A Los Angeles House duo of disc jockeys known as “Classixx” is suing clothing giant H&M Hennes & Mauritz AB (“H&M”) for trademark infringement and other related claims.  According to court filings, Classixx is suing H&M because H&M is selling apparel with the word “Classixx” printed on it.  As a result, Classixx has filed claims under both federal and state law against H&M. Classixx is suing H&M on behalf of their company, Hush Hush Sound, Inc.  Through Hush Hush Sound, Inc., Classixx owns a registered trademark for the word mark “Classixx” approved for use in association with music and entertainment, under U.S. international trademark classes 9 and 41, respectively.  Notably, however, Classixx does not own a registered trademark for use of the mark “Classixx” in conjunction with clothing or the sale of clothing.

In their response, H&M has countered that their use of the word Classixx on clothing does not amount to trademark use.  Moreover, H&M has publicly stated that prior to the lawsuit, H&M was not even aware of the musical group’s existence, and as such, the selling of the clothing was coincidental.  Thus, in response to the lawsuit, H&M has not only denied liability but claimed that Classixx should be responsible for all costs and attorneys’ fees associated with the lawsuit.

Classixx, on the other hand, notes that it is impossible for H&M to not be aware of their music because their songs are actually in regular rotation at H&M retail locations around the world.  Instead, they note that H&M has repeatedly refused to settle the matter amicably, ignoring previous cease-and-desists and other attempts to resolve the dispute.

Because Classixx sells apparel at their concerts and appearances, they allege that there is a significant likelihood of confusion with H&M’s apparel and that they are in direct competition with the clothing giant.  While they do not specifically own a registration for use in connection to clothing, Classixx claims that they have been selling apparel that bears the mark since 2007.  Because they operate in the same market channels and because they believe that that H&M’s infringement is willful and intentional, Classixx has asked for treble and increased damages as allowed under federal and state law.

Classixx has also filed claims of common law misappropriation of their name, likeness, and right of publicity against H&M.  Using California law, Classixx has sued H&M for misuse of the Classixx name, identity, and persona for its own commercial and business purposes.

While only time will tell whether the electronic dance music duo will be successful, important lessons can be learned from the dispute.  For example, entertainment groups should look to register their mark in use with clothing or other related goods that might be sold (e.g., cups, hats, video games, etc.) in connection to their brand.  To avoid such oversight, brand owners should consult experienced intellectual property counsel in to help ensure that they are not overlooking lucrative markets where their mark can be used and marketed on different goods or services.

For more information on this topic, please visit our Trademark Litigation service page, which is part of our IP & Business Litigation Practice.

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