Brand Off-White’s Row with C1

A new lawsuit has been presented to Off-White. This time for its gallery/retail ventures by the name of EM PTY GALLERY. C1 Enterprises Limited (C1) based in Hong-Kong, contested registration of their trademark being themselves in operation with the brand name EMPTY GALLERY.

Off-White filed a trademark in November 2018 for registration of EM PTY GALLERY for sale of various kinds of bags such as handbags, tote bags, backpacks, and wallets. This application published as routinely practice demands for opposition by the US Patent and Trademark Office (USPTO), brought opposition from C1 Enterprises. Its own ‘wholly-owned subsidiary’ EMPTY GALLERY Limited has a pending application, filed in November 2017, for use on things like posters, music, and gallery services.

C1’s claim is that the enterprise began its operation in 2015 under the name THE EMPTY GALLERY but after only a year adopted EMPTY GALLERY ‘both in connection with art gallery and related services; as well as (for) ancillary goods, namely t-shirts and tote bags’. The mark further adds that its operations have continued to the present by ‘publicizing its art gallery and related services in a number of cities around the world, including New York, San Francisco, Shanghai, Paris, Berlin’.

Moreover, in March 2018, C1 participated in Armory Show, an art exhibition held in New York City with 60,000 attendees. During the show, it managed to sell tote bags with the mark EMPTY GALLERY. Similarly in Frieze New York art show the same year, it functioned under the same brand name. It also ‘intends to continue distribution of such goods at other exhibitions in the US and elsewhere’.

The issue that C1 has is the confusingly similar if not identical name of EM PTY GALLERY to its own brand. And C1’s us of EMPTY GALLERY tote bags ‘precedes any use of Off-White’s mark on the brand’s goods’. This would generate a false suggestion that either Off-White has the exclusive rights to the mark EM PTY GALLERY or that there is a relationship between the two. This would be harmful and damaging to C1 Enterprises.\

The oppositional proceedings have been put on a hold due to settlement negotiations between the parties involved. This squabble comes after a face-off between Off-White with the mark OffWhite last year. Lawsuits are not new to the brand with many similar ones in its pocket already.