Gucci's trademark infringement suit against Forever 2 1 took a big step forward this month after a US district court dismissed Forever 21's counterclaim seeking cancellation of the marks. contested. Gucci claims that Forever 21 has forged trademarks protecting its "iconic striped patterns" in blue-red-blue and green-red-green.
In its counterclaim, Forever 21 sought to argue that the Gucci bands (pictured below, right) did not qualify for trademark protection because of the lack of distinctiveness . The company added that the striped pattern in question had been used by other marks in the past and therefore Gucci should not be able to claim a monopoly on the use of these color combinations.
The California District Court rejected the claims on the grounds that Forever 21's argument for the cancellation of Gucci's marks was ill-founded: "The Court is of the opinion that Forever 21 has not sufficiently substantiated its facts. an application for annulment based on the lack of distinctiveness acquired by the use of Gucci's trademarks, their purely aesthetic, functional and generic character ".
In particular, Forever 21 did not sufficiently demonstrate that consumers did not recognize the blue-red-blue and green-red-green striped pattern as coming from Gucci. Nor had the company provided sufficient evidence to support its contention that the tapes are not likely to function as trademarks in the sense that they are pure decorative elements, too simple or generic to work as a brand.
It will not be finished until the end ... While the district judge dismissed Forever 21's complaint, the latter was allowed to re-file its complaint by providing further evidence, which it did before the deadline of 17 November . Gucci now has until December 4 to respond.
"Gucci has filed a partial motion for dismissal and the court has granted Forever 21 permission to amend to plead additional facts," commented Forever 21's lawyer on the latter development. "On November 17, Forever 21 resubmitted its first complaint in a modified version containing many other facts in support of the allegation that Gucci does not have the exclusive right to use stripes on clothing.
"Forever 21 believes that Gucci's efforts to monopolize the color combinations used in everyday life will hurt consumers and designers, and will continue to fight to ensure that common designs made of common color tapes remain commonplace. available to all, "the statement said. "Forever 21 hopes to continue to plead this case until a fair and equitable result is achieved."