Chanel attacks companies that market jewelry created from assemblies of old buttons of the luxury brand17/03/2021
While many jewelry and accessory designers offer costume pieces for sale using old buttons from different Haute Couture houses, Chanel has decided to sue one of these designers in the United States for trademark infringement and unfair competition.
Upcycling is based on the transformation of second-hand objects and materials into new pieces. This technique has become particularly sought after on social networks, so much so that several designers have launched a business around this trend.
The brand attacked by Chanel sells chains with old Chanel buttons as pendants, creating necklaces or bracelets marked with the CC monogram.
For the luxury brand, the misappropriation of these authentic buttons is intended to unduly take advantage of Chanel’s reputation.
Indeed, according to the brand, the fact that the secondhand brand does not modify the CC monogram and does not mention that the jewels were created without Chanel’s authorization, creates a risk that the consumer will not see any significant difference between the appearance of the product marketed by the secondhand brand and the authentic products marketed by Chanel. In this respect, it believes that the presence of the logo of the second-hand brand is inoperative to ensure this distinction.
In any event, Chanel believes that such marketing is detrimental to its brand image and reputation, as consumers may be misled as to the origin of the jewel.
It is seeking an award of damages, as well as an injunction imposing a permanent ban on the production, marketing and sale of the upcycling jewelry, and on the use of the Chanel trademark for reproduction, copying, imitation or any other confusingly similar variation.
This case raises the question of the scope of application of the First Sale Doctrine (the U.S. equivalent of the exhaustion of rights theory), under which once a product has been marketed on the U.S. market, its owner cannot oppose its resale. Could this doctrine apply to the resale of only materially unmodified parts of the product initially placed on the market? This conflict between the competitive rules laid down by the First Sale Doctrine and the protection of trademark law, which prevents, among other things, the consumer from being misled, will therefore have to be addressed.
By the IP/IT team of UGGC Law Firm