Gucci’s trademark infringement claim against Forever 21 took a major step forward this month after a US district court dismissed the counterclaim by the fast fashion chain seeking cancellation of the disputed marks. Gucci claims that Forever 21 has infringed the trademarks protecting its ‘iconic stripe motifs’ in blue-red-blue and green-red-green.

In its counterclaim, Forever 21 had sought to argue that Gucci’s stripes (pictured below, right) are not eligible for trademark protection, because the requirements of distinctiveness are not met. It adds that the stripe design in question has been used by other brands in the past and, therefore, Gucci should not be able to claim a monopoly on the use of these colour combinations.

The US District Court of California disagreed in the first instance, however, finding that Forever 21’s argument for cancellation was poorly supported: “The court is skeptical that Forever 21 has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality and genericism”, it stated in its ruling.

In particular, Forever 21 had not sufficiently shown that consumers do not recognise the blue-red-blue and green-red-green stripe pattern as originating from Gucci. Nor had the company delivered enough evidence to support its claim that the stripes are ineligible to function as trademarks, in the sense that they are pure decorative elements, or too simple or generic to function as a trademark.

It’s not over till it’s over... While the District judge dismissed Forever 21’s complaint against Gucci,Forever 21 was given permission to refile its complaint with further supporting evidence, which it did before the 17 November deadline. Gucci now has until 4 December to respond.

"Gucci filed a partial motion to dismiss and the court granted Forever 21 leave to amend to plead additional facts", commented Forever 21’s attorney on this latest development. "On November 17, Forever 21 filed a First Amended Complaint that includes many additional facts in support of the claim that Gucci does not have the exclusive right to use stripes on clothing.

"Forever 21 believes that Gucci’s efforts to monopolize everyday color combinations will harm consumers and designers, and will continue to fight to ensure that common stripe designs remain available for all," the statement continued. "Forever 21 looks forward to continuing to litigate this case to a fair and just result.”