Fashion Law Watch

Legal issues, laws and regulations concerning the world of fashion and luxury goods.

1
New U.S. Sanctions on Russia and Belarus Impose Trade and Investment Restrictions on Luxury Goods Sector
2
PayPal Melbourne Fashion Festival: Fashion Law Seminar – Important Changes to the Designs Act
3
Snap! Marks and Spencer Tied Up In a Legal Dispute With Lacoste Over Its Iconic Trade Mark Crocodile Logo
4
French Framework for “Kidfluencers” – Yet Another Undertaking for Online Platforms
5
Fashion Law Update – November 2021 edition
6
Optimising your D2C e-commerce fashion operation – top 10 tips
7
Australian active wear business fined AU$5 million for making false and misleading COVID-19 apparel claims
8
Mike Tyson Sues Australian Streetwear Brand Culture Kings
9
“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging
10
Caudalie Fined In Belgium In The Context Of The Implementation Of Its Selective Distribution Network

New U.S. Sanctions on Russia and Belarus Impose Trade and Investment Restrictions on Luxury Goods Sector

As an update to K&L Gates’ previous alerts of 24 February and 25 February, U.S. President Joe Biden issued executive orders (EOs) last week imposing additional sanctions against Russia.

The order, EO 14068, issued on 11 March 2022, restricts:

  1. exports of luxury goods to Russia and Belarus,
  2. U.S. imports of Russian alcohol, seafood, and diamonds, and
  3. the supply of U.S. dollar-denominated banknotes to Russia and the Russian Government worldwide.

This alert describes these new developments in more detail.

Read More

PayPal Melbourne Fashion Festival: Fashion Law Seminar – Important Changes to the Designs Act

K&L Gates is proud to be hosting, as part of the PayPal Melbourne Fashion Festival, its annual fashion law seminar. As an Official Supporting Partner of the 2022 Festival, this year our session will cover recent changes to the Australian Designs Act and how these changes will assist fashion designers in protecting their valuable designs.

Read More

Snap! Marks and Spencer Tied Up In a Legal Dispute With Lacoste Over Its Iconic Trade Mark Crocodile Logo

After recently suing Aldi over allegations of intellectual property infringement based on its Colin the Caterpillar cake and Christmas glitter gin, Marks & Spencer (M&S) now faces a “liti-gator” itself as it has recently been sued by Lacoste for allegedly infringing its crocodile logo (shown below) and related rights on a number of clothing and household products.

The Allegations
We set out below a representation a selection of the alleging infringing products the subject of the complaint.

Lacoste, the luxury sportswear brand, wrote to M&S last year demanding that it cease advertising and selling various goods bearing crocodile logos or signs. M&S refused and now Lacoste is seeking an injunction on M&S and damages (among other things).

The Lacoste brand, which is named after the well-known tennis player René Lacoste who was nicknamed “the Crocodile,” has existed since 1933. As such, it has an extensive reputation worldwide and has ownership of a number of UK trade mark registrations, dating back to 1984. Lacoste is arguing that by using similar versions of its crocodile logo, which has built up a considerable reputation by the brand, M&S are not only creating a likelihood of confusion between the brands, but importantly, are taking advantage of the Lacoste mark.

What is interesting about Lacoste’s claims is that although the brand only owns trade mark registrations in the UK for the word CROCODILE and various representations of its logo, they are claiming that M&S’ use of different crocodile signs on products and the use of the word CROCODILE in relation to those goods constitutes trade mark infringement and passing off. These allegations are particularly interesting since M&S’ feature varying depictions of crocodiles. The claim is also in relation to a number of products sold by M&S that feature Roald Dahl’s crocodile character from The Enormous Crocodile, whose image would be licenced to M&S to use (shown below).

What’s to Come?
Whilst M&S is yet to file its defence in the proceedings, statements from the brand indicate that it is likely that they will argue that their products merely feature depictions of real life animals and are not an infringement of Lacoste’s rights.

