Last week, Balenciaga filed a trademark infringement lawsuit against Steve Madden Ltd. in the Southern District of New York. The Parisian fashion house is claiming that the American brand infringed on its trademark, most associated with the ‘it’ bag of the mid 2000’s, the Motorcycle Bag. They are requesting an injunction to stop Steve Madden from producing the bags, as well as monetary damages.
Balenciaga is claiming that the Steve Madden purposefully copied the design which is protected by a federally registered trade dress. By copying the design, Balenciaga, alleges that Steve Madden is confusing the customer who may think that a Steve Madden bag is a Balenciaga bag or vice versa. Under trademark law, one is entitled to trade dress protection for a design when the design identifies the origin of the product, the brand.
Balenciaga’s specific trade dress registration is the identifiable aspects of the Motorcycle bag: The mark consists of three elements: 1. “one flat pouch in a quasi-elliptical flap-like shape, featuring near the top a zippered rectangular closure outfitted with a zipper pull consisting of a strip centrally-knotted and hanging in two equal lengths from a ring attached to the pull;” 2. “a semi-elliptical patch outfitted with two raised studs in each corner;” 3. “two identical patches in an elongated pentagonal shape outfitted with a buckle and two raised studs, attached to the bottom corners of the [bag].” Basically, the identifiable characteristics of the Motorcycle bag, the pouch, the zipper, and the two buckles. The protection, however, only extends to when these elements are all used together on a bag.
Balenciaga claims that Steve Madden’s bag is a “studied copy” that features identical design aspects but sold a significantly lower price. The lawsuit goes on to say that Steve Madden’s version is confusing consumers into believing that the American brand’s bag is Balenciaga when it is not and is thus hurting the company’s profits, reputation and goodwill.
Its important that the brand is vigilant about protecting this design, because it is such a huge identifier for the brand. As discussed in my post about the Luxury Law Summit, counterfeit products that copy aspects of a luxury brand’s product can create disastrous outcomes for the luxury brand, because over time the ubiquity of the counterfeit items in the marketplace eventually degrades and cheapens the brand worth, thus changing the brand identity. Luxury houses have to fiercely protect the unique and creative aspects of their products that are so identifiable to the houses so as to protect the brand’s identity and ultimately the brand’s worth. A brand’s worth is everything is a tough marketplace like the luxury goods market.
I can’t seem to find the bag that Balenciaga claims is infringing its trade dress, so it will be interesting to see what Steve Madden’s response to the suit will be and how this plays out. This isn’t the first time that Balenciaga has sued Steve Madden. The luxury brand sued the footwear company in 2009 for copying its Lego shoe, which was settled out of court.