Gucci versus Guccitech

cgtrader.com

 Gucci is not in the business of making kitchen appliances, but that does not mean you can use its name on yours, according to the Intellectual Property Office of Singapore (“IPOS”). Just a few weeks after Gucci opened Gucci Osteria in Florence, Italy, the Italian design house has prevailed in opposing a trademark application by an unaffiliated Singapore-based company, which was aiming to use the name Guccitech, along with a stylized letter “G,” on its appliances.While it might seem like a reach that the Italian design house would prevail (although it is worth noting that in the U.S. there is the “Gucci Tech,” i.e., Gucci iPhone cases available on SSENSE), it did, with the IPOS holding that consumers might be confused as to the source of the company’s latest offering, a foldable stove.
Before a trademark is registered with any of the individual national trademark offices, numerous requirements must be satisfied. One such requirement is that the mark is open for the opposition, a standard procedure that may be invoked in order to prevent the registration of trademarks that are “damaging” to others, including other companies that may have similar trademarks.Fearing that consumers might be confused into believing that it had expanded into kitchen appliances, Gucci did just that: Opposed Guccitech’s application with the IPOS in April 2015. As first reported by World Intellectual Property Review, Gucci claimed that due to its widespread fame in Singapore and two of its own related Singapore trademarks – one for “Porcelain and ceramic articles; drinking glasses and glass flasks,” and another for home furnishings and cutlery – the IPOS should refuse to register Guccitech’s mark.
The standard for determining whether a trademark application will be accepted and registered by any of the individual national trademark offices is generally “confusing similarity,” meaning that if a trademark in an application is considered similar to an already-registered mark and if the two marks are used for related goods or services, the proposed registration will likely be denied.Of particular concern for the IPOS was the fact that if both companies’ products were sold in any of the same department stores, due to their relatively similar nature (in terms of Gucci home goods and kitchenware, that is, and not its Alessandro Michele-designed ready-to-wear), they would be located in “close proximity to one another.” This would, according to the IPOS, lead to further confusion amongst consumers.Siding with Gucci, the IPOS found the appearance of elements of Guccitech’s proposed mark and the proposed use of its pending trademark application were just too similar for registration and thereby, called foul. “It must follow that visually the two marks are very similar and the applicant has failed to sufficiently distinguish its mark from the opponent’s,” the IPOS stated.As a result, Guccitech’s trademark has been denied. The ruling, however, does not mean that it cannot use the mark on its new foldable stove. If it does, we will likely end up in court, though, will Gucci citing trademark infringement, arguing that Guccitech’s use of the name is likely to lead consumers to believe that Gucci has in some way endorsed Guccitech’s goods or is connected or affiliated with Guccitech and its goods