Friday, 1 May 2009

GET LUCKY gets lucky against LUCKY

Fashionista is, of course, familiar with the fashionable US brand LUCKY from Liz Claiborne Inc. and its Los Angeles subsidiary Lucky Brand Dungarees, Inc. Fashionista must admit to not having heard of the GET LUCKY brand owned by Marcel Fashion Group, Inc. least, not until now.

Fashionista suspects that the GET LUCKY brand will now enjoy a wave of free publicity and promotion after a recent summary judgment hearing at which a New York court ruled in its favour on the grounds of trade mark infringement, unfair competition, false designation of origin and false description and representation. The offending articles were men's and women's t-shirts from the LUCKY brand bearing the words GET LUCKY. The legal wrangle began in 2005 when Liz Claiborne sought - unsuccessfully - to prevent Marcel Fashion's use of its GET LUCKY trade mark (which it registered in 1998). To add to this list of complaints, the Judge also found that Liz Claiborne had breached a settlement agreement which the parties had entered into in 2003.

The result: the Judge granted a permanent injunction against Liz Claiborne "preventing the use, in commerce, of any reproduction, counterfeit, copy or colorable imitation of Marcel Fashion's GET LUCKY trade mark on or in connection with men's and women's apparel, fragrances and accessories". The trial is due to take place later this year.

Fashionista muses on the benefits of registered trade mark protection and of bringing a case to court. As Marcel appears to have the earlier right and assuming it has legitimately used its mark (or, at the least, that it did not register it in bad faith) this must be the right decision. Just because Liz Claiborne's brand is the more well know of the two, this should not be a carte blanche to use a similar mark already owned by someone else. Although Fashionista thinks that ironing out your differences business-to-business (or, lawyer-to-lawyer) must be the preferred approach - litigation clearly still has its place in terms of potential rewards: whether they relate to a sense of justice, financial compensation, or more simply, publicity you can spin to your advantage...provided, of course, that you are on the winning team.