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European Fashion Law

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    What happened to Colin the Caterpillar & what does it mean for your brand?
    • Jul 3, 2021
    • 2 min

    What happened to Colin the Caterpillar & what does it mean for your brand?

    We take legal research very seriously - in order to fully understand the implications of the most tasty dispute of the year, Colin vs Cuthbert, we had to undertake a detailed examination of Colin, including, of course, his taste. What we discovered will have implications for businesses across the land. The furore over Colin v Cuthbert has died down and the dispute appears to be heading toward settlement (either that or Cuthbert has had a very long time to file his Defence). C
    A jewel by any other name... passing off in the jewellery world
    • Jul 3, 2021
    • 2 min

    A jewel by any other name... passing off in the jewellery world

    Miss Recorder Amanda Michaels, sitting as a judge in the IPEC, has upheld a claim for passing off in a dispute between two jewellery designers. The claim was brought by Alyssa Smith Jewellery Limited, founded by Alyssa Smith, against Alisa Goodstone, who trades as Alyssa Jewellery Design. Ms Smith has operated a business since 2009, including via the websites www.alyssa-smith.com and (later) www.alyssasmith.co.uk as well as using the Twitter handle @AlyssaJewellery. She claim
    Give this passing off case a butchers
    • May 8, 2021
    • 4 min

    Give this passing off case a butchers

    Passing off is often added as an afterthought to a trade mark infringement action. In those circumstances, it is very often successful. The line between a deception (required for passing off) and likelihood of confusion (trade mark infringement) is subtle but there is a significant degree of overlap between the two. However, where there is no registered mark and it is first necessary to establish goodwill in a particular name, logo or get up, the relevant deception is much mo
    Goodbye Aunt Jemima, hello Pearl Milling Company
    • Mar 9, 2021
    • 1 min

    Goodbye Aunt Jemima, hello Pearl Milling Company

    Trade marks may theoretically last forever but brands are subject to change. The Aunt Jemima brand of pancake mix and syrup will be renamed Pearl Milling Company, in response to concerns about racial stereotypes. The new brand harks back to the name of the originator of the self-rising pancake max and was announced by Quaker Oats (part of PepsiCo) on 10 February 2021. The Aunt Jemima brand, like the Washington Redskins, is being retired following the global attention that was
    The benefits of IP Insurance
    • Feb 22, 2021
    • 2 min

    The benefits of IP Insurance

    With IP worth 75% of a business’ value why do less than 13% of businesses have IP insurance? It’s fascinating to read the insurance industry’s perspective on this phenomenon: Protecting Intellectual Property in the new world order. I find insurance (& third party funding) essential in many disputes. In most cases, this is "After the Event" or ATE insurance. Matthew Hogg and Edward Cartwright's article makes a great point that many people forget: you may assume that you have
    Passing off vs US law contract - guess which eagle wins?
    • Feb 2, 2021
    • 3 min

    Passing off vs US law contract - guess which eagle wins?

    Mr Justice Miles’s judgment in Lyle & Scott Limited v American Eagle Outfitters, Inc is an important decision for international fashion brands. The two companies use very similar eagle logos (pictured) for clothing that is sold through similar marketplaces in the UK and internationally. Lyle & Scott (L&S) is a long-standing British high-end fashion brand. It historically made golf clothes but by 2019 around half of its sales were polo shirts and T-shirts which are sold throu
    The benefits of IP Insurance
    • Feb 2, 2021
    • 2 min

    The benefits of IP Insurance

    With IP worth 75% of a business’ value why do less than 13% of businesses have IP insurance? It’s fascinating to read the insurance industry’s perspective on this phenomenon: Protecting Intellectual Property in the new world order. I find insurance (& third party funding) essential in many disputes. In most cases, this is "After the Event" or ATE insurance. Matthew Hogg and Edward Cartwright's article makes a great point that many people forget: you may assume that you have
    Brand investment pays off for Dr Martens
    • Feb 2, 2021
    • 2 min

    Brand investment pays off for Dr Martens

    Dr Martens, the footwear and clothing brand that defined my teens, is launching an initial public offering (IPO) which could value the company at £3.7 billion! The company is currently majority owned by Permira (the UK private equity firm). One reason behind this high valuation is that it is a fashion brand that truly recognises the value of its IP (even if it famously once failed to secure the copyright in its logo - see below!).* It sells 11 million pairs of boots and shoes
    Brands prosper despite business difficulties
    • Jan 29, 2021
    • 2 min

    Brands prosper despite business difficulties

    It’s a sad consequence of the COVID-19 pandemic and the lockdowns in many countries that retailers have lost business, and regrettably some have gone into administration. But one thing that’s been notable in many cases is that the brands have proved attractive to buyers, even when the rest of the business has not. For example, Marks & Spencer recently bought the Jaeger fashion brand for an undisclosed fee after the company went into administration. It did not acquire any of t
    Legal Innovation = Microsoft Office?
    • Jan 24, 2021
    • 3 min

    Legal Innovation = Microsoft Office?

