You’re looking at a Supreme T-shirt, yet it’s not from the Supreme that started life in Lafayette Street, Manhattan. It’s 2019 and fake versions of existing brands can apparently exist legally. How?
The case of Italian “legal fake” brand Supreme Italia was one of last year’s strangest stories, but the heap of legal jargon and trademark issues made the situation complex to understand. Even a company as powerful as electronics giant Samsung appeared confused; its Chinese arm announced a collaboration with Supreme (later revealed to be Supreme Italia), only to cancel the partnership after much back and forth, bewildering streetwear and tech enthusiasts alike.
Following the official cancellation, Supreme Italia’s holding company, International Business Firm (IBF), revealed that it will open over 70 physical stores between 2018 and 2019. IBF went on to explain, that they “will open in every country on the globe” where they have the industrial property rights, the next one slated to open in Belgrade, Serbia.
A huge power play, IBF also plans to open two seven-story flagship stores in Shanghai and Beijing where they allege themselves to be the sole holder of the trademark in China.
To find out how all this is possible, we asked law firm Lubberger Lehment to explain the “legal fake” Supreme Italia phenomenon in layman’s terms.
How is Supreme Italia technically legal?
It cannot be answered conclusively yet if Supreme Italia is technically legal or not, as there are proceedings pending before the European Intellection Property Office (EUIPO). What can be said, however, is that Supreme New York apparently missed out on seeking comprehensive trademark protection in Europe at an early stage.
Owning a national trademark — for example, a US trademark — does not automatically lead to worldwide trademark protection against copycats. This is why, for example, Highsnobiety parent company, Titel Media owns separate “Highsnobiety” trademarks in the US and EU.
According to the so-called “territoriality principle,” a logo only enjoys protection as a trademark where it is registered as a trademark — for a national German registration with the [German Patent and Trademark Office] DPMA, EU-wide with EUIPO, etc.
Supreme Italia now claims to have registered the national trademark “Supreme” first, at least in Italy and Spain. They have opposed Supreme New York’s application for an EU trademark based on these two national, allegedly earlier trademarks. Supreme New York, in turn, has opposed the Italian and Spanish trademarks of Supreme Italia on multiple grounds.
If Supreme Italia’s opposition to Supreme New York’s EU trademark application is successful, Supreme New York can’t prohibit them from using the “Supreme” logo, ergo Supreme Italia would be technically legal. Eventually, it boils down to the question of “Who got there first with a registered trademark?”
Can Supreme do anything to stop them?
The answer to this question is closely linked to the above. Supreme New York is already trying to stop them by applying for an EU “Supreme” trademark. If this application is successful, Supreme New York could prohibit anyone else — including Supreme Italia — from using an identical or merely similar logo within the EU for the category of goods the trademark is being used for.
This application is facing two significant obstacles. Firstly, there might have been earlier trademarks in Europe registered by Supreme Italia. Secondly, the EUIPO might find the “Supreme” logo is lacking any distinctive characteristics and thus cannot be protected as a trademark at all.
In similar cases, the EUIPO has already argued that, from a consumer’s perspective, the “Supreme” logo is considered merely as information about the quality of the product, but not as an indication of commercial origin. The latter, however, is necessary to have a logo protected as a trademark.
Is any of this connected to the fact Supreme “stole” its brand logo from Barbara Kruger?
No. This would be a separate issue, which presumably would have to be assessed under copyright law. Since Supreme has only adapted the font and the colors of Kruger’s style but hasn’t “copied” an actual piece of artwork, it might be hard to argue for copyright infringement here.
If you want a deeper dive into Supreme, watch the video below.
Next up; a beginner’s guide to buying Supreme clothing.