A New York federal court has proposed a sweeping injunction following a jury trial win for the luxury goods brand in February and a subsequent bench trial over equitable remedies. In an email to the parties last week, Judge Louis Stanton set out proposals for injunctive relief for Chanel by way of an order that – if finalized – will prevent What Goes Around Comes Around from, among other things, “using any of the CHANEL trademarks or any marks confusingly similar thereto to advertise or promote WGACA’s general business” and will permanently block the reseller from “making any advertising claims, representations, or statements [about] the genuineness of any CHANEL-branded items” unless it has records to support such authentication claims.
At a high level, the far-reaching proposed injunction, as first reported by TFL, seeks to ensure that consumers are not confused about the lack of connection between Chanel and What Goes Around Comes Around (“WGACA”) or the nature of any Chanel-branded products that are being offered up by WGACA. In furtherance of this aim, the court proposed an array of restrictions and/or requirements that WGACA must abide by within 90 days of the injunction being issued …
> Use of Chanel branding: Primarily, the court stated that WGACA must refrain from using the CHANEL word mark or any marks confusingly similar thereto in Chanel’s “stylized font,” and using any of the CHANEL marks … in connection with its advertisement, promotion, distribution, or sale of CHANEL-branded items, “other than to identify a particular item currently for sale as made and sold by Chanel, or to the extent the specific item currently for sale itself bears CHANEL marks.”
Beyond that, WGACA also must not: (1) use photos or copies of Chanel runway and marketing campaigns and/or Chanel print ads bearing the CHANEL Marks or any marks confusingly similar thereto; (2) use any hashtags consisting of or including the word “Chanel”; (3) use the word “Chanel” in discount codes; and/or (4) use the name, image, or likeness of Gabrielle “Coco” Chanel.
And in any circumstance, the court says that WGACA “must ensure that no more of any of the CHANEL marks is used than is necessary to identify the particular item being offered for sale, such as, but not limited to, emphasizing the CHANEL marks or using the CHANEL marks more prominently than the surrounding text.”
> Disclaimers: The court’s proposed injunction requires WGACA to “prominently display, clearly and conspicuously, the following disclaimer on any webpage or social media post advertising or selling a CHANEL-branded item, or on physical tags where products are sold in person: ‘THIS ITEM HAS NOT BEEN AUTHENTICATED BY CHANEL.’”
For CHANEL-branded items being advertised and/or sale online, WGACA must post the disclaimer “noticeably on the individual product page, not merely at the bottom of the webpage, and that page must also list the CHANEL-branded item’s Chanel Serial Number as it appears on the accompanying Authenticity Card, Authenticity Plate, or label affixed to the actual CHANEL-branded item.”
> Refurbished and/or modified goods: WGACA may not advertise, offer for sale, or sell any CHANEL-branded items that have been “materially altered or changed, including, without limitation, items that combine original and non-original Chanel parts.” Additionally, it may not advertise, offer for sale, or sell any “genuine CHANEL-branded items that have been repaired, restored, or refurbished without fully disclosing on any webpage selling a CHANEL-branded item, or on physical tags where products are sold in person, the nature of the repair, restoration, or refurbishment.”
> Authentication claims: WGACA may not certify, guarantee, or otherwise make “any advertising claims, representations, or statements asserting the genuineness of any CHANEL-branded items advertised or sold by WGACA for which WGACA has no records of its own authentication to support its authentication claims.” (You can find more about how resellers are quietly reworking the language of their authentication claims here.)
> Point of sale items: WGACA “may not advertise, offer for sale, or sell any CHANEL- branded items that have not been authorized for sale by Chanel, including, but not limited to, point-of-sale items and retail props, after notification by Chanel that such items have not been authorized for sale.”
The two parties have since lodged responses to the proposed injunction, with the luxury goods brand looking to clarify some of the language in order to avoid ambiguity and the reseller angling to rein in the scope on several points.
The case is Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY).
