The Kering-owned Italian design house on Tuesday gave Forever 21 a verbal lashing in California federal court more than a month after the fast-fashion chain urged a judge to not only declare it was not infringing on Gucci’s many trademarks with apparel and accessories making use of blue and red, as well as green and red, grosgrain stripes (which Gucci refers to as “webbing”), but to invalidate those trademarks altogether.
Gucci’s stripes have long been incorporated into the brand, but it’s been featured more heavily in recent collections under the leadership of creative director Alessandro Michele on bags and accessories, dresses, jackets and suiting, among other items.
After characterizing Forever 21 as a company essentially built on imitation, Gucci noted that Forever 21 is attempting to hold itself out as a victim of unfair competition to distract from its infringements.
“Despite Forever 21’s attempt to use its lawsuit to intimidate Gucci into ceasing its trademark enforcement efforts, Gucci is as committed as ever to protecting its long established intellectual property rights, which are at the heart of the brand’s identity, and to ending once and for all Forever 21’s reprehensible exploitation of its distinctive trademarks and those of other brands who have suffered the same type of piracy,” a Gucci spokesman said.
In addition to seeking dismissal of Forever 21’s push for declaratory judgment and invalidation, Gucci is also filing counterclaims for infringement, dilution and unfair competition, as Forever 21 has “flagrantly and willfully” infringed on its trademarks.
Gucci added that it’s suing Forever 21 because it considers the chain’s stripes a “blatant exploitation of Gucci’s famous and iconic blue-red-blue and green-red-green stripe webbing trademarks.”
“Gucci considers the defense and enforcement of its celebrated trademarks of paramount importance in protecting its customers from those who wish to knowingly profit from deception and confusion,” the spokesman added.
While Gucci had attempted to find an out-of-court resolution to the trademark dispute, with a lawsuit instigated by Forever 21, it’s taking the opportunity to formally scold the chain for its alleged copying ways and put an end to what its spokesman called “spurious claims.”
“Forever 21 surely knows how strong these trademarks are, and, in seeking to cancel them nonetheless, is taking aim not only at Gucci America, but also at any other company that has earned brand recognition through creativity, innovation and investment,” Gucci said in its filing. “Gucci America’s trademarks rest on nearly a century of work in establishing and maintaining the Gucci brand’s reputation for high-quality goods that are instantly recognizable to consumers as ‘Gucci’ brand products and that incorporate the impeccable quality for which the Gucci brand is known. Forever 21 cannot undo the substantial consumer confusion it has created, or the resulting damages it has caused, by wrongfully seeking to divest Gucci America of its famous trademarks.”
Gucci added that its counterclaims are part of an effort to “assert its commitment to its customers that it will protect the value of Gucci products and that it will not allow infringements of, or attacks on, its signature trademarks.”
The brand is seeking an injunction of the allegedly infringing Forever 21 product, along with unspecified damages.
A representative of Forever 21 could not be immediately reached for comment.
There’s no doubt that Forever 21 has faced more than its share of infringement allegations, but it launched the action in June against Gucci saying the luxury house was going too far with demands that it “discontinue all sales of certain clothing and accessory items with blue-red-blue and green-red-green stripes.”
Products other than the sweater being singled out by Gucci as infringing include a stripe choker necklace and a satin bomber jacket with stripe details, which are being sold online and in Forever 21 stores.
But Forever 21 argued to the court that not only are shoppers unlikely to confuse any of its merchandise with that of Gucci, but that it is simply “not infringing any Gucci trademark” while characterizing the stripe designs at issue as “among the most favorite, popular and widely used colors and design features on clothing.”
“Gucci should not be allowed to claim that Gucci, alone, has a monopoly on all blue-red-blue and green-red-green striped clothing and accessory items,” Forever 21 said at the time.
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