Fashion companies lose trademark infringement case against importer

In Guccio Gucci SpA v Handelsselskabet Rudi og Harald Nielsen A/S (Cases V118/08 and V44/09, August 12 2010), defendant Handelsselskabet Rudi og Harald Nielsen A/S had to pay Dkr31,000 in damages, but plaintiffs Guccio Gucci SpA's and Bottega Veneta International SARL were ordered to pay Dkr455,371.
The case dealt with:  
  • the plaintiffs' right to seizure of evidence and an interim injunction in the previous enforcement case; and
  • the compensation due to the defendant for unlawful legal remedies.
The plaintiffs believed that items marketed by Danish fashion importer Nielsen were counterfeit. The plaintiffs obtained a search order and seized four purses, 12 belts with buckles, 20 pairs of men's shoes, eight pairs of rubber boots, 246 pairs of gloves with bridle and 82 handbags. More bags were seized at a later date and the plaintiffs also obtained an interim injunction against Nielsen.
Gucci brought a confirmatory action before the Maritime and Commercial Court and, in its claims, included a number of products which had not been seized. As some of the goods included were marketed under the brand Gusacci, Gucci also claimed that this designation violated the GUCCI mark, seeking Dkr550,000 (approximately €74,000) in damages.
The court found that one of several types of handbag marketed by Nielsen violated Veneta's rights and ordered Nielsen to pay Dkr30,000 (approximately €4,000). The court also found that one shoe design implied a risk of confusion and ordered Nielsen to pay Dkr1,000 (approximately €130) as compensation.
However, the court rejected most of the infringements that Gucci alleged, instead finding for Nielsen.
In its reasoning, the court made some interesting statements, including that "Veneta has not obtained a trademark right by the use or regular use of intercciato" ('intercciato' is an old, well-known technique of weaving leather). In connection with the use and registration of the bridle, the court stated that "when known symbols are registered as a trademark, their protection must be minimised to cover only slavish imitation".
Concerning the designation 'Gusacci', the court stated as follows:
"'Gucci' consists of two syllables and five letters. 'Gusacci' consists of three syllables and eight letters of which the first two and the last two are the same as in 'Gucci'. The words have different rhythm of pronunciation and are visually different. The court consequently does not find that the designation 'Gusacci' violates Gucci's rights according to the Act on Trademarks or the Act on Marketing Practice."
With regard to Gucci's letter 'G', the court stated as follows:
"Gucci has registered several shapes of G as device marks. Registration of a letter as a device mark can provide protection only of the exact registered shape, as there is a demand for exemption in relation to other commercial enterprises."
As to the webbing on some belts, the court found that some of them were very close to Gucci's. However, as the webbing in question had been sold by Nielsen for several years, the court found that Gucci's inactivity during that period rendered the claim void.
Finally, the court stated as follows:
"Not even at a total evaluation of the single products does the court find that the average informed consumer will rightfully assume that there is a connection between Gucci and the goods sold by Nielsen."
The court ordered the plaintiffs to pay (jointly and severally) Dkr140,271 (approximately €19,000) for documents, translations and the interpreter. The court further ordered Veneta to pay Dkr10,000 (approximately €1,350) to Nielsen in damages. Gucci was ordered to pay Dkr200,000 (approximately €27,000) in damages to Nielsen and, in addition to this, Dkr100,000 (approximately €13,500) in trial costs.
Based on this, Nielsen had to pay a total of Dkr31,000 (approximately €4,130), and Veneta and Gucci paid Dkr455,371 (approximately €60,850).
This decision is interesting in several ways. First, it is an example of how extremely careful a lawyer must be before choosing strong legal remedies such as search orders, seizures and interim injunctions. A lawyer must be almost certain that the goods are counterfeit and, if they appear not to be, he or she should be aware that it will be expensive for the client. In this matter, Gucci's lawyer failed to focus the claim on the products which involved no doubt, resulting in a bill of approximately Dkr450,000 to the client, in addition to the costs that the firm undoubtedly had to pay to its own lawyer.
Second, Gucci's conduct in this case may very well have a damaging effect for its own legal position - and even that of other rights holders - in Denmark and elsewhere in future, as bailiffs may be more careful when permitting seizure, especially if the GUCCI marks are involved.
Finally, some of the statements given by the court may be held as general principles, namely:
  • the protection of known symbols which are registered as trademarks;
  • the protection of registered single letters (in the present case, 'G'); and
  • the mention of 'the average consumer' when assessing whether an infringement has occurred.
Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen

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