What’s the difference between Yves Saint Laurent and Saint Laurie?
Lots, according to a federal district court judge who has denied men’s retailer Saint Laurie Ltd.’s request for a preliminary injunction barring Yves Saint Laurent America Inc. from using the “Saint Laurent Paris” mark on men’s tailored clothing.
The matter remains the subject of a lawsuit yet to be heard, but revolves around Hedi Slimane’s re-branding of the designer house’s label in 2012.
Judge Deborah Batts of the U.S. District Court for the Southern District of New York ruled that, even in light of an earlier settlement, Saint Laurie had failed to demonstrate that the “Saint Laurent Paris” mark created confusion in consumers’ minds or could cause a loss of goodwill for the plaintiff.
Saint Laurie’s custom-made suits typically retail for $1,795 to $2,395. A selection of Saint Laurent’s suits on Barneys New York’s Web site ranged in price from $2,550 to $2,990.
The case has a 40-year history, going back to Saint Laurie’s 1974 suit against Yves Saint Laurent Men’s Clothing Inc., Yves Saint Laurent Inc. and their former parent firm, Charles of the Ritz, for trademark infringement, a matter resolved the following year when the parties reached an agreement that labels and advertisements for men’s clothing would be identified as either “Yves Saint Laurent” or “Saint Laurent Rive Gauche,” banning the use of the trade name “Saint Laurent” on its own in the sale or promotion of men’s clothing.
Saint Laurie agreed to clearly identify its products as “Saint Laurie Ltd.” in connection with clothing bearing a French style, or in materials using French models.
Saint Laurie sued again in 1981, when YSL launched a women’s clothing line in the U.S. under the “Saint Laurent” name. The earlier settlement was amended to include several categories of women’s apparel — suits, sport coats, overcoats, raincoats and vests — to those that couldn’t bear the “Saint Laurent” name.
Court documents noted that YSL began a “Saint Laurent Paris” marketing campaign in numerous fashion magazines in October 2012, with ads appearing frequently in fashion magazines through September of the following year, around the same time that Andrew Kozinn, president and chief executive officer of Saint Laurie, became aware of the effort.
Kozinn also became aware that the YSL flagship in Manhattan changed its sign to read “Saint Laurent Paris” and that clothing in the store bore that label.
Saint Laurie is a 101-year-old company in Midtown Manhattan that sells and produces custom clothing and furnishings. It has used the Saint Laurie brand since 1956.
Judge Batts noted in her decision that the prior settlements called for YSL to use “Yves” before, or “Rive Gauche” after, “Saint Laurent” but did not prohibit use of “Saint Laurent” with other words.
“We feel that there are several errors in this decision, and we are considering options, including moving against it or appealing,” said John Lane of the law firm of Garson, Segal, Steinmetz, Fladgate LLP, which represents Saint Laurie. “We believe [YSL is] prohibited from using ‘Saint Laurent’ without ‘Yves,’ and we intend to press the point with the available evidence at our disposal.”
No trial date has been set for the lawsuit.
YSL was represented by Jonathan Sherman of Boies, Schiller & Flexner.