Balenciaga has slapped Steve Madden with a trademark lawsuit … again. Paris-based design house, where Alexander Wang is at the helm, filed suit this past week against Steven Madden Ltd in the Southern District of New York, alleging that the footwear brand has violated the trade dress that extends to its celebrated Motorcycle bag. The design house, which is a subsidiary of luxury conglomerate, Kering, claims that Steve Madden is manufacturing and marketing a cheaper version of its Motorcycle bag, which was specifically designed confuse consumers. One of the house’s most notable bags and a design of former creative director Nicolas Ghesquière, the Motorcycle bag (pictured below) made its debut in 2000 and Balenciaga continues to manufacture it to date.
A quick bit of relevant legal information: Trade dress is a type of trademark protection. However, unlike the most basic form of trademark protection, in which a logo, brand name or design is protected, trade dress allows for the protection of the design and appearance of a product that serves to identify the product to the consumer. So, essentially, a design (even without the original company’s name or logo) that is likely to confuse the public about who made or sponsored the product may give rise to a claim for trade dress infringement.
The trade dress at issue here was federally registered in 2007 and covers the front design of the Motorcycle bag and its lookalikes (think: the City, Arena, Papier, Twiggy, and Velo bags, etc.). Put simply: the registration extends to: “The flat pouch with a zippered rectangular closure, a zipper pull consisting of a strip centrally-knotted and hanging in two equal lengths, and a semi-elliptical patch outfitted with two raised studs in each corner; and two identical patches in an elongated pentagonal shape, featuring an elongated hexagonal patch outfitted with a buckle and two raised studs.”
Balenciaga’s trade dress registration drawing
Balenciaga has asked the New York federal court to prevent Steve Madden from producing the “studied copy” of its Motorcycle bag. According to Balenciaga’s complaint, Madden’s version features “identical or nearly identical shapes and design elements but is being sold at a significantly lower price.” Moreover, Balenciaga’s complaint states: “Defendant’s wholesale copying of Balenciaga’s designs is likely to deceive consumers into believing that the infringing [handbag] is associated with or authorized by Balenciaga when it is, in fact, not.” While the sale of such allegedly infringing designs not only confuses consumers, Balenciaga also claims it is hurting the company’s goodwill, reputation and sales. In addition to an injunction (prohibiting Steve Madden from further selling the bags at issue), Balenciaga also wants monetary damages, including lost profits.
Oh and in case you forgot, these two have a bit of a history. In fact, Balenciaga filed a rather similar lawsuit against the NYC-based footwear company in late 2009, alleging trade dress infringement of its Lego shoe. After battling it out for just about two years, the two parties came to a settlement agreement, details of which were not released. What we do know is this: While Madden payed Balenciaga an “undisclosed amount,” the company’s namesake founder wasn’t very apologetic. Of the lawsuit, he told the press: ”They did a multicolored shoe and we did it. It was stupid.” Fellow Kering subsidiary, Alexander McQueen, also filed (and subsequently settled) a nearly identical lawsuit against Madden two months prior to Balenciaga’s original suit. More about McQueen’s suit here.
More to come …