BRANDING IS VITAL to building customer loyalty, maintaining goodwill and increasing profitability.
As competition in the fashion market heats up with global entrants and online stores, savvy fashion designers are not only creative with their designs but they are also seeking to protect their products by seeking trade mark protection for distinctive designs and features as well.
This protection strategy has been employed by a number of fashion and footwear designers in Australia. For example:
- one of the first fashion labels to protect the key elements of its garments was Levi Strauss & Co (Levi's). Levi's has registered trade marks for the pockets on its jeans, the curved stitches on the denim pockets of its jeans, the red tab that appears on these pockets and the image of horses appearing above these pockets
- Camper S.L. has registered trade marks for the shape of its footwear soles, stitching and arches used in it shoes
- Vans, Inc. has a registered trade mark for the shape of the curved strips used on its shoes
- Guccio Gucci S.p.A has a registered trade mark for the shape of the metal links used on its leather goods and accessories
- Pacific Brands Holdings Pty Ltd has a registered trade mark for the shape of the upper part of its Dunlop Volley shoes
- Hermes International has a registered trade mark for the shape of the buckle it uses on its garments such as belts, boots and gloves
- Christian Louboutin (Louboutin) has a registered trade mark for the shade of red used on the soles of its shoes.
"This protection strategy has been employed by a number of fashion and footwear designers in Australia."
The value and importance of protecting the key features of a product is highlighted by Louboutin's attempts to register and enforce trade marks for red soled shoes around the world. Louboutin has sought to protect its red soles as a trade mark in a number of jurisdictions with mixed success.
In 2012 a US court upheld Louboutin's U.S. registration for its colour trade mark when it was challenged by Yves Saint Laurent (YSL). While the trade mark registration was upheld, it was limited to situations where the red sole contrasts with the adjoining upper portion of the shoe. In January 2013, the United States Patent and Trademark Office rejected Louboutin's application to broaden protection of the trade mark to cover red soles which simply contrast with the colour of any visible portion of the shoe.
In August 2013, Louboutin sued Van Dalen Footwear BV (Van Dalen), a Netherlands based retail shoe company, claiming infringement of Louboutin's registered colour mark in Benelux (the region consisting of Belgium, Netherlands and Luxembourg). Van Dalen denied the infringement claim and counterclaimed arguing that the trade mark was invalid under European trade mark law.
In March this year, the Brussels District Court (Court) found that Louboutin's trade mark was invalid on the technical basis that it was not for a colour mark, but was for a threedimensional shape mark.
The decisions in Brussels and the United States highlight how important it is to clearly describe and define a trade mark when filing an application to protect it. With the equivalent trade mark often being filed in multiple countries/regions, it is even more important to ensure that the protection being sought accurately reflects and encompasses the trade mark itself, and takes into account any local nuances when seeking the trade mark registration.
Significant time and expenditure are invested into building a brand and maintaining its longevity. To maximise these efforts, consideration should be given to protection of the unique and distinctive aspects of your branding and designs which help make your products stand out in an increasingly crowded fashion marketplace. Think beyond the name of your label to the other aspects that define your brand identity and ensure you are appropriately armed to attack anyone who tries to trade off your unique design features.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
