In Italy, several Chinese entities were selling garments and lining trench coats with fabric resembling the iconic Burberry print. The entities went even further and incorporated the print onto handbags, footwear, and fragrances. When this was brought to Burberry’s attention, they retaliated by bringing a trademark infringement case against the entities. Burberry also accused the defendants of violating the Italian Criminal Code, which outlaws the illicit manufacture and sale of another party’s trademarks or distinguishing signs or patents, models, or designs. The district court held that because the defendants’ patterns did not include Burberry’s name, consumers were less likely to confuse the defendant’s product with Burberry’s. Therefore, the defendants could avoid trademark infringement liability.
However, on appeal, Burberry argued that their checkered pattern, alone, serves as an indicator of Burberry as the source of the product. They further argued that the defendants’ replication of the pattern, even without the “Burberry” word mark, will misguide consumers to believe that the products are associated with Burberry. The Court of Appeals agreed with Burberry on that claim, however, the court also held that the check pattern is not exclusive to Burberry alone, and “falls in the broader category of the famous Scottish tartans.” The court ruled that the tan, black, white, and red checkered tartan print does not serve as an indicator of a single source, and does not function as the Burberry trademark.
In October 2020, the Supreme Court reversed the lower court’s ruling and held that “trademark infringement occurs even in cases of partial reproduction of the trademark where it is likely to create confusion with the earlier registered mark.” This is true in cases where the trademark has “an established reputation” or when a large number of consumers know and can recognize products and services by a specific mark being used. Karine Disdier-Mikus and Nancy Larrieu, from DLA Piper, note that “within the European Union, in particular, trademarks with ‘reputation’ enjoy heightened protection as a result of the European trademark reform adopted in late 2015.” In other cases, the courts determine the reputation of a trademark by analyzing “trademark awareness, market share, the extent of use, the geographical scope of use, duration of use, and promotional activities.”
This decision is an important one for Burberry. It not only recognizes the Burberry check as a trademark with or without the “Burberry” wordmark, but it also overturned “dangerous” precedents set by the lower courts. It will be interesting to see if the courts see a surge of litigation from brands dealing with similar issues as Burberry, after this ruling.