    Legal innovation is often equated with one of the incredible new AI tools that are unveiled at tech events on a regular basis. However, the key software package that lawyers use on a daily basis throughout the world remains Microsoft Office. Like it or loathe it, this is where legal innovation is for the vast majority of lawyers. This is a fact to be embraced and celebrated! Once you have a quick rummage under the Microsoft Office hood, there is an array of useful tools which
    Future gazing in a time of global crisis
    • Jan 19, 2021
    • 3 min

    Future gazing in a time of global crisis

    There is no doubt that we are living through an unstable time. The pandemic has changed daily life for everyone. Politics are far from stable – this impacts many things, not least international trade. The origins of established brands are coming under the microscope. The economic good times (such as they were in the wake of the global financial crisis) are over. With recession set as the new normal, it is clear that things will be in flux for a long time to come. It is hard t
    Arbitration (clauses) last a long time...
    • Jan 6, 2021
    • 1 min

    Arbitration (clauses) last a long time...

    Are arbitration clauses a good idea? This post is not going to resolve this longstanding debate but it will highlight some of the intended (and unintended) consequences of an arbitration clause. The use of arbitration clauses in trade mark coexistence agreements was recently considered by the UK's IP Enterprise Court (IPEC) in Lifestyle Equities CV & Anor v Hornby Street (MCR) Ltd & Ors. Lifestyle Equities owns six EUTMs and one UKTM (post Brexit that is 7 UKTMs) for BEVERLEY
    European Commission takes fight to online counterfeiters
    • Jan 6, 2021
    • 2 min

    European Commission takes fight to online counterfeiters

    Is help coming to tackle the scourge of counterfeits sold on online marketplaces? Counterfeit goods affect all businesses as they grow from fashion to merchandise and related goods. On 15 December 2020, the European Commission published its “Europe fit for the digital age” proposals: the Digital Services Act (the DSA) and Digital Markets Act (DMA) . If adopted, they will replace the eCommerce Directive, which was introduced 20 years ago. DSA obligations The DSA is particularl
    The last Community Design case (in the UK)
    • Dec 24, 2020
    • 1 min

    The last Community Design case (in the UK)

    A case regarding “ballet flats” is likely the last time in which a UK court will sit as a Community Design Court, and the judgment was handed down expeditiously given the end of the Brexit transition period on 31 December 2020. The case involved registered Community designs (RCDs) and unregistered Community designs (UCDs), and issues of both validity and infringement. Deputy High Court Judge David Stone found: both the registered and unregistered design to be valid as they pr
    Brand extensions beware!
    • Dec 24, 2020
    • 2 min

    Brand extensions beware!

    You take a famous car company with a well known trade mark, say Ferrari, and decide that you can get an entirely new revenue stream licensing this mark for use on FMCG products such as clothing. It is a roaring success! Competitors look at this success and think - great idea! Let's copy it... but not all of them clear their rights first. The following is a cautionary tale in more ways than one. I was in charge of this case from its start until well into the disclosure phase.
    Protecting your brand Apple style
    • Sep 5, 2020
    • 3 min

    Protecting your brand Apple style

    Scott Gilen (Director of IP Enforcement Global at Apple) spoke at the Luxury Law Summit about how his team stops Apple fakes (both digital and physical) around the world. Understandably, their primary focus is on counterfeits that could be harmful to consumers such as fake iPhones, parts and accessories. Fake Apple stores remain a problem around the world (particularly in China). They have everything from the T-shirts to the tables! The issues that Scott has to deal with go b
    You can't cruise from cars to clothing - luxury trade marks and brand extensions post Bentley
    • Dec 6, 2019
    • 7 min

    You can't cruise from cars to clothing - luxury trade marks and brand extensions post Bentley

    Bentley Clothing v Bentley Motors [2019] EWHC 2925 is a classic David v Goliath dispute. You have a small family owned business versus a multinational corporation - Bentley Motors is part of Volkswagen. This case is a helpful reminder for large brand holders everywhere that establishing a reputation and a trade mark portfolio in relation to some goods and services does not give you an automatic right to enter into new markets where there are earlier rightsholders (no matter t
    What is a trade mark?
    • Aug 24, 2018
    • 2 min

    What is a trade mark?

    Trade marks give you the exclusive right to use a particular "sign" in your business for particular goods and services. They can potentially last forever provided that you keep using the trade mark and keep paying fees to the relevant intellectual property office. What is a sign? A sign is anything which distinguishes one business from other business. Commonly this is a word or a logo but in Europe, it can be anything provided it can be recorded in some form of permanent medi
    How to create a new brand (legally)
    • Aug 23, 2018
    • 2 min

    How to create a new brand (legally)

    This post is about the legal issues you need to consider when selecting a new brand name and logo. This is primarily a question of trade mark law. There are three main things to consider: Does it meet the criteria for a trade mark? Has anyone else registered it as a trade mark first? Will it pose any problems for me in the future? Trade marks must be distinctive and not generic descriptions of the products sold. As post-modern as a hat brand called HAT may be - you are very u
    Introducing intellectual property
    • Aug 12, 2018
    • 1 min

    Introducing intellectual property

    Without intellectual property rights it would be virtually impossible for the European fashion industry to continue. These rights enable a business to compete knowing that it has a legal monopoly which protects the time and money it has invested into the brand. Although the European fashion industry by no means avoids counterfeits and close copies of their products, intellectual property rights enable businesses to protect their products and enforce these rights in all releva
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    © 2021 by Rosie Burbidge​

    © 2018 in the cover image by Bernhard Deckert, photographer at bernieshoots.com of an ÏTTAG cosmos collection scarf ittag.uk

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    All content on this website is provided to help you learn more about the mystery and complexities of intellectual property law but it does not constitute legal advice. If you would like legal advice regarding any of the issues raised on this site, please contact Rosie: rosie.burbidge@gunnercooke.com 

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