Kering’s luxury brands have won an early victory in court in their fight against Chinese retailer, Alibaba over the claim that Alibaba sells fake goods on its website.
Back in May, Kering luxury brands including Gucci, Yves Saint Laurent, and Balenciaga, sued Alibaba in New York, claiming that trademark infringement and the sell of counterfeit goods on the Chinese retailer’s website.
This past week, these brands were granted their request for a temporary restraining order against several Alibaba vendors named in the suit. This is a huge win for these luxury brands because it means that the vendors must immediately cease the sale and distribution of the counterfeit goods on the Alibaba website.
Since becoming a well-known brand, Tory Burch‘s unique designs and patterns have been copied time and again. Last year, the company filed trademark infringement lawsuits against these companies who misappropriated the well-known designs. One of those lawsuits was filed against New York-based jewelry company, Lin & J International.
In the lawsuit, Tory Burch claimed that Lin & J misappropriated designs and patterns that are associated with the brand and was thus selling counterfeit jewelry. Lin & J responded with a counterclaim, asserting that Tory Burch engaged in unfair trade practices, tortious interference with it’s business, defamation and trademark infringement. It also claimed that it did not misappropriate any trademarks and that it’s jewelry was inspired by the Coptic cross.
Madonna was recently sued by cosmetics company, Hard Candy for infringing on its trademark by attempting to create and license fitness clubs and clothing with the name Hard Candy. Named in the suit are Madonna, her manager Guy Oseary, MGHCandy and Epic Rights.
image via www.hardcandyfitness.com
Hard Candy is a cosmetics company that has been around since the mid-90’s when it became popular with its fun and quirky nail polish colors. Hard Candy is claiming that it has held a trademark over the name “Hard Candy” since 1996 in the area of cosmetics and has licensed the name for other products including clothing and accessories since 2009.
Beverly Hills jeweler, Chris Aire, sued a whole host of fine jewelry and watches brands back in 2010 for trademark infringement over the use of the term “Red Gold.” One of the brands sued by Aire was LVMH’s Hublot. The legal battle between Hublot and Aire has gone through several levels of the judicial system.
The crux of Aire’s claim was that “Red Gold” was a signifier of Aire’s products and brands and that he in fact had exclusive right over the use of this term because he had federally trademarked the term.
Hublot attempted to dismiss the case through a motion of summary judgment, claiming that the trademark is generic. The lower court declined to dismiss the case and deemed that there were enough questions of fact that a jury needed to decide the outcome. Hublot then appealed this decision once again arguing that Aire has no exclusive rights over the term “Red Gold” because the term has become generic within the industry.
On Friday, Alibaba Group Holding, an online retailer based in China, was sued in Manhattan federal court, by Kering luxury brands, including Gucci and Yves Saint Laurent. The brands argue that the retailer knowingly allowed counterfeiters to sell their products to consumers.
The Kering brands are alleging trademark infringement and racketeering and are seeking both monetary damages as well as an injunction preventing the future sale of these counterfeit products.
Alibaba Headquarters: By Thomas Lombard via Wikimedia Commons
In their lawsuit, the brands claim that Alibaba conspired with the counterfeiters to manufacture, sell and distribute products that infringe on the plaintiffs’ trademarks that confuse the consumer and lead the consumer to believe that the products are genuine luxury items.
This is the second time that Alibaba has been sued by Kering brands over counterfeit products. The brands filed a lawsuit in July of 2014, but withdrew it with the ability to refile if the two sides couldn’t come to a resolution of their issues. And, it seems they haven’t reached a resolution.
Mary Kay, the cosmetics giant, has sued RetailMeNot, an online source for shopping coupons, for trademark infringement. Mary Kay has argued in its complaint that RetailMeNot has been using it’s name without valid authorization.
Mary Kay believes that by offering coupons to consumers, RetailMeNot causes them to falsely assume that the coupon source is affiliated with the beauty brand, even though no relationship or affiliation exists between the two.
