Chanel’s creative director, Karl Lagerfeld has been slapped with a trademark lawsuit by New Balance. In its complaint, which was filed yesterday in the Southern District of New York, the footwear company alleges that while Lagerfeld has used a block capital “K” in place of its famous “N” logo on a pair of trainers for his eponymous line (as distinct from Chanel), the shoes are otherwise the same and as a result, the Karl Lagerfeld version is causing confusion for consumers. (Read: Ordinary consumers are likely to be confused and erroneously believe that New Balance has an affiliation, connection or association with the Lagerfeld shoe, or that New Balance has sponsored or approved the use of the design by Lagerfeld). The Boston-based sneaker company points out it has been using this design since the 1970s, and that Lagerfeld’s use infringes and dilutes the distinctive, famous trade dress of its 574 model. (Trade dress refers to the total appearance of a design). New Balance claims that it has spent millions of dollars promoting the 574 since the mid-1990’s and developing consumers’ exclusive association between the distinctive design and New Balance.

From the looks of things, New Balance holds an array of active federally registered trademarks. According to its complaint, “New Balance is the owner of famous, federally-registered, and incontestable trademarks for the block capital letter  N used in connection with athletic footwear and for a block capital letter N located in a particular place and angle on the side of a sneaker.” So, while none of federally registered marks cover the trade dress of its classic 574 silhouette as a whole, New Balance’s best selling style, this could be a pretty open and shut win for New Balance, as New Balance is contesting Lagerfeld’s use of the capital letter, specifically its placement in the saddle area. It seems to me that this falls quite squarely within New Balance’s trade dress registration.

Boston-based New Balance is primarily seeking an order declaring that its trade dress is valid and enforceable. It is also seeking an injunction against Lagerfeld using the design, a recall of all confusingly similar Lagerfeld shoes and an award of Lagerfeld’s profits from the shoes plus compensatory and treble damages, costs and attorneys’ fees, according to the complaint.

New Balance’s 574 sneaker (left) and Karl Lagerfeld’s version (right)

This isn’t the first time New Balance has policed its trade dress against a high fashion house. In 2009, New Balance hit LVMH Moet Hennessy Louis Vuitton with a trade dress suit in the United States District Court for the District of Massachusetts, seeking to force Louis Vuitton to discontinue a new design that was allegedly virtually identical to New Balance’s 574 model. In that case, which ultimately settled out of court, New Balance argued that its 574 style operates in the same market space as Louis Vuitton’s Minstrel model because the 574, despite its low price, is “extremely popular with sneaker aficionados and within fashion and celebrity circles, i.e. among those who may choose to spend upwards of $500.00 on a sneaker.” As part of the settlement, LV agreed to cease production of its Minstrel. Other details of the settlement are not known.

More to come …