The Paris-based fashion house, Balenciaga (lead by American fashion designer Alexander Wang), has filed proceedings against Steve Madden Ltd in the Southern District of New York. Balenciaga alleges that footwear giant Steve Madden has violated its trademark over the famous Motorcycle bag, which has been manufactured by Balenciaga since 2000.
Click here to view images of the Balenciaga Motorcycle Bag and the Steve Madden Bag.
Balenciaga claims that Steve Madden has made a cheaper version of the Motorcycle bag, and specifically designed it to confuse customers. The claim is in relation to trade dress infringement, which is a type of trademark protection registrable in America. Trade dress allows for the protection of the design and appearance of a product that serves to identify the product to the consumer. This means that a design, even without the original company’s name or logo, that is likely to confuse the public about who made the product, may give rise to an infringement claim.
Balenciaga’s trade dress registration design
Source: United States Patent and Trademark Office
The New York Federal Court must now decide whether Steven Madden should be prevented from producing its bag, which Balenciaga alleges is a “studied copy” of the Motorcycle bag. According to Balenciaga’s claim, the allegedly infringing design goes further than just confusing customers and also hurts the company’s goodwill, reputation and sales. Balenciaga is seeking an injunction prohibiting Steve Madden from selling the bag, and profits (including lost profits).
Similar protections are available in Australia through design registration and the common law principle of passing off.