A report submitted towards the partial fulfilment of the course of

Masters of Fashion Management

ARTICLES ON INFRINGMENT CASES IN TRADEMARKS

INTELLECTUAL PROPERTY RIGHTS

Submitted by:

Harshika

Rohit Srivastav

Under the guidance of:

MR. B.B JENA

(Professor. NIFT, Bhubaneswar)

Submitted to:

Department of Fashion Management Studies

National Institute of Fashion Technology
(Ministry of Textiles, Govt. of India)
NIFT Campus, IDCO Plot No-24,
Bhubaneswar, Odisha-751024.
 Case 1 Trademark
Louis Vuitton Case with South Korean Restaurant (LOUIS VUITON
DAK)
April19,2016

About the Case:

Louis Vuitton filed a suit in September 2015, alleging that a South Korean restaurant is using
its name to sell friend chicken and was damaging Louis Vuitton brand. The owner who has
been identified by the press by his surname, Kim has also utilized a logo very similar to that
of Louis Vuitton and had it printed on his napkins and fried chicken take-out cartons. Kim,
operates a fried chicken restaurant in Seoul, named "LOUIS VUITON DAK".

Source: https://trademark.eu/louis-vuitton-dont-be-a-chicken/

http://www.brandchannel.com/2016/04/29/trademark-louis-vuitton-fried-chicken-
042916/

Outcome:

A district court in Seoul agreed and in October ordered Kim to immediately cease its use of
the famed Paris-based brand and threatened a 500,000 won-per-day fine for non-compliance.
Kim responded by altering the restaurant name a bit to "chaLouisvui tondak," which he
unsuccessfully argued was different enough from the Louis Vuitton brand name to comply
with the court order.

Penalty
Louis Vuitton initiated legal action against with a court in Seoul and this week, the court
ordered Kim to pay the fashion house 14.5 million won for the 29 days that the amended
name was displayed. "Although he changed the name with different spacing, the two names
sounded almost the same," the Korea Times quoted the judge as saying.
 Case 2 Trademark
Louis Vuitton v. My Other Bag

December 2016

Source: http://www.thefashionlaw.com/home/louis-vuitton-looking-to-take-my-other-
bag-case-to-supreme-court
About the Case:

In June 2014, Louis Vuitton filed suit against My Other Bag (MOB). The small brand
known for its designer bag-on-a-canvas bag styles, which include Balenciaga, Proenza
Schouler, YSL, Celine, and obviously, Louis Vuitton lookalikes. The Paris-based brand (LV)
alleged that the MOB bags not only infringe its federally registered trademarks and
copyrights, it also diluting LV world-famous trademarks.

Louis Vuitton claims that MOB is likely to create confusion in the marketplace, as consumers
are likely to believe that MOB's designs are authorized or endorsed by Louis Vuitton, or that
the design house is associated with the products in some way.

Outcome:

U.S. District Court said that MOBs inexpensive canvas bags, which bear cartoon depictions
of Louis Vuitton copyright and trademark-protected graphics, are, in fact, covered by the
parody defense,

The Second Circuit Court of Appeals ruled in MOBs favor in December 2016. Thereafter,
the Second Circuit declined Louis Vuittons request.

The court went on to note that even if MOBs use was not fair, the chance of dilution by
blurring is slim because the Louis Vuitton brand is so well known.
 Case 3 Trademark

American Eagle Outfitters brand Case with Pantaloons

September23, 2015

Source:
http://us.fashionnetwork.com/news/American-Eagle-Outfitters-files-lawsuit-against-
Indian-label,574350.html

About the Case:

US-based Retail Royalty Company has filed a trademark infringement case in the Delhi High
Court against Pantaloons Fashion & Retail, alleging that the Aditya Birla Group Company
had a brand and logo that were deceptively similar to its American Eagle Outfitters brand and
the eagle logo.
American Eagle contended in court that the Urban Eagle Authentic Outfitters brand and eagle
logo of Pantaloons are deceptively similar to the US company's trademark American Eagle
Outfitters and logo.
Retail Royalty is the owner of American Eagle outfitters, a trendy youth brand that operates
more than 1,000 stores in the US, Canada, Mexico, UK, China, Japan and several Middle
Easy countries. In India, it sells products including jeans bags and shoes.

