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Mar 9
1 min

EUIPO sees rise in trade mark filings in 2020 despite pandemic

We are all aware that the pandemic hasn't necessarily led to a decrease of work across the board. One group of people who have been particularly busy are the staff at EUIPO. EUIPO received a record number of EUTM filings in 2020 - over 175,000* in a single year. This is an annual increase of more than 10%! which is remarkable given the impact of the pandemic on business during the year. Most of the growth came in the second half of the year, and EUIPO says it was led “by a si

Mar 9
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

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

Feb 22
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

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

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

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.

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

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

May 25, 2019
3 min

Skykick - why does it matter & what could it mean for trade marks? Counsel's perspective

IPSoc recently had the latest in its successful run of education events. The talk from Simon Malynicz QC, SkyKick's leading counsel, gave an insider's perspective in the trade mark dispute which could have an important impact on trade mark law for many years to come. For background on the Skykick dispute see here, the referred questions are here. A handy summary from Simon's slides is below. In Simon's view, the dispute goes to the heart of what the trade mark register is for

May 25, 2019
3 min

What is blockchain? Find out in this book...

Blockchain and the Law: The rule of code by Primavera De Filippi and Aaron Wright - review by Emily Long. Blockchain is a term often used, rarely explained and usually over complicated. If you’re unsure what exactly it is and why it’s significant Primavera de Filippi and Aaron Wright present a clear, comprehensive overview of what blockchain does and how it fits in with general legal instruments. They describe blockchain as ‘decentralised databases, maintained by a distribute

Mar 10, 2019
1 min

The book is out!

We have had the launch parties and the book is officially OUT NOW! You can use the code FSHN35 on my publisher's website to increase your discount to a total of 35% off the list price (£65 for a paperback and £90 for the hardback). 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. To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.bu

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

Jan 5, 2019
2 min

Smells like IP infringement?

The fashion industry is no stranger to IP disputes. In the last year, The IPKat has written about disputes involving Zara, Nike and Nike and some innovative anti-counterfeiting from Deisel (sic). Whether it is competitor "inspiration" or a designer who inadvertently sells their name with their company the battles are myriad and go to the core of questions such as what is creativity and where the line is between standard design features and protectable IP rights. The latest de

Nov 27, 2018
2 min

Unregistered designs - the unknown but super useful IP right

Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were published last week. My key takeaway is that the designs community does not appreciate the value of designs - particularly unregistered designs. This post aims to change that. Unregistered vs unregistered designs In the report, unregistered designs were rated at the bottom of the list of useful right

Nov 23, 2018
6 min

Sustainability, cocktails and the V&A

On Thursday evening, V&A members and their friends convened in the Members Room for an evening of inspiring discussion about fashion and sustainability (and fair trade cocktails). The main event was a talk followed by a Q&A from Orsola de Castro the co-founder of Fashion Revolution. Her key takeaway message was that it is down to us to take responsibility for the origin of our clothes. The origins story Orsola explained that Fashion Revolution really began with the Rana Plaza

Nov 6, 2018
2 min

How do you get copyright protection?

Throughout Europe, and indeed in most jurisdictions worldwide, copyright arises automatically upon the creation of the work. Copyright is therefore a very flexible right which has come to the rescue of many a fashion brand. For the major international copyright treaties such as the Berne Convention and TRIPS, it is an essential requirement that all signatories (in practice most countries worldwide) offer automatic protection for copyright works. While you do not need to regis

Oct 25, 2018
3 min

Designs - what are they and how do they protect the fashion industry?

The fashion industry has obtained enormous benefits from the protection offered by design law in the European Union. But to say that designs law is complicated would be a big understatement. This post introduces registered and unregistered designs and outlines the ways in which they can be used to protect the fashion industry. EU level design protection The European Union offers two types of design protection which apply across the whole of the EU, namely registered and unreg

Oct 23, 2018
3 min

Sustainable fashion - the Unmade story

Unmade is transforming the fashion industry and creating a revolution in how people buy their clothes. I recently attended an event where Hal Watts, one of the founders of Unmade, was interviewed by Brooke Roberts-Islam, a fashion tech and sustainability expert. Unmade is a global fashion software company which drives innovation through customisation. It offers fashion businesses an end-to-end digital solution for on-demand production at scale. Nice! Unmade works with some of

European Fashion Law

Stay up to date with the latest fashion law news & insights

Sign up for our mailing list before 1 April 2021 to get 50% off the book