European Fashion Law

What connects Leonardo Da Vinci, a Christmas miracle and the possible award of exemplary damages? The answer lies in a recent High Court judgment by Mr Justice Jacobs (Salt Ship Design AS v Prysmian Powerlink SRL). The case concerned designs for a cable lay vessel produced by Salt Ship Design for Prysmian. The judge found that Prysmian (a company with annual revenue of €10 billion) had made the designs available to another designer, Vard Design AS, which was associated with t

When can component parts of a product be protected as unregistered Community designs (UCDs)? The Court of Justice of the EU (CJEU) recently answered that question in a case concerning design rights in a Ferrari car (Case C-123/20). The case, which was before the German Federal Court of Justice (BGH) related to the Ferrari FXX K model, presented to the public in December 2014 (pictured). Ferrari alleged that Mansory Design (and Mansory’s CEO) infringed its UCDs by marketing ki

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

In short, "yes". Cybersquatters are a growing threat to brands. This trend has accelerated as e-commerce grows and consumers spend more time online. A new report suggests that cyber-squatters are cannier and more cunning than you might imagine. For brand owners, resolving domain name issues and filing defensive registrations eats up considerable time and effort. But as many have found to their cost, ignoring cybersquatting can lead to consumer confusion, loss of sales, fraud

The Court of Appeal has reviewed the law on liability and account of profits in a judgment concerning the BEVERLY HILLS POLO CLUB trade mark (Lifestyle Equities C.V. & Anor v Ahmed & Anor [2021] EWCA Civ 675). The case is one of many that are winding their way through the courts concerning this brand. In this litigation, the judge at first instance found that the use of SANTA MONICA POLO CLUB infringed the BEVERLY HILLS POLO CLUB mark and devices, and also found passing off.

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

When is an online marketplace “targeting” consumers in a particular jurisdiction? This was the question that Mr Justice Michael Green wrestled with in his judgment in Lifestyle Equities CV & Anor v Amazon UK Services Ld & Ors [2021] EWHC 118 (Ch). The case involved trade mark infringement and passing off claims brought against Amazon regarding the sale of goods bearing the Beverly Hills Polo Club trade marks on amazon.com. The claimants are familiar faces in the English High

The long-lasting litigation over the authorship of the screenplay for the 2016 film “Florence Foster Jenkins” has resulted in the court finding that Julia Kogan (the Claimant) was a co-author of the screenplay with the contribution valued at 20%. Mr Justice Meade’s decision came following a retrial after an earlier judgment was overturned by the Court of Appeal. This is an unusual decision which reflects a changing approach toward defining artistic contribution. Ms Kogan was

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

A new employee joins a business. They have lots of new ideas and suggestions. Sounds great but might you be at risk? To put it another way, where is the line between creativity and confidentiality? Trailfinders Ltd v Travel Counsellors Ltd There was a rare Court of Appeal judgment on confidential information on 19 January 2021. The Court upheld a decision from the English IP Enterprise Court (IPEC) in a dispute between travel agent Trailfinders Ltd ("Trailfinders") and its co

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

The long-lasting litigation over the authorship of the screenplay for the 2016 film “Florence Foster Jenkins” has resulted in the court finding that Julia Kogan (the Claimant) was a co-author of the screenplay with the contribution valued at 20%. Mr Justice Meade’s decision came following a retrial after an earlier judgment was overturned by the Court of Appeal. This is an unusual decision which reflects a changing approach toward defining artistic contribution. Ms Kogan was

Branding and trade mark use can change in subtle (and not so subtle) ways over time. For example, it may be used in a different typeface, a different colour or together with another device mark. This creates a problem for trade mark holders as, in the EU if you have not used a trade mark for some of the goods and services for which is it is registered, once the initial 5 year grace period after registration is over, anybody may apply to revoke the trade mark on the basis that

We first wrote about the impact of Brexit over a year ago back in a pre pandemic era. Although we still don't have a deal. The outcomes outlined in that post are likely to apply from 1 January 2021 (i.e. the end of the Brexit transition period). It is no longer possible to file an EU mark and get it registered before the end of the transition period (31 December 2020). Therefore all new EU trade mark filings will need to be filed separately in the UK if trade mark rights in t

We first wrote about the impact of Brexit over a year ago back in a pre pandemic era. Although we still don't have a deal. The outcomes outlined in that post are likely to apply from 1 January 2020 (i.e. the end of the Brexit transition period). It is no longer possible to file an EU mark and get it registered before the end of the transition period (31 December 2020). Therefore all new EU trade mark filings will need to be filed separately in the UK if trade mark rights in t

Some luxury brands still choose to not operate an online presence. Whether this is sustainable in the long term is unclear. Regardless of company strategy, you need to protect your brand online irrespective of whether you choose to operate online. The Luxury Law Summit included a fascinating panel discussion between Luna Bianchi (IP Counsel at Ermenegildo Zegna), Peter Ratcliffe (Manager of PIPCU, part of City of London police which investigates online crime in England and Wa

The Luxury Law Summit looked at many business and legal issues but one of the great themes across the day was collaboration. Many thousands of dollars are regularly awarded in cases based on profiling or exclusion. It's not just about doing the right, thing, there's a compelling business case for taking inclusion seriously explained Christopher Lacy (Parsons). Christopher explained that luxury often falls short of true inclusivity and neglects key demographics which are impor

The new Platform to Business Regulation (P2B regulation) applies across the EU from 12 July 2020. This Regulation is part of the EU's Digital Single Market Strategy. As the EU press release explains, the P2B Regulation is the first-ever set of rules creating a fair, transparent and predictable business environment for smaller businesses and traders on online platforms. The Regulation is intended to create a fairer balance between online platforms and online search engines. It

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

Georgina McManus (Global GC at Manolo Blahnik) and Ashleigh Hegarty (GC and Privacy Officer at Charlotte Tilbury) spoke to Kate Wilkinson (Head of Group Legal at Mulberry) about the issues they have faced in negotiating the new normal. All three incredible women have clearly had a busy year. They demonstrated how they have successfully adapted and helped their respective businesses reshape and regroup so that they remain on the path toward success. How did they survive the pa