Supreme Italia vs Supreme: Piggybacking another brand done wrong

Samsung at a conference in China in 2018 announced the launch of its Galaxy A8s smartphone and collaboration with Supreme. Supreme also announced its plan to open a store in Beijing and participate at the Mercedes-Benz fashion show. The announcement was a confusing one since the skater brand never had such plans.

Turns out, the one announcing the collaboration was Supreme Italia, the imposter of New York-based Supreme or the original Supreme. Samsung later cancelled the collaboration after the original Supreme made an announcement on its Instagram story.

Fast forward to July 2021, Michele Di Pierro and his son, Marcello, the mastermind behind Supreme Italia, were sentenced to eight and three years in prison, respectively. They also have to pay $10.4 million in damages to the original Supreme.

The question is: how did Supreme Italia get away with impersonating the original brand and expanding its operations to several countries in the first place?

Quick answer: by taking advantage of the loophole in trademark law.

Founded in 2015, Supreme Italia filed trademarks registration in various countries where the original Supreme New York hadn’t secured its registration yet. The protection given by trademark law applies territorially. In some countries like Indonesia, trademark registration uses a first-to-file system, meaning the first one to apply for the trademark will most likely be granted protection.

Supreme Italia began production in 2015 and made its first official appearance in stores on 14 January 2016, one month after the original Supreme filed for trademark registration in Italy.

With the registered mark, Supreme Italia is able to sell almost identical products using an almost identical marketing strategy to the one used by the original brand. Unlike counterfeiting, the goal is not to replicate the original product, but rather to impersonate the entire brand itself.

Meanwhile, the original Supreme missed out on seeking comprehensive trademark protection in Europe at an early stage, hence why Supreme Italia claimed that they had registered the national trademark “Supreme” first, at least in Italy and Spain.

Over the past few years, the holding company behind the Supreme Italia brand, International Brand Firm (IBF), has been expanding its business by shipping its products across Italy and registering its trademark in countries like San Marino, Indonesia, Singapore and Spain. IBF also opened stores in Europe and China to sell its “legal fakes.”

According to Vice, legal fakes is a new term in the fashion industry that describes a situation when a business registers a brand in a given country before the original brand can do so. Similar instances also happen plenty of times in Indonesia - IKEA, Superman, Polo and Onitsuka Tiger, to name a few.

In 2017, Chapter 4, the holding company of the original Supreme, sued IBF and Trade Direct Srl, the company that distributed Supreme Italia’s products across Italy. Eventually, the court of Milan ruled that the Italian brand breached "unfair competition" laws and ordered IBF to temporarily stop trading.

Despite the verdict, Supreme Italia continues to operate. They are protected and favoured by local Italian law. The criminal court of Trani gave an order to release Supreme Italia’s websites that were blocked because of the litigation initiated by Chapter 4 in May 2018.

At the same time in Spain, Elechim Sports SL, an IBF-owned company, also registered a trademark for Supreme Spain. They soon opened stores in Madrid, Barcelona, Ibiza and Formentera. In October 2017, the Catalonia Court in Barcelona rejected a preliminary injunction requested by Chapter 4 against Supreme Spain, as reported by Vice.

After a long run, Supreme New York finally secured its trademark in China even after Supreme Italy claimed that it had registered its brand through World Intellectual Property (WIPO). Even though trademark protection adopts the first-to-file principle when a trademark dispute occurs, the original owner must be protected if the brand was registered in bad faith.

Finally in July 2021, both Marcello and Michele Di Pierro as the founders of Supreme Italia were found guilty by the London court. The two “hijacked every facet of the company’s identity and plagiarized it,” said Judge Martin Beddoe, as reported by Bloomberg.