Luxottica Group, the maker of Ray-Ban sunglasses, has sued BCBG Max Azria, alleging that the Southern California-based fashion brand is knowingly infringing the name of its famous trademark-protected "Wayfarer" style sunglasses. According to its complaint, which was filed on Wednesday with the U.S. District Court in Los Angeles, Luxottica claims that BCBG Max Azria's unauthorized sale of infringing eyewear was intended to confuse consumers, hurting Milan-based Luxottica's reputation and goodwill.
Luxottica, the world's largest eyewear company, which holds the eyewear licenses for brands, including Chanel, Burberry, Dolce & Gabbana, Prada, and Versace, as well as eyewear chains, such as LensCrafters, Pearle Vision, Sears Optical, Sunglass Hut and Target Optical, claims that "Defendant has used in commerce, without Luxottica’s permission, reproductions, copies or colorable imitations of the Luxottica Mark in connection with distributing, selling, offering for sale, advertising, and/or promoting Defendant’s eyewear [...] with the intent to unfairly compete against Luxottica, to trade upon Luxottica’s reputation and goodwill by causing confusion and mistake among customers and the public, and to deceive the public into believing that Defendant’s eyewear products are associated with, sponsored by, originated from, or are approved by Luxottica, when in truth and fact they are not."
The eyewear giant did not stop there, though, further alleging that "Defendant’s conduct is intentional, malicious, and wanton in that Defendant infringed and continues to infringe upon the Luxottica Mark with full knowledge that Luxottica owns and has the exclusive right to use this mark, with the intention of causing a likelihood of confusion and mistake and to deceive, and with the intention of eliminating competition from Luxottica."
As such, Luxottica has set forth claims of federal trademark infringement, Federal Unfair Competition & False Designation of Origin, Federal Trademark Dilution, and Trademark Infringement under California Common Law, among other claims, and is asking the court to permanently prevent BCBG Max Azria from selling the allegedly infringing glasses, as well as triple and punitive damages, and other remedies.
The Wayfarer sunglasses, which were designed in 1952, have enjoyed federal trademark protection in the U.S. for over two years now. The trademark was registered by Bausch & Lomb, whose Ray-Ban business was acquired by Luxottica in 1999. (Note: It is the word "wayfarer" and not the actual design for which Ray-Ban has legal protection).
The case is Luxottica Group SpA et al v. BCBG Max Azria Group LLC et al, U.S. District Court, Central District of California, No. 16-04062.