Penfield is pursuing legal action against Japanese conglomerate Itochu Corporation for breach of contract regarding the US outdoor fashion label’s licences in Japan and South Korea.
Its claims relate to multiple design infringements, attempts to register the brand in territories in which Itochu does not have trademark or licensing rights and a perceived failure on the part of Itochu to prevent copying of Penfield’s designs by its licensees.
Penfield said it instructed lawyers at the end of last year. The brand has issued Itochu with papers that list an undisclosed number of intellectual property infringements.
It has also registered a formal complaint with the UK Intellectual Property Office regarding Itochu’s attempts to register the brand in other territories.
Itochu’s licensees for Penfield are Fine Plus Corporation in Japan and Aioli Company in South Korea.
Penfield’s contract is with Itochu, which then issues licences to different licensees. Penfield has alleged Itochu allowed its licensees to copy prints including its ‘Big Bear’ T-shirt and a camouflage print that was designed in-house.
It also claims the company tried to register Penfield in Vietnam and Indonesia without its knowledge.
After the sale of spring 14 product, Penfield has now stopped selling in China, Hong Kong, Japan and South Korea.
Chief executive James Barshall told Drapers: “We have started legal proceedings and unless they come to the table and give assurances that they will get back in line and compensate us for reasonable damages for the infringements, that working relationship is on hold.”
Itochu, which is one of Japan’s largest general trading firms, did not respond to Drapers’ request for comment. It also owns Chester Barrie and a large stake in Paul Smith.
Since publication of the above article, Itochu has confirmed that in fact no formal legal proceedings have been commenced by Penfield against Itochu. Itochu has also confirmed that it strongly contests Penfield’s claims.