On 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 More
In the recent judgment State of Escape Accessories Pty Limited v Schwartz  FCA 1606, Justice Davies of the Federal Court of Australia found a fashionable neoprene tote bag was not a “work of artistic craftsmanship” and therefore not an “artistic work” for the purposes of the Copyright Act 1968 (Cth) (the Act). Since the Court found that copyright did not subsist in the State of Escape bag (the Escape Bag), there was no finding of copyright infringement.Read More
On 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  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 More
Use of Ferrari’s trade mark in a fashion show or on social media requires consent. This is the lesson we assume Philipp Plein has recently learnt following a couple of legal defeats before the Italian Courts that ruled in favour of Ferrari.
In a ruling issued by the Court of Genova last June, the Court ruled in favour of Ferrari for the illegitimate use of Ferrari’s trade marks on Plein’s Instagram account. The designer on that occasion posted several pictures as well as Instagram stories showing some of his clothing line with Ferrari’s trade marks in the background. Ferrari successfully argued that in those shots Philipp Plein was unlawfully appropriating the positive image and reputation of the well-known car company by using its trade marks for promotional purposes.
In another recent case, the Court of Milan ordered Plein to remove from its website, social media, and other online platforms all the videos and images showing Ferrari cars and trade marks. The Court also ordered the payment, in favour of Ferrari, of €300,000 in damages plus legal fees as well as the publication of the decision in two national newspapers. Furthermore, in the event in which that Philipp Plein would not promptly remove the contested images and videos representing Ferrari cars and trade marks, it will have to pay a penalty of €10,000 for each day of delay in the removal of the infringing images and videos. To view the decision, click here.Read More
The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.
In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:
“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”
Part of the trademark registration process is submitting a specimen of the mark as used in commerce (“specimen of use”). Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld the decision of a split Trademark Trial and Appeal Board (TTAB) panel that refused to register the trademark “CASALANA” for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories,” stating that Siny Corp. (the applicant) did not submit an acceptable specimen of use. See In Re: Siny Corp. (Fed. Cir. Case. No. 18-1077).Read More
On 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision (see here), the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States.Read More
The recent decision in Inditex v EUIPO demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into.
In this case, Inditex (one of the world’s largest fashion retailers and owner of the fashion brand Zara) appealed the EUIPO’s decision to grant registration of the ‘Zara Tanzania Adventures’ mark in classes 39 (travel and tourism) and 43 (travel agency services). The appeal was based on the registration of its own ‘Zara’ mark in class 39. But how can a fashion brand object to a mark in the travel sector?Read More
While still an emerging technology, more companies are implementing blockchain technology to manage supply chains, track goods, prevent counterfeiting, increase security, and ensure traceability. In a recent survey of global leaders, by auditing and financial services company KPMG, 48% of respondents stated they believe it is highly likely that blockchain will change the way their companies do business over the next three years, and 41% stated their company intends to implement blockchain technology during the next three years.Read More
“People will stare. Make it worth their while.” – Harry Winston
Welcome to the latest edition of Fashion Law. In this edition we review the Australian Government’s measures to tackle modern slavery, a New Zealand trade mark opposition highlighting the importance of trade mark watching services, superannuation payments for full time, part time or casual workers, protecting brands in international markets, and the changes to parallel importation laws.