Most Recent Articles In Legal
Latest Legal Articles
- Fashion Firms Active in Trademark Litigation
- Wal-Mart and Visa Now Battling Chip-and-Pin Issue
- China Trademark Law Again in Spotlight After Apple Ruling
More Articles By
NEW YORK — Call it the battle of the watches.
This story first appeared in the August 21, 2013 issue of WWD. Subscribe Today.
Swiss watchmaker Audemars Piguet has accused Tommy Hilfiger and its licensing partner Movado Group of producing “imitations” of its Royal Oak watch.
In a lawsuit filed last Tuesday in New York federal court, Audemars Piguet Holding SA claimed Hilfiger and Movado “reproduced, copied and imitated” the design of the Royal Oak timepiece.
Citing trade dress and trademark infringement, the Swiss company said the defendants copied the look of its signature watch, that being, among other design elements, an octagonal unitary bezel with attachment studs and a specific decorative pattern.
Trade dress infringement claims concern visual appearance, for example, the look of a product or its packaging, and as a result, they tend to be difficult to prove.
Nonetheless, Audemars Piguet cited Hilfiger’s Eton watch, which was manufactured by Movado, as a prime offender.
“Defendants, without Audemars Piguet’s authorization, intentionally and knowingly have and continue to sell and offer for sale imitations of the Royal Oak watch configuration trademarks,” attorneys for Audemars Piguet said, explaining that since April, they have “repeatedly protested, in writing, the introduction and then sale” of the watches at issue, which continue to be sold today.
Movado Group declined to comment. Tommy Hilfiger did not reply to inquiries seeking comment.
Audemars Piguet emphasized that the sale of the Eton watch, which retails in the $200 price range, could cause “consumer confusion” due to its “similarity in design” to the Royal Oak, which retails for between $16,000 and $800,000.
Judge Victor Marrero, who garnered some notoriety in fashion circles following a spate of headline-making decisions on the Christian Louboutin SA versus Yves Saint Laurent SA trial last year, will preside over this case. In the Louboutin case, the French shoemaker sued YSL in April 2011, claiming its rival infringed on its red-sole trademark when it sold a red pump with red soles.
Marrero disagreed with Louboutin, and allowed YSL to continue to sell the monochrome shoes. But he didn’t stop there. In his opinion, the judge questioned the validity of Louboutin’s trademark and mused about what he called its “monopoly” of the color red.
Louboutin quickly filed an appeal in January of last year, and the New York federal appellate court rendered a decision nine months later, disregarding Marrero’s thoughts about any kind of monopoly.
The court backed the validity of Louboutin’s mark, but narrowed it to refer to contrasting uppers, meaning YSL, or anyone else, could sell a red shoe with a matching sole.
The Audemars Piguet case will likely be more straightforward, even though trade dress infringement is involved.
For its part, Audemars Piguet is seeking an injunction barring the sale of the Eton watch, in addition to profits garnered from the sale of the timepiece, punitive damages and attorneys’ fees and other costs.