image: Burberry

image: Burberry

An ugly legal battle has been brewing between one of America’s largest big-box retailers and one of Britain’s most esteemed luxury brands.  While the fashion media has been busy speculating as to what exactly Burberry will look like under the direction of its new creative director Riccardo Tisci, the British luxury stalwart has been readying to take on Target in a fight over the retail giant’s  “repeated, willful, and egregious misappropriation of Burberry’s famous and iconic check trademarks.”

According to the $8 million-plus trademark infringement and counterfeiting lawsuit that Burberry filed in a New York federal court on Wednesday, Target has been selling products bearing “blatant reproductions” of Burberry’s world famous check trademark for over a year and will not stop.

Turns out, after Target began selling an array of “products bearing unauthorized copies of the Burberry check trademark,” including “eyewear, luggage, and water bottles,” early last year, Burberry sent the retailer with a cease and desist letter, alerting it of Burberry’s exclusive rights in the checkered pattern.

Fast forward several months from the date that Target received Burberry’s cease and desist letter and “despite being aware of Burberry’s exclusive trademark rights,” Target began offering a number of scarves for sale, all of which bore Burberry’s legally-protected check print.

Burberry asserts in its complaint that “the fact that Target continued its unlawful conduct by selling the infringing scarves within months of receiving Burberry’s cease-and-desist letter …  demonstrates Target’s intent to continue selling infringing merchandise without regard for Burberry’s intellectual property rights.”

It continues on to allege that “Target’s conduct is willful, intentional, and represents a conscious disregard for Burberry’s rights in the Burberry check trademark and a calculated decision to misappropriate the enormous goodwill represented by the Burberry check trademark.”

While Burberry claims that “Target’s copycat scarves are of inferior quality, they are superficially indistinguishable from genuine Burberry scarves,” and as a result, are likely to cause confusion amongst consumers as to the source of the products. In particular, Burberry claims that consumers are likely to be misled as to whether the “infringing products are either affiliated with, endorsed or authorized by, or somehow connected to Burberry, or that the infringing products sold and promoted by Target are genuine Burberry products.”

Interestingly, given the prevalence of designer x mass market collaborations in fashion over the past decade in particular, Burberry asserts that such “confusion” – which is the key inquiry in a trademark infringement matter – is particularly likely given “Target’s well-publicized history of collaborating with popular brands and fashion designers to promote and sell Target-exclusive limited edition collections.”

The frequency with Target offers up collaborations with high fashion brands – including Victoria Beckham, Missoni, Altuzarra, Phillip Lim, and Peter Pilotto, among others – “further heightens the risk of such consumer confusion.”

This rising potential for a brand or retailer’s penchant for collaborations to weigh against it in terms of likelihood of confusion is something we pointed out in connection with a recently-released pair of Vetements sneakers that look a whole lot like adidas’ classic Stan Smith shoe.

In addition to seeking injunctive relief, which would immediately and permanently bar Target from selling goods bearing Burberry’s checkered mark, Burberry is seeking $2,000,000 (enhanced statutory damages) for each trademark that Target have counterfeited and/or infringed, plus “profits, damages and fees, to the full extent available” and punitive damages stemming from Target’s particularly “egregious misappropriation.”

A representative for Target told TFL exclusively on Monday, “At Target, we have great respect for design rights. We are aware of the filing by Burberry and hope to address the matter in a reasonable manner.”

UPDATED (October 17, 2018): According to the court’s docket, the parties settled the suit out of court and ahead of trial, with Burberry filing to voluntarily dismiss the case “with prejudice against the defendant.” While the terms of the settlement are confidential, they likely include Target paying a monetary sum to Burberry for its use of the British luxury brand’s check print and an agreement that Target will immediately and permanently refrain from advertising, offering for sale or selling any products bearing Burberry’s trademark or any similar marks. 

* The case is Burberry Limited (UK) et al v. Target Corporation et al, 1:2018-cv-03946 (SDNY).