Icebreaker wins US court brand battle

MATT NIPPERT
Last updated 05:00 07/12/2012

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Kiwi clothing label Icebreaker has won a significant victory in the United States following complaints by an Italian fashion label that its Iceberg brand had been infringed.

The US District Court in Oregon last week ruled on a decade-long intellectual property dispute, concluding Icebreaker was not infringing on the Iceberg trademarks owned by high-end Italian fashion label Gilmar.

Icebreaker chief Jeremy Moon, speaking from Portland, described the courtroom win as a "victory for common sense".

Gilmar first filed action against Icebreaker in 2001, shortly after the New Zealand outdoor clothing firm began expanding into the US. The rival then waged legal war around the world with suits subsequently filed in Spain, the European Union, Russia, Poland, Canada and Macao.

Gilmar argued its Iceberg brand, founded nearly 20 years before Moon started Icebreaker in 1994, had suffered precipitously in the US after its rival entered that market.

The company submitted that revenue from the US had dropped below US$100,000 (NZ$120,600) in 2012.

By comparison, Icebreaker expanded during its time in the US to form a local subsidiary and open stores in Los Angeles and New York. Moon said revenue from the US now accounted for about a quarter of the firm's $180 million annual turnover.

Judge Anna Brown dismissed Gilmar's claims, and granted Icebreaker a summary judgment that no trademark infringement had taken place.

Brown noted that Icebreaker advertised in athletics magazines such as Rocky Mountain Sports and designed and branded its clothing for active outdoorwear.

Iceberg, Brown noted, featured in the pages of Marie Claire and on models strolling down the catwalk at Milan Fashion Week.

The judge also said the price tags of the two companies' gear served as a clear differentiator, as the Italian firm was known to charge more than US$3000 for a garment while Icebreaker sold high-end T-shirts for US$75.

Moon said the intellectual property dispute was an annoyance, but conceded the legal struggle was an inevitable part of global business.

"This is exactly the type of sideshows that international brands exporting from New Zealand don't need to waste money on, but when you enter the ring you've got to roll with the punches," he said.

Icebreaker initially focused on selling merino wool garments to New Zealanders, but has since expanded its range and now has offices in many parts of the world. Moon said he was unconcerned about ongoing disputes with Gilmar in other countries.

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- BusinessDay.co.nz

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