NEW YORK — Executives for YSL Beauté vowed to continue fighting a preliminary injunction that has barred the sale of Boucheron’s Trouble fragrance in the U.S. since late November.
Parfums Boucheron, an arm of YSL Beauté that produces the Trouble fragrance, has defended itself against a lawsuit filed by ITF SpA since early October. At the heart of the matter is Boucheron’s use of a three-dimensional snake design on the bottle cap of the Trouble fragrance. According to the original complaint, ITF believes the Trouble cap “employs trade dress elements that are similar to, and, in some respects, virtually identical to, distinctive elements” of those of the Roberto Cavalli fragrance, which ITF produces and sells. Boucheron had provided its manufacturer with a Cavalli cap, alleged the complaint, and Boucheron “represented” to the manufacturer that it would obtain ITF’s consent to use the design.
On Nov. 18, U.S. District Court Judge Clarence Cooper of the Northern District of Georgia granted ITF a preliminary injunction barring Boucheron from using a snake design on any of its perfume products.
Since then, Boucheron filed three motions to lift the injunction, all of which were denied on Dec. 3 in an order from Judge Cooper. In rejecting the motions, the judge wrote that Boucheron “failed to show irreparable [nonmonetary] injury” and that the company had failed to show it could succeed on appeal.
Chantal Roos, chairman and chief executive officer of YSL Beauté, pledged to fight the ruling and expressed confidence, saying, “We are going to win.”
On Monday, Boucheron appealed the injunction to the Eleventh Circuit of the U.S. Court of Appeals. On the same day, the company also filed an answer to ITF’s original complaint and issued its own counterclaims.
In its response, Boucheron noted that ITF had been aware of the Trouble perfume cap since October 2003, but had not filed suit until a year later. Boucheron also said the Cavalli snake was “merely an ornament on its perfume bottle and does not designate the source of the Roberto Cavalli product, and therefore does not constitute a protectable trade dress.”
In its counterclaims, Boucheron accused ITF of faxing letters to retailers such as Nordstrom, Saks Fifth Avenue and Federated Department Stores “demanding” they comply with the injunction before it had become effective.
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ITF’s corporate offices in Italy could not be reached for comment Tuesday and calls to the company’s U.S. legal representatives were not returned.
Roos dismissed the Cavalli fragrance, saying it appeals to a different customer. She further asserted that the design of the two products are so dissimilar that there was no chance of mistaking one bottle for another. “The consumer cannot be confused,” she said, declaring that there is as much similarity between the fragrances as between “the Eiffel Tower and the Tower of Pisa.”
According to Roos, Boucheron has used a snake motif in its jewelry since the founding of the house in 1860 and its use in the design of the Trouble fragrance is in keeping with Boucheron’s tradition.
Roos, however, said that YSL will respect the court ruling and change the cap on the Trouble bottle while preparing its appeal. The fragrance is now distributed in about 600 doors and Roos believes it will take two weeks to change all the stock.