Archive: 2022

1
Mind the Gap: Patagonia Sues Gap For Copying Fleece Design
2
Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag
3
Fashion Law Update – August 2022 Edition
4
Just Seen to be Green? CMA Launches Investigation Into Three Fashion Companies
5
Influencers and Digital Advertising
6
New U.S. Sanctions on Russia and Belarus Impose Trade and Investment Restrictions on Luxury Goods Sector
7
PayPal Melbourne Fashion Festival: Fashion Law Seminar – Important Changes to the Designs Act
8
Snap! Marks and Spencer Tied Up In a Legal Dispute With Lacoste Over Its Iconic Trade Mark Crocodile Logo

Mind the Gap: Patagonia Sues Gap For Copying Fleece Design

High-end outdoor clothing brand Patagonia Inc is taking on fast fashion retailer Gap for copying its “iconic” fleece jacket design. Patagonia Inc has filed court proceedings in the Federal Court.

In a complaint filed on 22 November 2022, Patagonia alleges that Gap willfully and deliberately copied the fleece design through the creation and sale of its “Mockneck Pullover” jackets, mimicking the flap pocket and rectangular logo of Patagonia’s classic “Snap-T” fleece jackets (both shown below).

Patagonia “Snap-T” Pullover Fleece
Gap Product
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Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag

Another unfavourable decision on non-traditional trade marks has landed, now in relation to Dior’s iconic Saddle bag. The EUIPO’s Second Board of Appeal decided that Dior’s Saddle bag is not distinctive with respect to handbags. The decision is seen as surprising yet not unpredictable, given the recent history of unsuccessful trade mark applications for 3D signs (for example, see our previous article on the Moon Boot case here).

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Fashion Law Update – August 2022 Edition

“Fashion is not something that exists in dresses only. Fashion is in the sky, in the street, fashion has to do with ideas, the why we live, what is happening.”

Coco Chanel

In this edition of Fashion Law, we cover a range of topics which are having an impact on businesses and consumers in the fashion and luxury products sector worldwide.

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Just Seen to be Green? CMA Launches Investigation Into Three Fashion Companies

The trend of regulators cracking down on misleading green claims or the so-called “greenwashing” continues this week. In the latest development, on Friday 29 July 2022, the British competition watchdog, the Competition and Markets Authority (CMA), launched an investigation into the eco-friendly claims of retailers Asos, Boohoo, and Asda.

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Influencers and Digital Advertising

Over the past decade, influence marketing has changed the way advertising is handled by companies. Influencers have entered the marketing world by leveraging massive followings on social media platforms, and brands have recognised the value of the new category of advertising professionals.

Even though the use of influencers has become a mainstay of advertising, French legislation has yet to meet this evolution, resulting in an often opaque legal framework.

The broad spread-out provisions applicable to influencers also generate difficulties in understanding influencers legal status, in particular when they are underage. This notably raises the question whether influencers are employees of the brands they advertise for—and therefore subject to labor law—or if they should be considered independent contractors, with their relationship with brands subject to commercial legislation.

Such opaque legal framework raises questions about the applicable regime, as well as the legal status of influencers. Even though there is no specific regime for influencers, recent legislation was adopted in order to protect children influencers (see our previous alert here).

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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.

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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.

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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

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