LOS ANGELES, United States — A United States District Judge ruled in favor of Gucci in its ongoing court battle with Forever 21 on Monday by dismissing the fast fashion retailer's complaint against the luxury brand. Forever 21 has permission to refile, however.
In June, Forever 21 sought protection against threats of trademark litigation from Gucci over the use of stripe webbing on several items. Gucci responded by filing to dismiss the complaint and introducing counterclaims of trademark infringement, trademark dilution and unfair competition.
“The court is skeptical that [Forever 21] has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism,” states the judge’s order from Monday.
“Following the U.S. District Court’s ruling on November 6, 2017, Gucci is pleased that its motion to dismiss Forever 21’s spurious claims has been granted,” a representative for company said in a statement. “Notably, the court commented on the significant defects in the claims brought by Forever 21. This is an important step in Gucci’s continuing commitment to the protection of its renowned and iconic intellectual property. Gucci looks forward to enforcing its rights and prosecuting its trademark infringement, trademark dilution and unfair competition counterclaims against Forever 21.”
Forever 21 has until November 17 to file an amended complaint; Gucci then has until December 4 to respond.
Update — November 20 2017: Forever 21 released a statement through its attorney, Laura Chapman at Sheppard Mullin Richter & Hampton LLP, highlighting the fact that the case has not been dismissed and stating that Forever 21 has filed another complaint. "Gucci filed a partial motion to dismiss and the court granted Forever 21 leave to amend to plead additional facts," says Chapman. "On November 17, Forever 21 filed a First Amended Complaint that includes many additional facts in support of the claim that Gucci does not have the exclusive right to use stripes on clothing."
Forever 21 argues that the stripe design in question has been used by other brands in the past and Gucci cannot have a monopoly on the design. "Forever 21 believes that Gucci’s efforts to monopolize everyday color combinations will harm consumers and designers, and will continue to fight to ensure that common stripe designs remain available for all," says Chapman. "Forever 21 looks forward to continuing to litigate this case to a fair and just result.”