#trademark

Jan 5, 2019
3 min

Trade mark classes are not Nice and easy

"Unless familiar with the law of registered trade marks, you might think that it is relatively straightforward. Regrettably, you would be wrong." So begins, Carr J's latest trade mark judgment in the English High Court - Pathway IP SARL v Easygroup Ltd [2018] EWHC 3608. This case was a High Court appeal from a successful application by EasyGroup to revoke two trade marks for non-use. The mark in question was"easyoffice" in various fonts and coloured backgrounds. The main poi

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 25, 2018
3 min

How can you add new defendants to a claim?

Can you add defendants to a claim when their involvement was at the design stage of a product several years before the product was launched (and outside the limitation period)? The Court of Appeal recently said "yes". This post tells you why. This decision is the latest in the long running trade mark and passing off dispute regarding the get up and packaging of Sandoz' AirFluSal an asthma inhaler which Glaxo Wellcome says infringes its trade mark and passes itself off as aut

Nov 25, 2018
5 min

Trade marks - the limits to the own name defence and groundless threats

Azumi Ltd v Zuma's Choice Pet Products Ltd [2017] EWHC 609 is a case about a dog's purpose. That dog is called Zuma. Zuma inspired Zoe Vanderbilt to set up her company Zuma's Choice Pet Products Limited and register the domain name dineinwithzuma.com. She planned to manufacture and sell premium pet foods via her website. As you may have guessed, the business was named after the dog. The website made frequent use of the word ZUMA and phrases DINE IN WITH ZUMA including the di

Nov 25, 2018
2 min

Using blockchain technology to manage IP rights

This article was first published on Lexis®PSL Intellectual Property on 25 September 2018. Click for a free trial of Lexis®PSL. What is blockchain? Blockchain is essentially any form of “decentralised” database. Unlike traditional databases where there is a single “true” version which is stored centrally, in a blockchain system, “true” copies of the database are shared with every computer which is part of the blockchain network. Every time there is a change to the database, fo

Nov 23, 2018
5 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

Sep 30, 2018
6 min

Fashion, sustainability and the circular economy

I recently had the pleasure of attending a panel discussion which looked at sustainability and the circular economy in the fashion industry. The panel considered the issues posed by smart textiles and fabrics and answered key questions like "what is circular fashion?" and "how can fashion businesses redesign for sustainability?" The panel included: Joanna Dai, the founder of DAI, a fashion business which combines technical fabrics with tailoring to create comfortable and ea

Sep 3, 2018
1 min

What trade mark should you register?

The most obvious and important trade marks to register are your brand name together with any logo you have adopted. It is wise to get specialist advice both in terms of the marks you select and the precise goods and services you decide to protect. In addition to registering your core brand. As your business grows, or other symbols become more closely associated with your business, it is worth conducting a regular review to identify other possible trade marks to register. For

Aug 25, 2018
1 min

Trade marks and priority

An important feature of the trade mark system around the world is the six month priority period. This is incredibly helpful for all businesses whether big or small. The world of trade marks operates on a first to file system. This means that the first person to file a trade mark is the first owner of the mark. But sometimes you're not sure which trade mark you want to go for (or which will be granted) and you don't want to spend a lot of money filing a trade mark in lots of d

Aug 24, 2018
2 min

What is a trade mark?

Trade marks give you the exclusive right to use a particular "sign" in your business for particular goods and services. They can potentially last forever provided that you keep using the trade mark and keep paying fees to the relevant intellectual property office. What is a sign? A sign is anything which distinguishes one business from other business. Commonly this is a word or a logo but in Europe, it can be anything provided it can be recorded in some form of permanent medi

Aug 23, 2018
2 min

How to create a new brand (legally)

This post is about the legal issues you need to consider when selecting a new brand name and logo. This is primarily a question of trade mark law. There are three main things to consider: Does it meet the criteria for a trade mark? Has anyone else registered it as a trade mark first? Will it pose any problems for me in the future? Trade marks must be distinctive and not generic descriptions of the products sold. As post-modern as a hat brand called HAT may be - you are very u

Aug 21, 2018
2 min

Setting a price in a European contract

It is common to want to fix a price for goods. It provides you and your customers with certainty and means that you avoid disgruntled business partners who find out that one of their competitors got a better deal. There are two major issues to watch out for: Competition law Price fixing is a classic example of anti-competitive behaviour. The bigger your market share, the greater the impact that this price fixing will have on the market - and the more likely this your activiti

Aug 21, 2018
2 min

European contracts - part two

Defining terms Definitions make contracts easier to read. They are often known as "defined terms" and are a mini dictionary at the start of a contract. This means that, for example, rather than repeating the specific trade mark which is licensed, the "Trade Mark" is defined at the start and then the contract can simply refer to the Trade Mark in the rest of the document. Defined terms can save a lot of reading time and improve simplicity but if you get the definition wrong,

Aug 18, 2018
3 min

How to start a fashion business

When you start a new fashion business, there are lots of competing interests for your time. You want to get finance to pay for stock and staff. But you also need to start marketing and build your social media profile. Before long, you will need to start thinking about hiring your first employee. So many things to do and so little time! Each question has legal consequences which it is good to understand in advance... One of the first things you will need to think about is wher

Aug 18, 2018
1 min

Intellectual property rights - it's never too early to think about them

Fashion is built on intellectual property rights. The brand is protected by trade marks. The clothing and accessory design by design rights and (maybe) copyright. The advertising and website will include lots of copyright works including photographs and computer code. If you wait too long to think about intellectual property you may find that there is an expensive reckoning waiting for you. This may mean that you need to rebrand or pay a photographer a lot of money down the l

Aug 17, 2018
2 min

Getting to grips with European fashion law

In order to understand European fashion law, it is first important to get to grips with the basics of European law. The European Union has three types of laws: Regulations which automatically apply across all EU countries (although it is possible for them to implement the regulation in national legislation). Directives which set criteria which EU countries must meet in their national legislation. Local laws where the EU countries have freedom to determine the law which applie

European Fashion Law