Gucci GG: Evidence of Proof of Genuine Use

Background

Gucci’s trade mark was registered on 11 July 1984 for a variety of goods in classes 3, 14, 18 and 25.

On 15 June 2012 Gerry Weber International AG (Gerry Weber) filed an application for revocation of the trade mark in full on the grounds of non-use.

Gerry Weber argued that Gucci had not made any use of the trade mark in relation to the goods for which it was registered in the fi ve year period between 01 February 2003 and 31 January 2008 and therefore the trade mark should be revoked with effect from 01 February 2008. In the alternative, Gerry Weber argued that Gucci had made no use of the trade mark during the five years from 15 June 2007 to 14 June 2012 and therefore the trade mark should be revoked with effect from 15 June 2012.

Evidence filed by Gucci

Gucci’s in-house counsel filed a witness statement to support Gucci’s argument that the trade mark had been used during the time periods specified. The hearing officer considered, however, that the witness statement and evidence filed was only sufficient to prove use of the trade mark in relation to “non-medicated toilet preparations; perfumes” in class 3.

In relation to the goods in classes 14, 18, 25 and the remaining goods in class 3, the hearing officer considered that the evidence filed was insufficient to prove that the trade mark had been used throughout the relevant period and ruled that the trade mark should be revoked with effect from 01 February 2008 in respect of these goods.

In particular, the hearing officer considered that:

• Evidence relating to the history and fame of the Gucci brand in general was of little relevance in proving use of the Trade Mark.
• Whilst the witness statement explained that Gucci extensively advertised in the press and magazines, no examples of such advertisements were provided.
• No invoices were provided for the goods in classes 14, 18 and 25.
• Although the witness statement contained details of sales figures, such sales were not explicitly confirmed to be UK sales and certain figures were provided in Euro. Furthermore, the sales figures were not differentiated by category of product within the classes eg, watches, necklaces and so on, within class 14.
• Whilst Gucci explained that the trade mark had been used on point of sale advertising, receipts, swing-tags and so on, no examples of such use were included in the evidence filed.
• A number of the webpages and ‘Look Books’, which Gucci argued featured genuine use of the Trade Mark, appeared to be in Italian or from the US and/or were undated.

Gucci had, however, demonstrated genuine use of the mark for “non-medicated toilet preparations; perfumes” in class 3, as it had filed evidence of invoices in respect of certain of the goods (eg, perfumes) as well as printouts of webpages, which demonstrated that preparations had been made to put goods bearing the trade mark on the market.

Procedural issues

Gucci initially filed its evidence following receipt of Gerry Weber’s application for revocation and then sought to fi le further evidence later on in the course of proceedings. This request was rejected by the hearing officer on the basis that the evidence could not, strictly speaking, be considered to be reply evidence, as Gerry Weber had filed no evidence of its own, and because Gucci had not demonstrated that the evidence which they wished to submit was material to the outcome of the matter.

Summary

This decision highlights the importance of filing evidence demonstrating genuine use of a trade mark at the outset of a revocation action and is also a reminder that evidence of proof of genuine use needs to be as specific and detailed as possible.