Facts
Guccio Gucci S.p.A. (Plaintiff) is an Italian joint-stock company that manufactures and distributes luxury items such as leather goods and fashion accessories. It is the owner of the "GUCCI" trademarks, which are also protected in Switzerland. Paolo Gucci (Defendant) is a grandson of the company's founder Guccio Gucci and was previously employed in various functions for the company. After leaving the company due to family disputes, he now works as an independent designer.
The Plaintiff filed a lawsuit with the Commercial Court of the Canton of Bern for the cancellation of the "PAOLO GUCCI" trademark of the Defendant and for the Defendant to refrain from using the designations "GUCCI" or "PAOLO GUCCI". The Commercial Court declared the Swiss part of the "PAOLO GUCCI" trademark null and void and prohibited the Defendant from using the designations "GUCCI/PAOLO GUCCI" in business transactions in connection with products for which the Plaintiff claims trademark protection.
Considerations
The Federal Supreme Court upheld the decision of the Commercial Court. It stated that conflicts between the right to a name on the one hand and trademark and competition law on the other hand must be resolved in each individual case by weighing the interests involved. It must be taken into account that the existence of a famous priority trademark such as "GUCCI" justifies imposing restrictive conditions on the younger competitor in the use of the homonym "PAOLO GUCCI" in order to avoid confusion.
The Federal Supreme Court considered it justified to prohibit the Defendant from using his name "PAOLO GUCCI" without distinctive additions in business transactions, as otherwise there would have been a risk of confusion with the Plaintiff's…