On May 2nd, British luxury fashion brand Burberry filed a complaint alleging trademark infringement and dilution against American retailer Target Corporation in the Southern District of New York. At issue in the case is the sale of scarves and other fashion items in Target stores which include a pattern closely resembling the iconic Burberry check trademark.
In its suit, Burberry notes that it began using the Burberry check mark in the 1920s. Burberry has registered trademarks for the check pattern both in a distinctive red, camel, black and white color pattern as well as the check with no specified color scheme, giving Burberry the right to use the pattern in any color combination.
Burberry discovered Target’s infringement of its check trademarks in 2017 when it learned that Target was marketing a line of fashion scarves which closely resembled Burberry’s own products. Burberry alleges that the scarves are of inferior quality compared to Burberry’s scarves while remaining visually identical to the original. Burberry sent a cease-and-desist letter to Target in 2017 asking the retailer to stop sales of scarves and other infringing items using the check trademark including eyewear, luggage and bottles. Target’s continued marketing of these products in the months after receiving the cease-and-desist letter from Burberry, representing willful infringement of Burberry’s marks.
Burberry’s suit against Target includes eight claims for relief including claims for trademark counterfeiting, trademark infringement under both the Lanham Act and at common law, false designation of origin, trademark dilution under both the Lanham Act and New York State law, and deceptives act under New York State law. Burberry is seeking an injunction preventing Target’s sale of the infringing products as well as trebled damages, or, in the alternative, trebled illicit profits, or, in the alternative, statutory damages of up to $2 million for each trademark infringed by Target.
Burberry has been increasing its trademark policing efforts in recent years according to information collected through legal analytics service Lex Machina. After seeing a spike of 10 cases filed in 2010 dip down to only one case filed in 2011, Burberry’s trademark litigation filings have steadily increased up to nine cases filed last year. Although Burberry doesn’t file as many trademark infringement suits as other brand owners, the cases the company does bring to district court tend to result in large damages award. A 2017 Trademark Litigation Report released last year by Lex Machina shows that Burberry was awarded the second-largest amount of damages in trademark litigation between January 2009 and October 2017, although the vast majority of those damages were awarded on default judgments.