Coach Inc.’s lawsuit against Target Corp. was dismissed with prejudice on Friday. Coach filed its lawsuit for alleged trademark counterfeiting and trademark infringement on Sept. 29 in Manhattan federal court. According to court documents, Coach alleged that Target sold a handbag in a store in Largo, Fla., that was a counterfeit of one of its trademarks. In the complaint, Coach said the retailer “never made an inquiry of Coach concerning the genuineness of any item bearing a Coach trademark.” When the initial lawsuit was filed, Target said in a statement it believed the case was without merit.
Iconix Brand Group and IP Holdings filed a lawsuit against Bongo Apparel Inc. and TKO Apparel in Manhattan federal court for alleged breach of contract. The complaint stems from a licensing agreement the two companies had regarding Bongo jeanswear. According to court documents, Iconix claimed that Bongo Apparel entered into a contract it was unwilling or unable to fulfill and then, following its wrongful termination of the licensing agreement for women’s jeanswear, continued to sell the licensed items unlawfully. In its court filings, Iconix asked the court to award $10 million in unpaid royalties plus statutory damages.
According to Bongo, the lawsuit was filed in response to a case it filed in state supreme court in July against Iconix Brand Group and IP Holdings for alleged fraudulent representation, broken promises, unfair competition, breach of contract and other claims. According to those court documents, Bongo Apparel alleged that prior to establishing the license agreement, Iconix omitted key information and provided false material facts.
The complaint also alleged that Iconix “systematically cannibalized” its franchised brand by firing employees, failing to support the franchise and unfairly competing directly with Bongo Apparel. Bongo apparel alleged that it started to lose sales after Iconix licensed its Candie’s and Rampage brands to stores that also sold the Bongo line. Bongo asked the court for over $200 million in damages for 14 counts against Iconix. Both lawsuits are still pending.
Neutrogena Corp. and Johnson & Johnson Consumer Cos. Inc. filed a lawsuit against L’Oréal alleging false advertising and unfair competition. The complaint was filed over promotional materials for a sunscreen moisturizer called Anthelios SX, which is sold under L’Oréal’s La Roche-Posay brand. Neutrogena alleged the materials falsely understated the efficacy of its Helioplex and Active Photobarrier Complex sunscreen products to protect against UVA rays and to sustain that protection when exposed to light. According to the court documents, it is a common practice to submit sunscreen products to independent labs for testing.
This story first appeared in the October 23, 2006 issue of WWD. Subscribe Today.
According to a L’Oréal spokeswoman, the company tested its Anthelios SX against the competition in an independent, FDA-affiliated U.S. lab and all the claims made on the product were validated and approved. “We believe the lawsuit has no merit and we intend to vigorously defend it,” the spokeswoman said. Neutrogena asked the court for preliminary and permanent injunctions to keep L’Oréal from distributing the advertising in question and for it to run corrective ads.
Tacori Enterprises filed a lawsuit against Golda Jewelry Co. for alleged trade dress and copyright infringement of its Crescent Silhouette ring designs. According to the court documents, Tacori “believes that defendant [Golda Jewelry] has engaged in the marketing, manufacture, distribution, duplication and/or sale of rings with designs that are confusingly similar to the Tacori look.” Tacori asked the court for preliminary and permanent injunctions against Golda Jewelry and for unspecified financial damages. Representatives for Gold Jewelry could not be reached for comment.
Columbia Sportswear Co. announced last week that customs officials in Greece seized 19,200 pairs of counterfeit Columbia shoes. The shoes were manufactured in China and were on their way to an importer in Greece, according to a company statement. “The assistance of customs official around the world has been instrumental in identifying counterfeit shipments as they cross borders,” Tim Boyle, president and chief executive officer of the company, said in a statement. Columbia said it increased the seizure of counterfeit goods by almost 10 times the amount captured in 2003.
The American Apparel and Footwear Association urged its members to fight back against counterfeiters last week. In a statement, association president and ceo Kevin Burke said companies need to protect themselves. “Product liability, lost market share, brand degradation and devaluation are all very real consequences of brand counterfeiting,” he said. Apparel and footwear companies need to develop strong internal programs, the statement said. The AAFA will co-sponsor a conference on the issue with the Sporting Goods Manufacturers Association, in association with the Fashion Institute of Technology, on Nov. 14. The keynote address will be given by Shane Berry, senior director of brand protection at Abercrombie & Fitch.