches, shoes, jewellery, and associated accessories, in classes 14,18, and 25 were revoked from 1 February 2008 for all other goods for which it is registered. The UK intellectual property office deemed that the evidence put forward by Gucci's in-house legal counsel team was insufficient and of fell way short of showing genuine use. It was held that the sales figures for these classes of goods were too vague to amount to proof of genuine use - the Hearing Officer in the case stated that "genuine use cannot be proven by probabilities and suppositions but must be demonstrated by solid and objective evidence". He went on to state that "[Gucci] makes broad claims without also referring to specifics." And importantly that "Evidence of the fame of the proprietor of a mark is no evidence of use of a mark owned by that party". Meaning that the Italian brand no longer owns a trademark for those categories of goods.
This is a shocking news for such a well-known luxury fashion brand. Despite Gucci's global reputation, the message is clear use it (your mark) or you will lose it, this case highlights that Well known brand owners cannot rely on the security of their prestigious reputation in the market place alone, even well-known luxury brand owners are required to keep clear records and should be meticulous about documenting all commercial use of your mark as evidence along the way. This can include examples of advertising and marketing, product packaging etc. As this case shows, records need to be kept of how these were used, when they were used and in which territory they were used.