The New Balance vs Golden Goose litigation
New Balance has sued the well-known Italian luxury footwear company Golden Goose before the District Court of Massachusetts, in the United States.
The “Dad Star” sneaker is at the center of the dispute, a model of shoes which Golden Goose began selling in late 2021.
New Balance claims that Golden Goose’s footwear constitutes a violation of the trade dress that characterizes its iconic 990 sneakers.
Trade Dress is an of Anglo-Saxon law institution, defined as a set of characteristics of a product (such as shape, color, packaging) that make the appearance unique. Although neither Italian legislation nor jurisprudence provide a definition of trade dress, its protection can be broadly assimilated to the rules on confusing unfair competition, as well as to the rules on 3D trademarks. Significantly, New Balance did not have any registered design on these shoes and that, therefore, they had to base its action on trade dress.
The 990 New Balance sneaker, which was born more than forty years ago, represents the original version of the so-called dad shoes, i.e., practical and comfortable sneakers, which gained popularity in the past thanks to fathers or, in any case, middle-aged men, who used to wear them for everyday life. Its innovative technology and design made it the first sneaker to cost more than 100 dollars, and it is now sold in six different variations.
The famous sports footwear company claims that Golden Goose’s use of a series of design elements, similar to those that distinguish the New Balance 990.
In particular, New Balance believes Golden Goose deliberately chose shades of grey and the “Dad-Star” name to create confusion in the minds of consumers by falsely associating its products with the New Balance brand.
Golden Goose has requested the rejection of the opposing claims, affirming that New Balance does not have any registration for the trade dress and requesting the Court to declare that it does not have valid rights with respect to the design of the 990 sneakers.
In particular, according to Golden Goose, New Balance would fail to prove that the trade dress of their footwear has acquired the so-called secondary meaning (i.e., that it has acquired a distinctive capacity as a results of its use); moreover, the elements claimed by New Balance would be generic characteristics that cannot be protected.
New Balance, in the absence of registered rights such as the design, will therefore have to prove that the 990 sneakers have gained significant recognition among consumers through its use over the years, that the claimed characteristics are not functional elements, and, finally, that the adoption of similar characteristics may lead to a likelihood of confusion. This burden of proof would not have been necessary in the presence of a registered design.
On the effective strategy to protect design – the Longchamp case
Although the New Balance/Golden Goose case is still ongoing, it highlights how important it is for brands to adopt measures to ensure solid protection of the aesthetic forms of their leading products, also and especially in order to lighten the burden of proof in the event of disputes against third parties.
In fact, though some institutions and regulations do offer protection to products/works without any formality or need for intervention by the interested party, they either require certain requirements to be satisfied or they guarantee less protection respect to the one granted by registered designs/trademarks.
Werefer for example to: i) the unregistered design, to which the European legislation grants protection, even though for a maximum of 3 years instead of 25 as for the registered design, or ii) the protection offered by the Italian copyright law, which arises immediately from the moment of creation of the work, without any registration being necessary; in order to benefit from it, it however requires proving the requirement not only of the creative character, but also of the so-called “artistic value”. Finally, we refer to iii) the protection granted by the rules on unfair competition for slavish imitation, which is sanctioned only because it is likely to create confusion with the competitors’ products and to be invoked, it requires proof of the distinctive capacity of the imitated shape.Sometimes, it may in fact be more convenient to consider other ways of protection, more suitable both for the jurisdictions in force and for the nature of the asset itself.
For instance, registering a design or trademark in Italy, in European Union, or internationally may represent a preferable option, as:
- the registered design/trademark is always presumed to be valid: in the event of disputes, it is the alleged infringer who must prove that the design/trademark is invalid;
- it ensures immediate identification of the content and its dating;
- it guarantees more immediate protection in the event of counterfeiting, both in Italy and abroad, making it easier to obtain judicial measures against the counterfeiter.
Having a registered trademark was decisive, for example, for the purposes of the recent decision issued by the Court of Milan in the context of the case brought by Longchamp, a leading maison in luxury leather goods founded in Paris more than seventy years ago.
In this case, the famous French fashion house asked the Milan court to confirm the unlawful infringement of 3D trademark and unfair competition, as well as the violation of copyright, by a company that had sold bags almost identical to Longchamp’s, specifically identical to the iconic Le Pliage 1623 Nylon:
The Judge ordered the defendant company to cease selling, producing and offering for sale the contested bag models, confirming that these items constituted an infringement of the Longchamp’s trademarks, as well as an act of unfair competition for slavish imitation of the maison’s designs. The Judge, on the other hand, rejected the request for copyright protection invoked by Longchamp, considering the requirement of “artistic value” non-existent (a necessary requirement to benefit from the protection granted by the Italian Copyright Law), as Longchamp had not met the necessary burden of proof.
This decision thus highlights how Longchamp obtained a positive result against the seller, by having protected the design of the imitated bag as a registered 3D trademark.
In other contexts or in other countries, Longchamp would perhaps have achieved the same result through the protection granted by copyright but by demonstrating only the existence of the originality requirement.
Just as happened, for example, in the “revolutionary” Cofemel case (C-683/2017): here the Court of Justice excluded “artistic value” as a condition for obtaining copyright protection, thus departing from the orientation of the Italian Courts.
In this sense, the advice is therefore to contact expert consultants in the field of Intellectual Property from the stage of new product development to assess the most appropriate means of protection, up to the eventual pathological stage, to identify the most effective litigation strategy to counter unlawful imitations depending on the context, as well as the court/authority.
