Balenciaga,
the former Haute Couture, Paris-based fashion house has filed a law suit
(May 20th 2014) against the footwear company Steven Madden Ltd in the Southern
District of New York, alleging that the footwear brand has manufactured, advertised, offered for sale and sold bags which replicate and violate the trade
dress of its recognised Motorcycle bag shown below.
Designed by Nicolas Ghesquière, (the now current creative director of LMVH), Balenciaga has been selling the iconic classic bag since 2000. According to the lawsuit, Balenciaga has accused the Madden brand of copying “the shapes and design elements of
Balenciaga’s Classic Bag, and producing a bag featuring identical or nearly identical shapes and design elements but sold at a significantly lower price.” Unlike in the UK,
the US does not have design protection, which protects design right the three-dimensional
shape of a design. Therefore in the US, the motorcycle bag is protected by what
is called trade dress – a subset of trademark law, which can be used to protect
the overall appearance of an item. This extends to features such as size, shape,
colour or colour combinations of a product or anything that creates the overall look and
feel of a brand in the marketplace.
In order to be successful in a
trade dress lawsuit it is essential that the consumer believes that the trade
dress is a source indicator of distinguishing the goods and services of one
from those of others. The trade dress issue here relates to the front design of
the Motorcycle bag which was federally registered in 2007. Importantly
the features which make up the trade dress in
question must not serve a utility or function outside of creating recognition
in the consumer's mind. Looking at the design below,
the Goss-IPgirl wonders whether this is merely functional or actually a
recognisable indicator of source?
Balenciaga’s registered Classic Bag Trade Dress drawing
Balenciaga argue that the Classic Bag Trade Dress depicted
above originate exclusively with them. And that the Balenciaga Classic Bag
Trade Dress is unique, inherently distinctive and non-functional. Interestingly, this is not
the first time that Balenciaga the Parisian fashion house has filed has a
lawsuit against the Steve Madden, Ltd, the founder of the NYC footwear company
that bears his name. In late 2009, Balenciaga filed a lawsuit against Steve
Madden for allegedly copying the label's multicolor Lego heels from the fall
2007 collection.
Also in 2009, Alexander McQueen also filed (and subsequently
settled) a lawsuit against Madden for copying its black Faithful bootie.
The case also draws attention to the NYC based footwear company’s reputation for producing knock-off designs. Balenciaga argue that the Steve Madden brand has operated “a pattern of misappropriation of Balenciaga’s designs, most recently with the copying of the Balenciaga’s CREEPER shoe design.”
Balenciaga [Left] Steve Madden [Right]
What this shows
is that contrary to the belief that luxury fashion houses are not concerned
about fast fashion companies imitating their design, luxury and other
higher-end companies are willing to protect their designs & revenues
against companies down the lower end of the food chain.
Balenciaga has
asked the New York federal court to prevent Steve Madden from producing the
“studied copy” of its Motorcycle bag. In the lawsuit, it is alleged that such
sales “can confuse customers, create a false impression that Steven Madden's
products are Balenciaga's, and hurt the French company's goodwill, reputation
and sales.”
The case is
Balenciaga v. Steven Madden Ltd et al, U.S. District Court, Southern District
of New York, No. 14-03627.
