#counterfeit

Feb 22, 2021
1 min

Are you Notorious? The USTR updates its list of Notorious Markets

In its annual review of markets that engage in or facilitate counterfeiting and piracy, the US Trade Representative has named 39 online markets (including many of Amazon’s foreign domains, Shopee and Taobao) and 34 physical markets. The European Commission published a similar list in its Counterfeit and Piracy Watch List in December 2020. Both lists provide useful information on the challenges IP rights owners face in enforcing their rights in the various online marketplaces,

Feb 19, 2021
1 min

USTR Notorious Markets List

Oct 4, 2020
3 min

Don't lose your rights after Brexit

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

Oct 4, 2020
3 min

Don't lose your rights after Brexit

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

Sep 29, 2020
2 min

Trade marks in China

There has long been a recognition that Chinese trade mark law has been moving toward a more reliable and consistent process. This is thanks to a series of new intellectual property laws which have been implemented over the last decade or so together with the establishment of many specialist intellectual property courts around the country. There are a few key things to remember when working in China: Saving money on legal fees can be a significant false economy. This is always

Sep 20, 2020
5 min

Online counterfeits - the Alibaba, Police and Brand perspective

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

Sep 8, 2020
3 min

Can the Internet save Luxury?

The Luxury Law Summit took time to consider the big picture commercial and business model questions which will affect legal decision making for many years to come. You might think that the question of how will the internet affect fashion has long been answered but luxury is an area that is less affected by the winds of technological change and indeed part of its USP is the so-called "aura of luxury" which can quickly dissipate in an online environment. Broadly speaking, there

Sep 6, 2020
2 min

The human cost of exclusion

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

Sep 6, 2020
2 min

What does the Platform to Business Regulation mean for fashion?

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

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

Sep 5, 2020
4 min

Negotiating the new normal

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

Sep 5, 2020
4 min

The future of luxury in a post pandemic world - the Harrods take

Inevitably the pandemic took centre stage at the Luxury Law Summit (3 September 2020) but thankfully it was not the only issue in the spotlight. Harrods' pandemic experience The keynote speaker was Michael Ward, the Managing Director of Harrods. He talked about the impact on the business and the difficult decisions that they have had to take in order to get the business ready for the changes over the next 1-2 years. One of the first issues was the impact of the redundancies.

Aug 22, 2020
2 min

Smart fabrics in wearables and their protection with Intellectual Property rights

Here is another guest post from Marta Carmona (Master of Advocacy at the University of Málaga) Smart fabrics are textiles which include technology embedded into their fibres thanks to the development of extremely thin smart materials. The inclusion of those materials gives wearables an increased functionality and therefore an incentive for buyers to pay more for the wearable and, in theory, wear it more and for a longer period, which ultimately would increase the sustainabili

Aug 22, 2020
2 min

How do you terminate a contract?

It is common for business priorities to change and relationships to improve or sour over time. At some point you will want to end a distribution agreement, franchise or agency agreement. Ending a contract is not always that straightforward... The first step is to look at what the contract itself says - this is not always as simple as it may appear and legal help may be required to identify the correct steps to follow. However, this is not the end of the process. There are man

Jun 12, 2020
4 min

Will wearable fashion revive retail?

Fashion and technology have long been on a collision course and, like so much, the pandemic has accelerated things in a dramatic and life altering way. It’s no secret that the fashion sector has been particularly badly hit by Covid. The saving grace for many brands has been the investment that it has made in the digital and technology business. It’s fair to say that businesses with a strong ecommerce offering have fared much better than the competition - particularly if they

Feb 5, 2020
2 min

Cofemel & Cumulation

Should each object (whether it is a book or a pair of jeans) be only protectable by a single intellectual property right or is cumulative protection legitimate? In this guest post, Alicia Ogborn examines this complicated question. Cumulative protection There has long been tension and debates surrounding the cumulative protection of designs with copyrights in terms of conditions which need to be met. Previous decisions by CJEU (e.g. Flos, Infopaq) ruled that Member States were

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

Sep 4, 2019
2 min

Louboutin - red soles and trade mark protection

The red sole on the base of Louboutin shoes has been the focus of both media and legal attention for many years. There has been extensive litigation in the USA about the red sole (see here). In Europe, the issues have focused on Louboutin's various European trade marks for the red sole in relation to "Footwear (other than orthopaedic footwear)" in Benelux and "High-heeled shoes (except orthopaedic footwear)" at EUIPO. The mark's description refers to Pantone 18.1663TP and not

Mar 10, 2019
1 min

European Fashion Law: The book is out!

We have had the launch parties and the book is officially OUT NOW! I've had such lovely feedback already. I hope you both enjoy it and find it incredibly useful for you in your business or legal practice. What's European Fashion Law about? Fashion is big business - it has complicated supply chains, may involve large property portfolios of retail and warehouses and affects millions of employees and contractors. Fashion brands and the associated intellectual property are extrem

Mar 1, 2019
2 min

Brexit & IP - what you need to know

Brexit may be nearly upon us. If this happens after 29 March there are various short term consequences to registered rights in the UK and EU. You don't necessarily need to refile a UK mark but forewarned is forearmed. Registered EU trade marks All existing EU trade marks will still cover the UK post Brexit but they will change identity. From Brexit day, EU trade marks in the UK will automatically convert into “Comparable Trade Marks (EU)”. No fee is payable and the owners of