Gucci continues its winning spree with another court victory in Gucci America, Inc. v. Guess?, Inc., No. 09Civ.4373 (SAS), 2012 WL 2304247 (S.D.N.Y. June 18, 2012).

Gucci filed a lawsuit against its competitor, Guess, claiming more than $200 million in damages for trademark and trade dress infringement, counterfeiting, and dilution under the Lanham Act; section 360-1 of the New York General Business Law, and the common law of New York.  Gucci claimed that Guess attempted to “Gucci-fy” their product line by using Gucci’s trademarks and a trade dress, including Gucci’s Green–Red–Green Stripe mark (the "GRG Stripe"); the Repeating GG Pattern; the Diamond Motif Trade Dress; the Stylized G Design mark; and the Script Gucci Design mark.  Id. at *1.

Following the bench trial, Judge Scheindlin awarded Gucci more than $4.6 million, actual profits received by Guess from the infringement and dilution of Gucci trademarks.  The Court also granted Gucci a permanent injunction barring Guess from using the Quattro G pattern, the GRG Stripe, and certain square G marks (see comparison of Gucci and Guess products below). 

However, the Court denied Gucci’s counterfeiting claim finding that “courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch.”  Id. at 31.

The Judge, who did not seem to be impressed with either fashion house, in conclusion, noted:

111. Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion-what Oscar Wilde aptly called “a form of ugliness so intolerable that we have to alter it every six months.” Fn 295.  With the instant disputes now resolved, and with Gucci's entitlement to the relief noted above, it is my hope that this ugliness will be limited to the runway and shopping floor, rather than spilling over into the courts.  Id. at 34.

Similarities in design, however, are not always subject to ugly wars between competitors that “spill[] over into the courts.”  Certain similarities, in fact, are celebrated. As an example, the Met's Spring 2012 Costume Institute exhibition, Schiaparelli and Prada: Impossible Conversations, that “explores the striking affinities between Elsa Schiaparelli and Miuccia Prada, two Italian designers from different eras.”