Oakley accuses wholesaler of design patent and TM infringement

Oakley accused a California-based wholesaler of design patent infringement, counterfeiting, trademark infringement, unfair competition and false designation of origin, in a complaint filed yesterday.

The sports apparel brand, which is a subsidiary of Italian fashion company Luxottica, filed its lawsuit at the US District Court for the Central District of California.

Oakley has design patents which cover elements of its glasses, including the frame shape and front of the products. Oakley also has trademark registrations in the US for its oval-shaped logo.

Wholesale In Motion Group, which does business as wholesalers All Time Trading and Blue Star Empire, has been selling eyewear “that would appear to the ordinary observer to be substantially similar” to Oakley’s protected designs, according to the complaint.

The products also feature the Oakley marks or marks confusingly similar to them, the sports brand claimed.

Wholesale is unfairly competing with Oakley and trading on the sports brand’s reputation and goodwill by causing consumer confusion, the suit claimed.

It added that Wholesale has received profits of an unknown amount as a result of the infringement, while Oakley has suffered “great and irreparable injury”.

Oakley explained that the bulk of Wholesale’s products are stored in California, under the jurisdiction of the California district court. The sports brand asked the court to award it reasonable attorneys’ fees, triple damages, and Wholesale’s profits, as well as injunctive relief.

Earlier this year, Luxottica secured a victory at the EU General Court when the court annulled a European Union Intellectual Property Office trademark decision.

The General Court backed Luxottica’s attempt to overturn a decision centring on the applied-for mark ‘Bey Beni’, agreeing that it was too similar to the Italian brand’s figurative ‘Ray-Ban’ mark.