UK: Gucci Loses GG Trade Mark

An important lesson in keeping records and evidence
Last Updated: 21 January 2014
Article by Catherine Richardson

In a decision of the UK Intellectual Property office of 5 November 2013, Gucci's trade mark for it's interlocking GG logo has been revoked in certain classes on the grounds of non-use. The mark (shown below) was registered in 1984 for goods in classes 3 (broadly for cosmetics, perfumes and toiletries), 14 (jewellery), 18 (bags and purses etc.) and 25 (for various items of clothing in addition to scarves, socks, belts and shoes).

The applicant was fashion brand Gerry Weber, who made their application on the basis that there had been no use of the mark during a five year period. The application was made under s.46(1)(b) of the UK Trade Marks Act 1994, which states that a trade mark registration can be revoked if use has been suspended for an uninterrupted period of five years, without proper reason.

Criticisms of Gucci's Evidence

In an application to revoke a trade mark for non-use, the burden of proof lies with the registered trade mark proprietor, who must demonstrate that he has made genuine use of the registered mark during the relevant period identified by the applicant. Gucci's evidence, which was filed by their in-house legal counsel, was criticised by the Hearing Officer for its lack of specificity and ultimately was found not to demonstrate sufficient use to maintain the registration. In examining the evidence, the Hearing Officer noted, for example:

  • That statements were made in the proprietor's evidence without an explanation as to their relevance (for example, the evidence stated that Gucci is one of the 50 most valuable brands in the world).
  • In some instances, evidence of use (for example, press releases) was undated and not accompanied by an explanation as to where or when it was used or publicised.
  • Some images filed were unclear, making it difficult to see if the mark in question was used.
  • Sales figures were given in relation to each class of goods, but they did not state whether or not they were UK figures (despite being in sterling), did not differentiate between the various goods falling within each particular class and were not supported with invoices.
  • There was no indication of the number of (or type of) goods sold and (save for one example), no packaging or advertisements were produced within the relevant date.

Gerry Weber submitted that this evidence fell far short of showing genuine use and stated that "genuine use cannot be proven by probabilities and suppositions but must be demonstrated by solid and objective evidence". Importantly, the Hearing Officer stated that "[Gucci] makes broad claims without also referring to specifics. [The] evidence about 'Gucci', its reputation, and the company's length of trading are of no assistance. I agree with the applicant's submission that "Evidence of the fame of the proprietor of a mark is no evidence of use of a mark owned by that party"." Well known brand owners should therefore not be lulled into a false sense of security by virtue of their prestige. Despite the Hearing Officer noting that even minimal use may qualify as genuine use and that it is important to "stand back and take a view of the evidence in its entirety", it was ultimately determined that taking all the evidence together did not present a picture of genuine use. The mark was therefore cancelled in relation to goods in classes 14, 18 and 25.

What brand owners can learn from this

This case is a valuable reminder to all brand owners of the importance of keeping accurate and detailed evidence demonstrating use of a registered (or indeed unregistered) trade mark. This can be invaluable in demonstrating use should a registered trade mark be challenged on grounds of non-use, and can also be necessary to demonstrate earlier rights in a registered or unregistered mark.

In practice, it can be helpful to keep files relating to each trade mark, which should include details of its use. For example, for each item making use of the trade mark, the trade mark proprietor should keep a sample together with details of how, when and where it has been used.

Often this sort of evidence can be required at short notice (typically two months is allowed for a party to collate evidence in trade mark proceedings) and the evidence filed will be of better quality if brand owners are always prepared.

Brand owners should therefore keep clear records which show use of any and all of their trade marks. This can include examples of products, packaging, advertising and marketing, which should preferably be dated. Crucially, a record should be kept of where, when and how these are used. In collating and preparing evidence, care should be taken to ensure that all statements and evidence are relevant and useful in demonstrating genuine use during the relevant period.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Catherine Richardson
Similar Articles
Relevancy Powered by MondaqAI
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions