US based fashion brand Levi Strauss on 8th May, 2018 instituted an action in the California Northern District Court against another Italy based fashion company, Isaia Corp for infringement of its trademark ‘Tab device’ before his honour, Chief Magistrate Joseph C. Spero. Representing the parties were Ryan T. Bricker, Gia L. Cincone, Gregory S. Gilchrist and Calla E. Yee for the plaintiff; and Marcella Ballard, Susan E. Hollander and David James Parties for the defendant.
Levi Strauss’ Tab device is usually made up of a textile marker or other sewn material sewn into one of the regular structural seams of the garment including a back pocket and used on varieties of their products. In this suit, it was alleged by the plaintiff that the defendant had manufactured ,marketed and sold substantial quantities of jeans that feature a pocket tab similar to its own. It was therefore contended by the plaintiff that the defendant’s act is likely to confuse consumers about the source of the defendant’s product and /or the relationship between Levi Strauss and Isaia Corp. The plaintiff also sued, inter alia, for unfair competition and dilution of famous marks praying the court, therefore, for damages, lost profit and an injunction preventing the defendant from manufacturing the supposed infringing products. After an ADR certification submitted to the court on July 20, 2018 and upon a notice of voluntary dismissal tendered, the action was terminated on 8th August, 2018 by the plaintiff.
The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, so a trademark properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services.
If a trademark has been registered, then it is much easier for the trademark owner to enforce its trademark rights through an infringement action. Before a judgement can be given in favour of the plaintiff, it must be shown that the defendant used a sign as a trademark and the sign is either identical or deceptively similar to a trademark already on the trademark register. The defendant must have also used the sign as a trademark in relation to similar goods and services as the registered mark. Where this is proved, a judgement for the plaintiff may be inevitable.
Conclusively, although there are a lot of defences available to the defendant in a trademark infringement action, usually in practice, where similar/ identical trademarks exist, coexistence agreements can be a mutually beneficial solution to the problem. This may have been the sole reason for the termination of the case by the plaintiff fashion brand.
AYODELE, Isaac is a fourth year Law Student at the University of Ibadan and a valuable member of the IPTLC Research Team. He is interested in e-commerce, film, music, copyright, Trademark & anti counterfeit, patent and Technology law. He is the current Attorney General of the Law Students’ Society.