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Burberry Tests the Strength of its Trademark in Target Infringement Lawsuit

The fashion industry does not play nicely with counterfeits and Burberry is slapping a major lawsuit on Target for allegedly copying its trademarked iconic plaid check print.

According to a lawsuit filed on May 3 in New York’s Southern District Court, Burberry, the heritage luxury brand whose plaid check pattern is globally recognized, accused Target, the U.S. mass-market retailer, of wrongfully ripping off its iconic luxury check patterning in a myriad of products and damaging its global market reputation in doing so.

Burberry is seeking up to $2 million in statutory damages for each infringed trademark, with the aim of enforcing better counterfeiting regulations within the fashion industry.

“This action arises from Target’s repeated, willful, and egregious misappropriation of Burberry’s famous and iconic luxury check trademarks (collectively, the ‘Burberry Check Trademark’),” the lawsuit said. “Despite being aware of Burberry’s exclusive trademark rights, Target nevertheless has repeatedly infringed these rights by selling a variety of products bearing close imitations and counterfeits of the Burberry Check trademark, including eyewear, luggage, stainless-steel bottles, and, most recently, scarves.”

According to the lawsuit, Burberry sent a cease-and-desist letter to Target in early 2017, which requested that Target stop selling products that featured unauthorized reproductions of the Burberry Check Trademark. Despite receiving this warning, Target allegedly continued to scale these products to market without permission from Burberry. Photographic evidence from the case places genuine Burberry products, including scarves, side-by-side with the alleged copycat Target products, demonstrating similar, if not almost identical, check patterning. The lawsuit said the Burberry Check Trademark is registered without specific color designation, giving Burberry the right to use the Burberry Check Trademark in any color combination.

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“This type of lawsuit is almost to be expected when a big fashion brand’s trademark is threatened. Legally, if Burberry are successful, this would only reinforce that their trademark is strong and distinctive, and this will probably give comfort to other fashion houses with similarly famous marks,” Catherine Howell, associate, solicitor at London-based law firm EIP, said. “If however, Burberry loses this case, it could mean that other brands may not be so wary of using this type of checked pattern on their items.”

Target’s ongoing brand collaborations could also factor into Burberry’s argument. The retailer has previously partnered with notable brands, including Isaac Mizhari and Hunter, to create limited-edition products for its diverse consumer base. What makes this case potentially thorny, however, is that consumers may not know the business dynamics behind these collaborations, yet other fashion industry members may not continue to engage with Target if luxury leaders like Burberry are calling out the mass retailer for allegedly knocking off their products.

“Burberry has a very strong case, especially since Target was collaborating with popular brands. Big brands like that should be very aware of intellectual property laws, how they handle other companies, and businesses that they work with and do not work with. Reputation is a lot,” Biana Borukhovich, esq., and chair of the Trademark, Licensing and Intellectual Property Committee under the Brooklyn Bar Association, added. “Consumers go to Target because they want a good deal. Other brands may not want to work with them for collaborations if they hear this going on.”

Intellectual property (IP) laws also vary between the U.S. and the U.K., and it will be interesting to see how the lawsuit plays out, since Burberry is a U.K.-based brand and Target is a U.S.-based brand.

U.S. fashion design copy rights are far weaker than in the U.K., however fabric designs and patterns are eligible for legal protection. Meanwhile, in European countries, including the U.K., fashion designs can be protected at the European Union level and within each country’s jurisdiction. The trial process also varies between both nations, where U.S. trials are often more costly and can involve a jury’s opinion compared to U.K.’s trials, where juries do not participate in these kinds of civil trials.

“There is greater uncertainty with jury trials, and there is the possibility that a juror will favor a brand which they recognize and like and not view the case as two equal parties,” Howell said.

The Burberry v. Target case follows numerous other alleged counterfeiting cases, as luxury brands continue to step up their intellectual property security at a time when fast fashion continues to disrupt consumers’ wardrobes. Despite the prevalence of knock-off products, luxury brands can take precautionary action against potential copycats and protect the integrity of their market presence.

“In the U.S., the person who has priority over the trademark is the person that starts using the brand name or logo, not the person who registers first. Companies need to police their mark on social media and on the web,” Borukhovich said. “Policing on the web is just as important as policing it on the federal Patent and Trademark Office (USPTO) site, to make sure other similar trademarks don’t go through.”

As shown with Burberry v. Target, the counterfeiting saga is not over, however, as more intellectual property and trademark laws are set in place, fashion luxury houses will be better protected against counterfeiting.

“The value in fashion is vitally protected by intellectual property. These rights give the owner exclusivity over the intellectual property and allow the owner to license their designs and keep copycats off the market,” Howell added. “Without these rights to protect a fashion houses’ work, other companies could simply copy any branded items, benefiting from the goodwill of the fashion houses’ brand without having to put in the hard work that makes up the creative designing process.”