Brioni made headlines this past week when it named unconventional candidate, Justin O’Shea, as its new creative director. Meanwhile, the “iconic menswear fashion company, whose clothing is sought the world over,” (Brioni’s words) is also working to protect its intellectual property by way of a recently filed lawsuit. The Rome-based house filed a trademark suit against Darya Trading, a Los Angeles-based Amazon seller, for “usurping Brioni’s renowned, federally-registered BRIONI trademark, and are using it to sell inferior quality men’s suits and other apparel under the mark BIANCO BRIONI.”
According to the brand’s complaint, which was filed this past week in the Southern District of New York, a federal court in Manhattan, it has used the BRIONI mark “for many decades in the United States (and for even longer in Europe), and products sold under the BRIONI mark are renowned for their high quality.” Brioni further alleges that its suits have received widespread attention, as they “have long been worn by male celebrities, including Richard Burton, Kirk Douglas, Henry Fonda, Clark Gable, John Wayne, Morgan Freeman, Matthew McConaughey, and Leonardo DiCaprio, among others. Moreover, the James Bond character frequently donned BRIONI suits in recent Bond films, further exposing consumers to Plaintiff’s BRIONI mark and apparel.”
Enter: Darya Trading, a company “in the business of distributing, offering for sale, and selling discount men’s clothing and accessories.” According to Brioni’s complaint, “Defendants are using the mark BIANCO BRIONI in connection with various apparel items, including suits, blazers, dress shirts and sweaters, as well as footwear.” The complaint alleges, “Apparel sold under the BIANCO BRIONI mark is of inferior quality and is made using synthetic fabrics rather than wool or silk.” Much like Brioni, “Defendants present the term BRIONI in a script font, making the BRIONI portion of the mark stand out and associating the mark even more clearly [with the Brioni brand].”
Such usage of the Brioni mark by Darya Trading is particularly problematic as it has caused actual confusion in the marketplace, according to Brioni, and such use “is willful, in bad faith, and with full knowledge of Plaintiff’s prior use of, exclusive rights in, and ownership of the BRIONI mark.” The brand points to a number of examples of actual confusion amongst both consumers and industry buyers.
For instance, Brioni alleges that it “received an email from the co-founder of The Man Authority, an e-commerce site for men, inquiring whether [Brioni] would be willing to sell ‘its’ BIANCO BRIONI suits on The Man Authority’s website. In another instance, very recently, a consumer sent an email to [Brioni’s] general email address (email@example.com) concerning one of [Darya Trading’s] BIANCO BRIONI suits offered for sale on Amazon.com.”
As a result of such use by Darya, Brioni sets forth claims of federal and state trademark infringement and unfair competition, and is seeking actual, exemplary, and punitive damages, as well as injunctive relief – the latter of which would prohibit the defendant from using the Brioni trademark immediately and permanently. The complaint further asks the court to prohibit Darya from “registering, using or retaining any domain name, keyword, social media handle or other online designation or identifier that incorporates any Prohibited Designation, including BiancoBrioni.com.”