Paris-based design house, Balenciaga filed a ‘trade dress’ infringement lawsuit against Steve Madden Ltd last week in the Southern District of New York. Balenciaga is claiming that Madden is allegedly manufacturing and marketing a cheaper version of their Motorcycle ‘it’ bag, confusing consumers in the process. This is not the first time these two parties have found themselves in court: in 2009 Balenciaga filed a similar suit against Madden for copyright infringement of its ‘Lego’ shoes.
This time around, Balenciaga asserts infringement of its rights in the ‘trade dress’ of the Motorcycle bag, which debuted in 2000 and was federally registered in 2007.
What is ‘trade dress’?
The ‘trade dress’ of a product is the overall commercial image (look and feel) of a product or service that indicates or identifies the source of the product or service and distinguishes it from those of others. It may include the design or configuration of a product; the labelling and packaging of goods; and/or the décor or environment in which services are provided. Trade dress can consist of such elements as size, shape, colour and texture; to the extent such elements are not functional. In many countries, trade dress is referred to as ‘get-up’ or ‘product design.
What’s the problem?
In the current case, the trade dress registration covers the front design of the Motorcycle bag and its lookalikes, and extends to: ‘The flat pouch with a zippered rectangular closure, a zipper pull consisting of a strip centrally-knotted and hanging in two equal lengths, and a semi-elliptical patch outfitted with two raised studs in each corner; and two identical patches in an elongated pentagonal shape, featuring an elongated hexagonal patch outfitted with a buckle and two raised studs.’ (see picture below)
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Balenciaga is attempting to prevent Steve Madden from producing a ‘studied copy’ of the bag which they believe contains ‘identical or nearly identical shapes and design elements but is being sold at a significantly lower price’. Further, the fashion house is requesting the New York Federal Court to consider monetary damages, including lost profits.
Steve Madden has ‘priors’!
The last time Balenciaga met Steve Madden in court was 2009 over alleged copyright infringement, unfair competition, and trademark infringement (among other claims) of their ‘Lego’ shoes, featured in Balenciaga’s Fall 2007 collection. Following two years in court, U.S. District Judge John Gleeson dismissed the case and announced the shoe companies had reached a negotiated (undisclosed) settlement in the trade dress dispute.
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Steve Madden has a running history of being on the receiving end of trade mark and copyright infringement lawsuits: see Alexander McQueen v Steve Madden, Ltd (Autumnpaper Limited v. Steve Madden, LTD, 1:09-cv-08332-FSO, U.S. District Court, Southern District of New York, Manhattan). If these cases are anything to go by, the present case will no doubt be long but will inevitably be settled out of court.
The current case is Balenciaga v. Steven Madden Ltd et al, U.S. District Court, Southern District of New York, No. 14-03627.