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Mar 9
2 min

Walk like a PANTHÉ - Visual perception is key for fashion trade marks says EU

Is there a likelihood of confusion between the figurative signs pictured below (PANTHÉ and PANTHER) for “Clothing; Headgear” in Class 25? The EU General Court said "No". In doing so, they upheld a decision of the EUIPO Board of Appeal. The case is El Corte Inglés v EUIPO/MKR Design Srl (Case T-117/20). The judgment was published on 10 February 2021. So what happened? Spanish retailer El Corte Inglés opposed an EUTM application for the sign listed above (PANTHÉ) which was file

Mar 7
5 min

How do you win a fashion dispute? Find out why I love unregistered designs

How can you stop someone from systematically copying your brand? What if it went further than just your designs and covered everything from your marketing strategy to your models? This major new UK fashion case shows the consequences which range from the predictable (copying valid designs has consequences) to the surprising (it isn't necessarily possible to stop all copycat behaviour). This case is a bit of a marathon read but it's a fantastic primer for anyone wanting to und

Mar 7
1 min

Image protection in the UK and beyond

Image rights are both hugely important and a fallacy. The UK, has no specific law of "image rights" but it is possible to protect a person's image through a patchwork of laws including passing off, trade marks, data protection and privacy. Rosie has contributed a chapter on the UK approach to image rights for Imagen y Derecho de la Moda, a South American Year Book which is available for purchase here! Rosie's article (which is translated into Spanish) provides an overview of

Feb 23
2 min

Influencers are advertising... and the ASA is watching

Influencers are advertisers. This has been clear for some time. But now influencers are trending for the wrong reasons as the Advertising Standards Authority starts to clamp down on the use of filters for beauty products and failure to identify paid content. Use of filters Advertisers should not use filters on photos promoting beauty products on Instagram if the filters are likely to mislead or exaggerate regarding the effect the product was capable of achieving. This was the

Jan 29
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

Jan 27
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

Jan 27
2 min

Watch out! New employees could lead to a breach of confidence claim against you

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? Travel Counsellors Ltd v Trailfinders 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

Jan 27
3 min

Where eagles dare: competing logos on a global stage

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

Jan 27
2 min

A recent development for Position marks

The Court of Justice for the European Union (CJEU) clarified the assessment of a position mark's distinctiveness in Aktiebolaget Östgötatrafiken v Patent-och registreringsverket. You can read the full case here. This case confirms that position marks depend on consumer perception. In 2016, the Swedish bus company applied to register various signs including the one set out below as Swedish trade marks in class 39 for vehicles and transport: The applications included the descri

Jan 26
3 min

Covid and the digital future for the fashion industry

There is no doubt that Covid has been extremely challenging for retail in general and fashion in particular. These challenges have included everything from supply chains being put under increased strain through to demand varying substantially with product type and method of delivery. It's fair to say that Brexit hasn't helped matters. Trade events One interesting angle on this concerns trade events. The fabric fairs and international fashion weeks were once staples of the fas

Jan 24
2 min

The Janger Ltd v Tesco Plc

What does the fashion industry hang on? The Janger is designed for travel and holiday use (so probably isn't getting a lot of use at the moment!) Most fashion cases concern design right, copyright and trade marks. It is relatively unusual for patents and fashion to collide. The Janger Ltd v Tesco Plc [2020] EWHC 3450 (IPEC) (16 December 2020) was one of the last cases from 2020 and one of the few to look at patents and fashion. Janger had a patent for “A hangable garment hook

Jan 6
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

Jan 6
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

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

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.

Nov 28, 2020
2 min

Protecting digital designs - the clock is ticking

Designs are one of the key IP rights for the fashion industry but they are complex and consequently poorly understood. There are two key categories of design: registered and unregistered designs. They are best known for protecting three dimensional products but a little known fact is that they can also protect logos and graphical user interfaces. Given the shift to remote and virtual living, protecting digital assets is more important than ever. The European Commission recent

Oct 25, 2020
4 min

Will wearable tech 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-19. 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 th

Oct 13, 2020
2 min

Search Orders - an important tool to stop counterfeits & more

There are many reasons why someone might want to get a search order. It is a very draconian remedy that gives a successful applicant the ability to enter a property and seize goods for use in court proceedings. As it is such an extreme remedy, the requirements in order to get a court order are very high and the level of supervision required by the court and a supervising solicitor is significant. As the Covid lockdown took effect in March and physical stores closed, two risks

Oct 12, 2020
1 min

Video & Podcast Alert 🚨

Eagle eyed readers may have noticed a few changes to EuropeanFashionLaw.com. A lot has happened recently (news flash!) and it is time to update the website to reflect the various things that Rosie has been working on over the last year. You can now find links to Podcasts on Differences Between UK and US Intellectual Property Law (for The Fashion Law Network) and a Career in Intellectual Property Law (for Legally Speaking). There are also Videos on everything from Crafty Short

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

European Fashion Law

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