Tag: trade mark

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Mind the Gap: Patagonia Sues Gap For Copying Fleece Design
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Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag
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Fashion Law Update – August 2022 Edition
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Snap! Marks and Spencer Tied Up In a Legal Dispute With Lacoste Over Its Iconic Trade Mark Crocodile Logo
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Mike Tyson Sues Australian Streetwear Brand Culture Kings
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“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging
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Fashion Law Update
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“I Wanna Really Really Really Wanna… Take You To Court.” VB Trademark Dispute Heads to the Federal Circuit Court In Australia

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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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

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”.

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“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.

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Fashion Law Update

“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.

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“I Wanna Really Really Really Wanna… Take You To Court.” VB Trademark Dispute Heads to the Federal Circuit Court In Australia

Fashion mogul and former Spice Girl, Victoria Beckham lost the first round of a trademark battle with Australian skincare brand, VB Skinlab, in relation to two of VB Skinlab’s pending Australian trademark applications for the “VB” brand filed in March 2018. A full copy of the decision can be found here.

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