In November 2013, fashion designer Tory Burch sued Youngran Kim, and three companies controlled by Kim, for counterfeiting and trade mark infringement relating to the sale of jewellery. The jewellery featured a registered logo trade mark design owned by Tory Burch. While this was not the basis of Tory Burch’s legal claim, it is worth noting that, as well as featuring Tory Burch’s logo device, the defendants’ jewellery also closely resembled jewellery designs that had been released by Tory Burch, as seen below.
The defendants denied that they had infringed Tory Burch’s rights and brought a counterclaim against Tory Burch for trade mark infringement, arguing that they had used their logo design (Isis Cross Design) since 2009.
Earlier this month, the U. S. District Court (Court) ruled in favour of Tory Burch, awarding the fashion house US$41 million in damages and costs, ordering the defendants to permanently stop selling the infringing jewellery. The Court found that the defendants had willfully engaged in counterfeiting and had infringed Tory Burch’s trade marks.
The design in dispute was Tory Burch’s ‘TT’ device, which is composed of two stylised letter Ts, stacked upside down on top of each other to form a cross-like figure, sometimes enclosed inside a circle. The original TT logo was created and the trade mark application was filed in 2003, and has continuously been used on Tory Burch products since 2004. One slight difference was that Tory Burch’s original and trade marked TT logo did not feature a split down the centre of the cross, unlike the defendant’s Isis Cross Design. However, Tory Burch has used a split TT logo on her products since 2008.
Tory Burch was able to establish that the label had suffered substantial lost profits as a result of the defendants’ sales of the Isis Cross products. Tory Burch presented, as evidence, a survey which showed that a similar proportion of respondents identified Tory Burch as the source of both genuine Tory Burch products and the defendants’ copy products bearing the Isis Cross Design. This demonstrated that actual consumer confusion had resulted from the defendants’ conduct.
The Court dismissed the defendants’ counterclaim, with the only reliable invoices produced by the defendants showing that the first Isis Cross products were sold on in December 2011, which is well after Tory Burch’s trade mark was registered and after the label started using the split TT logo.
Substantial time, money and creativity are invested into building a recognisable brand. This decision highlights how important it is for brand owners to seek registration of their business’ trade marks at the earliest opportunity, ensuring that brand owners are well placed to take action to stop copyists attempting to ride off their success and reputation. Tory Burch was able to take action, and recover substantial damages and costs, as she had registered her trade mark early on. This case also underscores the importance of businesses turning their minds to protecting not just the business’ name as a trade mark, but also other aspects of branding that might benefit from trade mark protection, such as design logos and distinctive marks used on or alongside products.