9 November 2017Trademarks

‘Sceptical’ court dismisses Forever 21’s claims in Gucci TM dispute

Luxury brand Gucci has secured a win in its trademark battle against Forever 21, after a US judge dismissed the retailer’s claims for non-infringement and cancellation.

District Judge Fernando Olguin, at the US District Court for the Central District of California, dismissed (pdf) Forever 21’s claims.

Although the retailer can re-file an amended complaint, the court 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”.

In June, Forever 21 sought a declaratory judgment of non-infringement of trademarks belonging to Gucci.

The retailer was looking for protection against a threat of trademark litigation by Gucci over a stripe design on some of its items.

Gucci’s stripe designs, the “green-red-green” and “blue-red-blue” marks, are some of the brand’s most famous trademarks, according to Gucci.

Forever 21 claimed it wasn’t infringing Gucci’s trademarks and that Gucci’s registrations relevant to this dispute should be cancelled.

It added: “Gucci’s pending applications should not proceed to registration. This matter is ripe for a declaratory judgment.”

But Olguin took issue with this argument, explaining that the authority that Forever 21 relied on to seek denial of the pending applications doesn’t apply.

According to the court, 15 USC section 1119 refers only to registered marks.

“Moreover, the court questions whether plaintiff has standing to seek cancellation of registrations that defendant has not accused plaintiff of infringing,” said Olguin.

In August, Gucci claimed that Forever 21’s “legal assault" against the brand and its business model is “built on undermining the very notion of trademark protection”.

Gucci accused Forever 21 of “brazenly” masquerading as a “victim of unfair competition in search of legal redress in the courts”.

In a statement, Gucci said it was pleased that its motion to dismiss had been granted.

“Notably, the court commented on the significant defects in the claims brought by Forever 21. This is an important step in Gucci’s continuing commitment to the protection of its renowned and iconic IP,” said Gucci.

It added: “Gucci looks forward to enforcing its rights and prosecuting its trademark infringement, trademark dilution and unfair competition counterclaims against Forever 21.”

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