Gucci doesn’t own monopoly on coloured stripes, claims Forever 21
Retailer Forever 21 has hit back in its dispute with Gucci, claiming that the luxury brand doesn’t own a monopoly on certain coloured stripes.
In an amended complaint, filed on Friday, November 17 at the US District Court for the Central District of California, Forever 21 gave more than 100 examples of striped clothing by different brands.
“Gucci wrongfully claims a monopoly on these common ornamentations on clothing, shoes, bags, and accessories,” said the suit.
Forever 21 sought a declaratory judgment of non-infringement of trademarks belonging to Gucci in June this year.
The retailer was seeking protection against an alleged threat of trademark litigation by Gucci over a stripe design on some of its items.
According to Gucci, the brand’s stripe designs, the “green-red-green” and “blue-red-blue” marks, are some of its most famous trademarks.
Forever 21 claimed it wasn’t infringing Gucci’s trademarks and that Gucci’s registrations relevant to this dispute should be cancelled.
Earlier in November, District Judge Fernando Olguin dismissed Forever 21’s claims for non-infringement and cancellation, while allowing the retailer to re-file an amended complaint.
Olguin was “sceptical” that Forever 21 had “sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism”.
Now, in its latest complaint, Forever 21 said that it doesn’t use stripes as a trademark or
source-identifier on any of its clothing items, but rather in ornamental, decorative, and aesthetically functional ways.
The complaint added: “Gucci should not be allowed to claim that Gucci alone has a monopoly on all blue-red-blue and green-red-green striped clothing and accessory items.”
Laura Chapman, partner at Sheppard Mullin Richter & Hampton and representative of Forever 21, said: “It is undisputable that the stripe design at issue has been widely available for years under many different brands, as shown in the first amended complaint. As a result, Gucci cannot have a monopoly on this design and Forever 21 should not be found to infringe.”
Chapman added that Forever 21 believes Gucci’s efforts to “monopolise everyday colour combinations will harm consumers and designers” and that the retailer will continue to fight to ensure that “common stripe designs remain available for all”.
A spokesperson for Gucci said: “Rather than heed the US district court’s dismissal and stated scepticism of Forever 21’s baseless claims that Gucci lacks rights in some of its most famous and iconic trademarks, Forever 21 has attempted to bring these claims again.”
The spokesperson went on to say that the amended complaint is “merely a longer version of Forever 21’s spurious first filing and underlines the extent to which Forever 21 will go to persist in its predatory business model, built on consumer deception and confusion”.
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