Fendi defends its rights

A success story from across the pond: news has reached Fashionista that Fendi has won a long standing legal wrangle in New York against a discount retailer selling counterfeit Fendi branded goods for over 20 years.

Burlington Coat Factory Warehouse Corp. has been ordered to pay $4.7 million in damages for knowingly infringing Fendi's trade marks. This is a massive damages award and one which reflects the severity of continued trade mark infringement spanning more than 2 decades. The claim cannot have come as a shock to Burlington, whose continued sale of counterfeit Fendi goods was in breach of an injunction granted against it in 1987 for the same infringing activity.

Fendi first sued Burlington in 1986 for the purchase of counterfeit Fendi marked goods. Despite the 1987 injunction preventing Burlington from sellling any Fendi goods without Fendi's permission (which, let's face it, Fendi are unlikely to give), Burlington continued to do so until Fendi eventually lost patience and sued for infringement in 2006. If the fear of breaching a court injunction wasn't enough to stop Burlington, maybe a multi-million dollar fine will be?

So has justice triumphed at last? The sale of counterfeit goods is an issue which plagues the luxury fashion houses, devauling and potentially runing brands and reputations. At worst, a brand may need to be abandoned if counterfeits have led to the brand being perceived as "chavvy" or anything less than luxurious. At best, a huge injection of capital and excellent PR and advertising will be needed to turn around public perception. Either way, the threat to brand owners posed by counterfeit goods - which so many consumers laugh off as being irrelevant or fabricated - is a real one.

The counterfeit item appeals to those consumers who want to buy into the look of a luxury brand without paying the price tag associated with it or waiting on the waiting list. But the price tag and the waiting lists are there for a reason: to acknowledge the time, effort and creativity taken to develop the coveted item; to reflect the quality of the workmanship and materials used; and, of course, to maintain exclusivity and to afford the brand - and its customers - a certain status. But where the coveted bag is seen adorning every other arm, the exclusivity is lost and with it, the brand's value and reputation (and, admittedly, a chunk of its profits).

So will an almost $5 million fine be a wake up call for counterfeiters? Call her cynical, but Fashionista says "no". As long as there is demand, there will always be supply. For every infringer caught and fined, there are many many more. On the plus side however, it is not just the manufacturers of fakes who are liable - sellers can't escape - and that has to be some (small) comfort to brand owners, as sellers are easier to identify and sue.


The war against counterfeiters may not have been won, but at least this one battle has been, and that's a good start.

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. ...at 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.