Outcome:

Sujata chaudhari a lawyer representing Retail Royalty, declined to comment on the matter,
saying the case is currently sub judice. A Pantaloons spokesperson said in an email that the
matter is sub judice.
 Case 4 Trademark

Forever 21 Trademark case with Adidas.

March6,2017

Source: http://www.thefashionlaw.com/home/forever-21-sues-trademark-bully-adidas-
says-enough-is-enough

About the case

According to Forever 21s complaint, it has fallen victim to Adidass threats (of trademark
infringement-related litigation) on more than one occasion. Since 2006, Adidas has
commenced a pattern of complaining about striped apparel sold by Forever 21, and it has
steadfastly increased its threats to encompass virtually any item of clothing with decorative
stripes.Forever 21 claims that years ago, Adidas managed to secure federal trademark
registrations for use of three, parallel stripes placed in specific locations on certain shoes and
clothing. Adidas is well known for aggressively enforcing its perceived trademark rights
against others, suing and threatening suit against retailers and manufacturers of footwear and
clothing who use three stripes in a manner that Adidas believes is likely to cause confusion.

Outcome

While a declaratory judgment in Forever 21's favor would not provide any further action
from the court, it would effectively force Adidas to cease its threats of infringement against
Forever 21, as the court will have held that Forever 21 has not infringed its trademarks.
 Case 5 Trademark

Raymond limited Vs Raymond pharmaceuticals

July 13, 2010

Source: www.raymond.in/

http://www.raymondpharma.com/

About the case

A recent decision of the Bombay High Court appears to have highlighted the intricacies of
Section 29 of the Trade Marks Act, 1999 to a considerable extent. In the case of Raymond
Limited v. Raymond Pharmaceuticals (Suit No. 437 of 2006), a division bench of the
Bombay High Court, comprising Justices DK Deshmukh and RP Sondurbaldota, had ordered
on July 13, 2010, the appellant Raymond Limited (RL), a Mumbai-based textile company of
the Singhania Group, to share its well-known trademark Raymond with a Chennai-based
pharmaceutical company Raymond Pharmaceuticals (RP). As far back as 1983, Raymond
Limited had conceived and adopted the use of the word Raymond in a stylised manner for
marketing its products, viz. textile piece goods and got the same registered under the Trade
and Merchandise Marks Act, 1958 as well as under the Copyright Act, 1957.

RP had, in its turn, claimed as defence that its products and nature of business were entirely
different from those of RL and moreover, the term Raymond was a common word and a
Christian name, meaning mighty protection in the English language. Following this, a
single Judge bench had rejected RLs notice of motion, who subsequently filed this appeal. It
was RLs contention that in accordance with Section 29(4) of the Trade Marks Act, 1999,
since RLs registered trademark had gained a considerable reputation in India through the
years and since RP had been using the mark without due cause and such usage resulted in
dilution of the mark, therefore, despite the dissimilarity in RPs products with RILs, the
former had been guilty of infringement.

Outcome:

In order to claim that RPs action amounts to infringement, RL has to establish that RP has
been dealing in the goods in respect of which the mark is registered. Since the contrary has
been established in the present case, therefore RL cannot be privy to the grant of an
injunction against RP. RLs appeal was thus dismissed.
References:

https://spicyip.com/2010/08/complete-man-just-got-split-in-two.html

http://www.thefashionlaw.com/home/forever-21-sues-trademark-bully-adidas-says-
enough-is-enough

https://brandequity.economictimes.indiatimes.com/tag/aditya+birla

http://www.raymondpharma.com/

https://trademark.eu/louis-vuitton-dont-be-a-chicken/

http://www.brandchannel.com/2016/04/29/trademark-louis-vuitton-fried-
chicken-042916/

http://www.thefashionlaw.com/home/louis-vuitton-looking-to-take-my-other-bag-
case-to-supreme-court

https://www.google.co.in/search?q=adidas+and+forever+21+infringement+case&rlz=
1C1GCEA_enIN751IN751&source=lnms&tbm=isch&sa=X&ved=0ahUKEwi26uzxq
sPXAhVLRo8KHbCyAjQQ_AUICygC&biw=1517&bih=735#imgrc=PbIcapMB1Xp
moM: