Supreme is Not Collaborating with Samsung or Coming to China, a "Counterfeit Organization" Is

 thefashionlaw.com  12/11/2018 00:10:58   TFL

Supreme is collaborating with Samsung. That was the message that the Korean cell phone giant sent on Monday at the Chinese launch event for its Galaxy A8s. According to Engadget, “Samsung China's Feng En even invited executives from the popular fashion brand on stage to talk about the marketing collaboration” against a backdrop that featured the two brands’ logos side by side. The collaboration comes ahead of what will be a roll out of Supreme stores in China beginning in 2019.

The problem? Supreme is not actually collaborating with Samsung. It also is not expanding into China. Instead, another company, one that has notoriously co-opted the Supreme name and branding, is.   

Following confusion on Monday as to its involvement with Samsung, a representative for Supreme set the record straight, saying, “Supreme is not working with Samsung, opening a flagship location in Beijing or participating in a Mercedes-Benz runway show. These claims are blatantly false and propagated by a counterfeit organization.” 

Samsung China’s digital marketing manager, Leo Lau, issued a clarification on Chinese social media platform Weibo, stating, "The brand we are collaborating with is Supreme Italia, not Supreme US. Supreme U.S. doesn't have the authorization to sell and market in China. Whereas the Italian brand got the [Asia-Pacific] (except Japan) product retail and marketing authorization." 

The collaboration is the latest in a heated feud between Supreme, the brand that James Jebbia founded in New York City in 1994, and Supreme Italia, the brand launched in 2015 by International Brand Firm (“IBF”), a British holding company that maintains - and licenses to others - rights in the “Supreme” trademark for use on garments and accessories in an array of countries across the globe. 

To the untrained eye, the wares put forth by Jebbia’s Supreme and IBF’s Supreme are identical. While Jebbia’s brand puts forth seasonal collections that consist of a range of ready-to-wear and accessories and regularly releases new products as part of its famed “drops,” the cult brand is also well-known for its more basic garments, such as t-shirts screen-printed with its red box logo inside of which is the word “Supreme” in a Futura Heavy Oblique font. With the help of Barletta, Italy-based Trade Direct – the company has licensed the Supreme trademark from IBF and manufactures the garments and accessories – IBF has been busy churning out the latter, low-cost tees and other wares bearing Supreme’s most noteworthy indicia, its box logo. 

Thanks to its lookalike wares, its careful marketing (Trade Direct boasts that it is the "licensee of the most important brands in the world of streetwear,” including, it would appear, Supreme), and its overt use of Supreme-specific branding, IBF and Trade Direct have “won over less-informed fans of the streetwear brand and convinced retailers and shops that they were purchasing originals,” according to Italian IP attorney Silvia Grazioli of Bugnion SpA. 

In reality, despite the striking similarities, there is no absolutely affiliation between Jebbia’s 22-year old Supreme and Trade Direct’s unauthorized Supreme Italia endeavor. And in fact, legal sources close to Supreme have told TFL that IBF and Trade Direct are in the wrong, and that the media’s widespread use of the term “legal fakes” – which Silvia Grazioli of Bugnion SpA says is used to refer to “a legal copy of a brand, where ‘legal’ indicates that the fake brand is a trademark registered in a country where the original mark has yet to be launched” – is “misleading and technically wrong” since Trade Direct and IBF’s use of the Supreme trademark on garments  “is simply illegal in Italy.” 

But more than merely winning over customers, IBF has been amassing trademark rights all over the world. To be exact, it says it has rights in the Supreme name/logo in a whopping 54 countries. 

You see, in 2015, IBF started to file applications and receive registrations for the Supreme name and box logo all around the world thanks to a technicality in trademark law. Unlike in the U.S., where trademark rights are enjoyed by the party that is the first to actually use the trademark, in China, for instance, (and an array of other countries), rights are gained by the party that is the first to file a trademark application and then in order to maintain that registration, actually use the trademark within 5 years. 

The lack of a use requirement gives trademark-seeking entities that are not actually using the mark at issue in the jurisdiction at issue a significant advantage. 

So, while IBF began using the Supreme trademark decades later than the original Supreme first put its box logo on its door on Lafayette Street in Manhattan and on the garments and accessories inside its store, it was able to obtain exclusive rights because it filed a trademark application in San Marino, one of the world's smallest countries, before Chapter 4. 

As such, Jebbia’s Supreme has been forced to take on IBF and Trade Direct in court (mostly in Italy and San Marino), citing counterfeiting, trademark infringement, and unfair competition, among other claims, and the results have been mixed. The Business Specialized Division of the Court of Milan has repeatedly sided with Supreme, stating that Trade Direct’s use of "an “identical sign [as Supreme] on identical products” gives rise to counterfeiting and “unlawful activity of parasitic unfair competition.” Following a preliminary blow before the European Union Intellectual Property Office this spring, however, lower courts in Italy have moved to annul their orders that had required the seizure of Trade Direct and IBF Supreme-branded products. 

If the ongoing lawsuits between Supreme, and IBF and Trade Direct are any indication, the Samsung x Supreme Italia collab will likely give rise to a legal fight to the death between the parties in China in the not too distant future … one that will likely make use of the enhanced intellectual property protections in China, particularly provisions established to protect non-native rights holders, such as Supreme, against bad faith trademark filers.

In the meantime, for an in-depth look at the ongoing legal battles between Supreme and IBF/Trade Direct, you can find that here

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