Mary Kay’s major point of difference with other cosmetic companies is that it sells its products through a network of independent beauty consultants. Mary Kay argues that the coupons are affecting its relationship with these consultants because they are pressured to accept coupons that aren’t offered by Mary Kay.
Because of this damage to the beauty brand’s business, Mary Kay asked the court for damages as well as an injunction preventing RetailMeNot from using its name.
Last year, Converse sued 31 brands and retailers for trademark infringement, claiming that these brands and retailers infringed on trademarks held by Converse for its well-known Chuck Taylor sneakers.
Converse also filed a complaint with the International Trade Commission, who has been investigating the claims since November. Several of the brands, including Ralph Lauren, H&M, Zullily, and Tory Burch have settled their lawsuits with the brand. Each brand agreed to stop producing shoes that would infringe Converse’s trademarks, and pay an undisclosed amount in damages.
Converse Chuck Taylor Sneakers // via Sweet and Lonely
However, some brands are aren’t going down without a fight. New Balance, who was not one of the 31 brands sued, filed a motion for declaratory judgment, asking the court to deem Converse’s trademarks invalid in a bid to preempt any litigation from Converse.
Wal-Mart has also vowed to fight Converse’s claims. Wal-Mart filed a response with the ITC claiming that Converse’s complaint is simply trying to “extort monetary settlements” from the brands it has sued.
Last Fall, Converse went on a litigation spree and sued 31 brands, claiming trademark infringement. Amongst those 31 brands sued were H&M, Zulily, and Tory Burch. The shoe brand also filed an complaint with the International Trade Commission, who announced in November that it would be investigating Converse’s claims.
Converse Chuck Taylor Sneakers // via Sweet and Lonely
Converse claimed in its lawsuit, that these brands copied its iconic ‘Chuck Taylor’ sneaker, a style which has become synonymous with Americana fashion. Converse claimed that these brands infringed upon trademarks it holds for design elements of the sneaker.
Converse has since settled with Ralph Lauren, one of the brands sued. Ralph Lauren agreed to pay an undisclosed amount and destroy all infringing products.
It seems that three more brands have settled with Converse over the past month. H&M, Zulily, and Tory Burch have all settled with Converse. Reports state that each brand has agreed to pay damages (the amount not being disclosed to the public), to destroy all infringing products and to no longer manufacture and sell products that could infringe Converse’s trademarks.
Back in October, Converse sued over 30 brands for trademark infringement, and filed a complaint to the International Trade Commission.
Converse claimed in its lawsuits that these brands and retailers have infringed the American shoe brand’s trademarks and have produced and sold shoes that are confusingly similar to the Chuck Taylors that Converse has become famous for. The specific trademarks in question are the rubber stripe around the shoe and the pattern on the sole of the shoe.
Converse ‘Chuck Taylor’ Sneaker via converse.com
Included in the brands named in the complaint is American brand, Ralph Lauren. This past week, Converse and Ralph Lauren seemed to come to a settlement agreement and jointly filed a motion to terminate the pending suit.
Back in September, CHANEL sued Indiana native Chanel Jones, for using her name in the name of her salon, Chanel’s Salon, claiming she was infringing on at least nine of CHANEL’s trademarks. It seems the court has sided with CHANEL on this one and has ordered Jones to cease any use of the word “CHANEL” in connection with her salon and other business ventures.
The court has entered a consent judgment last week, ordering Jones to no longer use “CHANEL” as “as a business name, trade name, company name, corporate name, d/b/a, fictitious business name, trademark, service mark, domain name or to otherwise identify any business, services or products,” or in any advertising or social media outlets.
The court also ordered Jones to destroy any materials bearing the word “CHANEL” by February 15, 2015.
It may seem a bit harsh for a court to prevent a small business owner from using her name in connection with her business, especially since so many businesses bear the name of the founder/owner. But, this holding is the basis of trademark protection: protecting an entity’s goodwill and reputation by preventing others to trade on that goodwill, even if it was done so without intent or harm.