#fashionlaw

May 28, 2021
3 min

Court of Appeal rules on liability and account of profits in trade mark case

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.

May 1, 2021
2 min

Chanel and Huawei logos are dissimilar

The EU General Court has upheld a Board of Appeal ruling in a dispute between Chanel and Huawei, finding that Huawei’s EUTM application for a figurative H/U shape was not similar to Chanel’s Double-C trade mark (Case T-44/20, 21 April 2021). Huawei applied to register the EUTM for goods in class 9 in 2017 (far left). Chanel opposed the Huawei application based on two French trade marks (middle and right): (1) a figurative mark for “Cameras, sunglasses, glasses; earphones and

Mar 7, 2021
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, 2021
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 22, 2021
3 min

Targeting and trade marks - Beverly Hills Polo Club takes on the Amazon

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

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

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

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

Jan 26, 2021
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 15, 2021
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, 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

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

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 26, 2020
2 min

Protecting digital designs - the clock is ticking

Designs are one of the key IP rights for the gaming and fashion industries 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 Comm

Oct 12, 2020
1 min

Video & Podcast Alert: A career in IP and more

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 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

European Fashion Law