24 December 2020Trademarks

Small victory for New Balance in IP suit over Jaden Smith collab

New Balance’s collaboration with celebrity Jaden Smith is no longer the target of a counterfeiting complaint, but the trainers resulting from the partnership are still alleged to feature infringing trademarks.

ABG Collective, which manages brands such as Forever 21, Barneys, and Sports Illustrated, filed an amended complaint in the IP dispute at the US District Court for the Southern District of New York on Friday, December 18.

The New Balance trainers at the heart of the dispute are part of a collaboration between the shoemaker and Jaden Smith. The various styles of trainers feature the word ‘Vision’ along the side of the shoe, or on the tongue, or across the sole.

ABG owns a number of word and figurative trademarks featuring the word ‘Vision’, relating to the  Vision Street Wear brand that it acquired in 2014.

The ‘Vision’ marks, registered in international class 25 to cover footwear, fashion, and sportswear, have been used continuously since 1986. The US Patent and Trademark Office registered ‘Vision’ trademarks as early as 1988.

In October, ABG filed a complaint against New Balance, alleging that the trainers marketed as part of the New Balance/Jaden Smith collaboration feature confusingly similar imitations of the ‘Vision’ marks. ABG said that it has not provided the shoemaker with a licence to use the marks.

The offending products “bear spurious designations that are identical to the ‘Vision’ trademarks and are, therefore, counterfeit”, ABG said.

It added that the likelihood of confusion caused by the shoemaker’s “misconduct” is causing irreparable harm to the goodwill held in the ‘Vision’ trademarks, and that New Balance had acted in bad faith with malicious intent as it had full knowledge of the ‘Vision’ trademarks.

ABG added that the Vision brand has historically entered into similar collaborations to that of the New Balance/Jaden Smith partnership, so consumers are likely to mistakenly believe that the collaboration is connected to the legitimate owner of the ‘Vision’ trademarks.

The complaint accused New Balance of counterfeiting, trademark infringement, trademark dilution, unfair competition, and deceptive trade practices, and asked the court to permanently enjoin the shoemaker from imitating or making unauthorised use of the ‘Vision’ marks.

ABG asked the court to order New Balance to recall all offending products from trade and to account for all profits derived as a result of the infringement, in addition to treble damages.

ABG further requested statutory damages of up to $2 million for each instance of counterfeiting.

As reported by  The Fashion Law, counsel for New Balance wrote to the court after the complaint was filed, arguing that this is “an ordinary trademark dispute between two established market participants” and that ABG’s original complaint does not credibly support its allegations of counterfeiting.

New Balance asked the court to schedule a pre-motion conference to discuss the shoemaker’s motion that allegations of counterfeiting be removed.

In ABG’s amended complaint, filed on Friday, ABG had removed its counterfeiting claim against New Balance, though it maintained its allegations of trademark infringement, trademark dilution, unfair competition, and deceptive trade practices.

ABG has also asked for the same forms of relief that were requested in the initial complaint; however, its request for statutory damages of up to $2 million for each instance of counterfeiting has been removed accordingly.

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