WWD
NEW YORK ÷ Executives for YSL Beaut vowed to continue fighting a preliminary injunction that has barred the sale of Boucheronâs Trouble fragrance in the U.S. since late November.
Parfums Boucheron, an arm of YSL Beaut that produces the Trouble fragrance, has defended itself against a lawsuit filed by ITF SpA since early October. At the heart of the matter is Boucheronâs use of a three-dimensional snake design on the bottle cap of the Trouble fragrance. According to the original complaint, ITF believes the Trouble cap ãemploys trade dress elements that are similar to, and, in some respects, virtually identical to, distinctive elementsä of those of the Roberto Cavalli fragrance, which ITF produces and sells. Boucheron had provided its manufacturer with a Cavalli cap, alleged the complaint, and Boucheron ãrepresentedä to the manufacturer that it would obtain ITFâs consent to use the design.
[img]
http://www.wwd.com/content/articles/120804_39.jpg[/img]
On Nov. 18, U.S. District Court Judge Clarence Cooper of the Northern District of Georgia granted ITF a preliminary injunction barring Boucheron from using a snake design on any of its perfume products.
Since then, Boucheron filed three motions to lift the injunction, all of which were denied on Dec. 3 in an order from Judge Cooper. In rejecting the motions, the judge wrote that Boucheron ãfailed to show irreparable [nonmonetary] injuryä and that the company had failed to show it could succeed on appeal.
Chantal Roos, chairman and chief executive officer of YSL Beaut, pledged to fight the ruling and expressed confidence, saying, ãWe are going to win.ä
On Monday, Boucheron appealed the injunction to the Eleventh Circuit of the U.S. Court of Appeals. On the same day, the company also filed an answer to ITFâs original complaint and issued its own counterclaims.
In its response, Boucheron noted that ITF had been aware of the Trouble perfume cap since October 2003, but had not filed suit until a year later. Boucheron also said the Cavalli snake was ãmerely an ornament on its perfume bottle and does not designate the source of the Roberto Cavalli product, and therefore does not constitute a protectable trade dress.ä
In its counterclaims, Boucheron accused ITF of faxing letters to retailers such as Nordstrom, Saks Fifth Avenue and Federated Department Stores ãdemandingä they comply with the injunction before it had become effective.
ITFâs corporate offices in Italy could not be reached for comment Tuesday and calls to the companyâs U.S. legal representatives were not returned.
Roos dismissed the Cavalli fragrance, saying it appeals to a different customer. She further asserted that the design of the two products are so dissimilar that there was no chance of mistaking one bottle for another. ãThe consumer cannot be confused,ä she said, declaring that there is as much similarity between the fragrances as between ãthe Eiffel Tower and the Tower of Pisa.ä
According to Roos, Boucheron has used a snake motif in its jewelry since the founding of the house in 1860 and its use in the design of the Trouble fragrance is in keeping with Boucheronâs tradition.
Roos, however, said that YSL will respect the court ruling and change the cap on the Trouble bottle while preparing its appeal. The fragrance is now distributed in about 600 doors and Roos believes it will take two weeks to change all the stock.
NEW YORK ÷ Executives for YSL Beaut vowed to continue fighting a preliminary injunction that has barred the sale of Boucheronâs Trouble fragrance in the U.S. since late November.
Parfums Boucheron, an arm of YSL Beaut that produces the Trouble fragrance, has defended itself against a lawsuit filed by ITF SpA since early October. At the heart of the matter is Boucheronâs use of a three-dimensional snake design on the bottle cap of the Trouble fragrance. According to the original complaint, ITF believes the Trouble cap ãemploys trade dress elements that are similar to, and, in some respects, virtually identical to, distinctive elementsä of those of the Roberto Cavalli fragrance, which ITF produces and sells. Boucheron had provided its manufacturer with a Cavalli cap, alleged the complaint, and Boucheron ãrepresentedä to the manufacturer that it would obtain ITFâs consent to use the design.
[img]
http://www.wwd.com/content/articles/120804_39.jpg[/img]
On Nov. 18, U.S. District Court Judge Clarence Cooper of the Northern District of Georgia granted ITF a preliminary injunction barring Boucheron from using a snake design on any of its perfume products.
Since then, Boucheron filed three motions to lift the injunction, all of which were denied on Dec. 3 in an order from Judge Cooper. In rejecting the motions, the judge wrote that Boucheron ãfailed to show irreparable [nonmonetary] injuryä and that the company had failed to show it could succeed on appeal.
Chantal Roos, chairman and chief executive officer of YSL Beaut, pledged to fight the ruling and expressed confidence, saying, ãWe are going to win.ä
On Monday, Boucheron appealed the injunction to the Eleventh Circuit of the U.S. Court of Appeals. On the same day, the company also filed an answer to ITFâs original complaint and issued its own counterclaims.
In its response, Boucheron noted that ITF had been aware of the Trouble perfume cap since October 2003, but had not filed suit until a year later. Boucheron also said the Cavalli snake was ãmerely an ornament on its perfume bottle and does not designate the source of the Roberto Cavalli product, and therefore does not constitute a protectable trade dress.ä
In its counterclaims, Boucheron accused ITF of faxing letters to retailers such as Nordstrom, Saks Fifth Avenue and Federated Department Stores ãdemandingä they comply with the injunction before it had become effective.
ITFâs corporate offices in Italy could not be reached for comment Tuesday and calls to the companyâs U.S. legal representatives were not returned.
Roos dismissed the Cavalli fragrance, saying it appeals to a different customer. She further asserted that the design of the two products are so dissimilar that there was no chance of mistaking one bottle for another. ãThe consumer cannot be confused,ä she said, declaring that there is as much similarity between the fragrances as between ãthe Eiffel Tower and the Tower of Pisa.ä
According to Roos, Boucheron has used a snake motif in its jewelry since the founding of the house in 1860 and its use in the design of the Trouble fragrance is in keeping with Boucheronâs tradition.
Roos, however, said that YSL will respect the court ruling and change the cap on the Trouble bottle while preparing its appeal. The fragrance is now distributed in about 600 doors and Roos believes it will take two weeks to change all the stock.
