In many jurisdictions, it is customary for claimed features of a design to be depicted in solid lines while disclaimed features of a design are shown in broken lines.
In Australia, unless parts of the product are separable, a design will be read as being the overall article represented and the parts with broken lines are not completely disregarded.
Read MoreRecently, several fashion houses were raided by European Union antitrust regulators based on concerns that these companies may have violated laws against cartels and restrictive business practices. Relatedly, in the United States, the current administration has been very aggressive in its enforcement of antitrust laws with a new “Won’t Back Down” approach towards litigation and increased investigative activity. The current landscape should serve as a reminder why it’s important to, first and foremost, ensure compliance with the antitrust laws around the world, but also to be prepared should the government come knocking.
Read More“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.
Read MoreThe 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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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
“Style is the only thing you can’t buy. It’s not in a shopping bag, a label, or a price tag. It’s something reflected from our soul to the outside world—an emotion.”
Alber Elbaz
In this edition of Fashion Law, we have a huge selection of articles from around the world.
As many countries ease into a new way of living with/post COVID-19, the way we do business has changed. Some businesses managed to expand their offerings going online, while others needed to increase their brand protection to counteract copycats, trade mark and design infringements.
Read MoreOn 24 February 2021, the UK High Court found that a number of Oh Polly dress designs had infringed the unregistered design rights of its competitor, House of CB. This recent decision confirms the risk of additional damages being awarded if infringers flagrantly copy third party designs, whilst also confirming the difficulties brand owners face in bringing passing off actions based solely on copycat designs.
Read MoreOn 19 November 2020, the Intellectual Property Enterprise Court (IPEC) in the UK handed down its judgment in the case of Freddy SPA v Hugz Clothing Ltd & Ors [2020] EWHC 3032, which ran for an unusually long time for the IPEC (three days).
The decision was a rare occurrence of a passing off claim, together with other IP causes of action, succeeding in the get-up of a functional item, being “bum enhancing jeans”. Ordinarily, such cases, particularly with respect to fashion items, fail as the get-up is seen as merely design elements or ornamental, or the circumstances of the use lead to a conclusion that other trade marks (e.g. brand names and logos) dominate consumer perception.
This case could embolden brand owners in relation to enforcement of the look and feel of their clothing as it creates the possibility of confusion ‘post-sale’ in addition to the point of sale.
Read MoreLouis Vuitton received a favorable decision from the EU General Court (General Court) in June 2020 which may assist brand owners seeking IP protection of their decorative patterns. The decision confirms the distinctive character an EU trade mark must possess in order to benefit from protection throughout the EU as well as highlighting how patterns may be protected through registration as a trade mark rather than under other forms of IP protection such as copyright or design protection. However, the decision also reaffirmed the EU’s strict approach to assessing the unitary character of EU trade marks, which potentially sets a high bar for applicants to clear.
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Banksy’s trade mark for one of his most famous artistic designs has been declared invalid by the European Union Intellectual Property Office (the EUIPO) on the grounds that it was filed in bad faith. The EUIPO finding him having engaged in “inconsistent with honest practices” in his attempt to protect his trade mark. A full copy of the decision can be found here.
The EUIPO said Banksy was attempting to use trade mark law to protect his artwork from being used commercially by third-parties because he couldn’t copyright it and maintain his anonymity. This decision highlights that the court will take a dim view of anyone – even famous artists – attempting to find a loophole in the law.
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