In an order dated June 10, 2014, U.S. District Judge Lewis A. Kaplan affirmed a magistrate’s recommendation that he grant summary judgment on the claim that H&M’s “Black Book by H&M” line of T-shirts infringed Christopher Bonilla’s GLUTNY clothing brand. Both clothing lines featured an image of a pig in profile. Bonilla’s was normally in pink while H&M's was in a bright-orange-and-brown leopard pattern, and both were placed above the respective brand names.
In 2010, ahead of the fashion season, H&M commissioned Swedish designer Andre Lorenz Stock to design a line of shirts to be sold in H&M stores. Bonilla had been using a pig logo since 2007 and began selling products in 2009. A federal trademark registration of the logo was obtained in 2010, and use began the following year.
H&M established that it only sold the Black Book shirts in the spring of 2010 but suit was later filed by Bonilla in September 2012. U.S. Magistrate Judge Michael H. Dolinger issued a report and recommendation on April 16, 2014, recommending that the court find in favor of H&M. The report contained an extensive discussion of the eight-factor customer confusion test set out in the Second Circuit's Polaroid Corp. v. Polarad Elec. Corp. decision. The report concluded that due to the substantial differences between the two designs and the overall competitive disparity between the parties, summary judgment in favor of H&M was warranted.
TIP: When deciding whether to file an action for trademark infringement, consider the future harm to your brand and whether limited uses in different channels of trade are, in fact, impacting your goods or services.