On Wednesday, the two companies said they had reached an agreement “which will result in the conclusion of all pending IP litigations and trademark office matters worldwide.” The terms of the agreement were not disclosed. “The agreement is an important step for both companies in recognizing the significance of protecting their respective intellectual property portfolios and design creativity,” they jointly stated.
This puts an end to litigation in all countries where they were pending: Italy, France and China. In 2012, a federal judge in Manhattan awarded Gucci $4.7 million in combined damages from Guess Inc. and its footwear licensee Marc Fisher Footwear.
Gucci argued at the trial that the Guess designs in question were “studied imitations of Gucci trademarks” and that the company had “knocked off” more than $200 million in its products.
Gucci filed the suit in 2009. At issue was whether Guess infringed on Gucci’s rights by using a variety of design elements, including a block letter G, a combination of green and red stripes and diamond-logoed motifs.
U.S. District Court Judge Shira Scheindlin wrote that Gucci had proved its dilution claims under the Lanham Act and limited Guess’ use of the Quattro G pattern in brown and beige colorways. The judge also found that Marc Fisher’s use of the green-red-green stripe was identical to Gucci’s trademark and likely to cause trademark dilution.
Scheindlin, however, denied Gucci’s claim of counterfeiting, noting that “courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch.”