However, whatever the outcome of this case (if it is not settled in the meantime), it will be interesting to monitor it as the decision could have important lessons for trade mark owners and third parties on the scope of protection granted over not just their trade mark, but similar marks.

Reference: Lacoste, Lacoste E-Commerce and Lacoste UK Limited v Marks and Spencer P.L.C. (IL-2021-000093)

By Simon Casinader and Kira Green

French Framework for “Kidfluencers” – Yet Another Undertaking for Online Platforms

Through its Act no.2020-1266 dated 19 October 2020 (the Act), the French legislator elected to regulate the commercial exploitation of the images of children aged 16 and under on online platforms (Kidfluencers).

Despite the potentially lucrative consequences of these emerging practices, Kidfluencers operated in a legal vacuum which could have resulted in parents exploiting their children, without the latter reaping any financial benefits or regaining any control of their images upon coming of age.

Read More

Fashion Law Update – November 2021 edition

Fashion is the armor to survive the reality of everyday life

Bill Cunningham

In this edition of Fashion Law, we look at the emerging and evolving trends within the retail, luxury goods and fashion sectors post COVID-19 around the world.

In this edition, we focus on a few themes which include:

  • Navigating a fashion brand’s transition to direct to consumer
  • Important updates for brands selling goods in Europe
  • Managing supply chain risk – the U.S. perspective
  • Consumer Law in Australia
  • What’s happening in fashion intellectual property?
Read More

Optimising your D2C e-commerce fashion operation – top 10 tips

The COVID-19 pandemic accelerated most brands’ plans to grow their own direct to consumer (D2C) e-commerce presence. For many brands, this has become essential to their continued survival and competitiveness.
However, how does a fashion brand run a successful e-commerce site whilst retaining the exclusive allure and personal feel of its designer stores? What are the key legal pitfalls it should be looking out for as it navigates this changing landscape? We’ve pulled together 10 lessons learnt over the past 18 months:

Read More

Australian active wear business fined AU$5 million for making false and misleading COVID-19 apparel claims

The Australian Federal Court has ordered women’s active wear manufacturer and retailer, Lorna Jane Pty Ltd (Lorna Jane), to pay AU$5 million in penalties for making false and misleading representations to consumers, and engaging in conduct liable to mislead the public, in connection with the promotion and supply of its “LJ Shield Activewear”.

Read More

Mike Tyson Sues Australian Streetwear Brand Culture Kings

Mike Tyson, the famous former boxer, has sued Australian streetwear brand Culture Kings and its founders. Mr Tyson alleges the respondents have engaged in misleading and deceptive conduct under the Australian Consumer Law for using his name, nicknames and likeness to sell t-shirts, without his permission. Mr Tyson alleges that Culture Kings’ t-shirts bear images of him, his name as well as his monikers “Iron Mike”, and “Kid Dynamite”.

Read More

“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging

In what will be welcomed by innovative design brands, on 14 July 2021, the General Court of the EU handed down a decision annulling the EUIPO and Board of Appeal’s decisions that a mark filed by Guerlain lacked distinctive character. This decision emphasises that a distinctiveness assessment of a three-dimensional mark must be undertaken by reference to the specifics of common practice in the market for the relevant products.

Read More

Caudalie Fined In Belgium In The Context Of The Implementation Of Its Selective Distribution Network

By Nicolas Hipp

On 6 May 2021, the Belgian Competition Authority (BCA) fined the high-end skincare products supplier Caudalie €859,310 for breaching competition law by imposing to its authorized distributors minimum resale prices and illegal limitations of online sales.

Caudalie submitted commitments to the BCA concerning the conditions that Caudalie can impose on distributors to safeguard the integrity of its distribution network and protect its brand image. The BCA’s decision made these commitments legally binding and considered them as mitigating circumstances justifying a decrease of the amount of the fine.

Read More

Copyright © 2022, K&L Gates LLP. All Rights Reserved.