The iconic Marc Jacobs Totebag that took the fashion and accessory world by storm has found itself in some hot water. A Chinese seller of handbags – including knockoff Marc Jacobs totes – has launched a declaratory judgment lawsuit against the high-fashion powerhouse brand.
According to an article from The Fashion Law, Guangzhou Xiao Ling Wan Trading Co. (“Guangzhou Xiao”) recently filed a complaint with the U.S. District Court for the Southern District of New York alleging that Marc Jacobs made “fraudulent assertions of trademark infringement.”
The lawsuit claims that Marc Jacobs “intentionally and knowingly made fraudulent assertions of trademark infringement” with the aim of getting Amazon to remove Guangzhou Xiao’s listings of bags that serve as a dupe for its THE TOTE BAG bags, as well as three other handbag variations.
Essentially, Guangzhou Xiao is alleging that Marc Jacobs “is taking advantage of [the Amazon] system” – which it says is “heavily weighted in favor of trademark owners” – so that it “can hurt [Guangzhou Xiao’s] business.” Specifically, Guangzhou Xiao states that Amazon’s takedown system “offers trademark owners like [Marc Jacobs] (whether he gets his trademark legally or illegally) a substantial benefit that entities typically will not get from a court, because an Amazon de-listing effectively amounts to an injunction removing the accused product(s) from the marketplace.”
Since three different handbag styles were all taken down by Amazon as a result of the complaint, Guangzhou Xiao maintains that Jacobs’ “malicious complaint has caused [it] irreparable harm.” And because its ongoing business relationship with Amazon includes the current sale of similar handbags that Marc Jacobs claims to be infringing, Guangzhou Xiao is seeking a declaration from the court that it is “not infringing, has not infringed, and is not liable for infringing [Jacobs’] pending-review [THE TOTE BAG] marks.”
Guangzhou Xiao is also accusing Jacobs of interference with its contractual relations with Amazon as well as interference with prospective economic advantage as a result of its “fraudulent assertions of trademark infringement.”
Ultimately, Guangzhou Xiao is seeking monetary damages, as well as preliminary and permanent injunctive relief, including requiring Marc Jacobs to notify Amazon of its consent to withdraw its trademark infringement complaint about the Guangzhou Xiao products. Guangzhou Xiao is also looking for the court to “temporarily, preliminarily, and permanently” bar Jacobs from making “any future complaint” against Guangzhou Xiao for the use of the marks at issue.
