jueves, 10 de diciembre de 2015

GUCCI LOSES ITS “GG” UK TRADEMARK

Whenever a trademark registration application is submitted, the applicant has to take the obligation to use the trademark very seriously. Only if it is used does a distinctive sign do its job of singling out one product from all the others on the market. Most legislations the world over require a trademark to be used in a certain form within certain periods; otherwise, third parties may file for expiration due to disuse and strip the registrant of rights in the trademark.

Trademark regulations in Spain also incorporate a system of mandatory use, which differs in practically nothing from the legislation of the United Kingdom. Under UK law, trademarks must be used in British territory within five years of their date of registration. Failure to put a trademark to continuous, systematic use places the owner in a perilous position, as happened in the recent case of the Gucci logo. The ability to provide sufficient proof (such as invoices and catalogues) is indispensable and crucial for the defence; if the evidence is thought to be too scanty, the owner will lose all rights in the sign. This can happen even in the case of so well-known a trademark as the Italian fashion firm Gucci’s “GG” sign.

Gucci’s “GG” logo, a trademark requested for classes 3, 14, 18 and 25 and owned by Guccio Gucci S. PA., was recently revoked after having spent more than 20 years registered in the United Kingdom. The cause: The German fashion company Gerry Weber International filed for revocation due to non-use. The British trademark office considered Gucci’s proof of use insufficient to defend classes 14, 18 and 25 of the international classification and upheld only class 3 for cosmetics and cleaning preparations. In the wake of the fateful decision issued by Judy Pike on 5 November, at least Gucci is allowed to keep using the “GG” trademark to sell its perfumes in class 3. Gucci registered the “GG” logotype in the United Kingdom in four classes, 3, 14, 18 and 25. The application covered products such as perfumes, watches, handbags and t-shirts. However, in June 2012 the Gerry Weber fashion firm asked to have the trademark revoked, claiming that it had not been used from 2003 to 2012.

UK legislation and Spanish legislation both say trademarks can be revoked if they are not used for five years after registration. Gucci’s reply, filed by its in-house attorney Vanni Volpi, was considered vague; the evidence submitted to prove the use of the “GG” logo was insufficient and fuzzy, giving the sales figures for several years but not stipulating the sales in the relevant territory, the United Kingdom. Apart from the lack of sales invoices, the Gucci belts in the catalogues submitted for the defence were made of leather, while class 25 is limited expressly to belts made of fabric, not leather. However, the evidence submitted to the British authorities to prove use of class 3, “non-medicated toilet preparations, cosmetic preparations, perfumes, soaps, dentifrices, preparations for the hair; anti-perspirants, depilatory preparations” was accepted, because it afforded more-evident, general proof of the active presence of Gucci’s “GG” perfumes on the market. So, Gucci was able to keep at least one class and thus did not lose its trademark entirely. The UK Intellectual Property Office’s decision means Gucci cannot protect the “GG” logotype for scarves, shirts, t-shirts, handbags, watches or coats in the United Kingdom.


We have to remind you that trademark rights in Spain are acquired through registration, but the applicant must intend to use the trademark. This proviso is designed to prevent indefinite monopolies over distinctive signs that are not going to be used. Therefore, once registration of your trademark is granted, use your trademark for all the products and/or services covered throughout the territory. This is fundamental. It is also a very good idea to gather evidence (invoices, catalogues, press cuttings) you can file with your defence if anyone ever seeks to have your trademark revoked for lack of use.

martes, 1 de diciembre de 2015

The Three-Dimensional Trademark for Retail Establishments: The Apple Case


Who doesn’t recognize an Apple store at first sight? That was one of the main reasons why in 2010 Apple Inc. started the process of registering its business model as a three-dimensional trademark. Apply took two trademarks it already held as the foundation from which to kick off its 3-D trademark expansion strategy. These trademarks showed a black-and-white design of the store (US, 12.05.2010, No. 85,036,990) and a colour design (US, 12.05.2010, No. 85,035,986).



Both three-dimensional trademarks were granted by the U.S. Patent and Trademark Office for class 35 of the Nice Classification, which covers “Retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto”.

Later, Apple applied to extend its trademark to another 19 countries, including Spain. In 2011 the trademark was granted by the Spanish Patent and Trademark Office.

Of all the latter proceedings, the most striking refusal was certainly that of Germany. In 2013 the German trademark office, the DPMA, refused to extend its registration of IR No. 1,060,320 and No. 1,060,321, because it considered that the representation of spaces intended for the sale of an undertaking’s products is merely a representation of an essential aspect of an undertaking’s trade. In the DPMA’s view, although a consumer may indeed interpret the layout of the space as an indication of the value and price category of the products within, the consumer will not perceive the layout as an indication of the origin of the products. In other words, the DPMA felt that the retail space represented was not sufficiently differentiated from the stores of other suppliers of electronic products.

For that reason, the German Patent Court submitted a request for a preliminary ruling to the Court of Justice of the European Union, which found for Apple Inc. The court said that “the representation of the layout of a retail store, by a design alone, without indicating the size or the proportions, may be registered as a trade mark for services, which, although relating to goods, do not form an integral part of their offer for sale, on condition that that representation is capable of distinguishing the services of the applicant for registration from those of other undertakings”.

Applications No. 1,060,320 and 1,060,321 were refused in China, Great Britain, Sweden and Singapore on absolute grounds, the main obstacle being the descriptive or customary nature of the three-dimensional sign in each registration application.

Despite the drawbacks, this is a clear example of innovation in industrial property in favour of franchises or retail chains in which the point of sale differentiates the product from other products on the market.

Carolina Sánchez Margareto

IP lawyer