26 august 2014
FASHION EXPOSED
www.ragtrader.com.au
EXPERT ADVICE TO INSPIRE
Steal
that look
Savvy fashion designers are seeking to protect more
than just their label name, write lawyers from K&L Gates
Lisa Egan, Shehana Wijesena and Ashley Cameron.
B
randing 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
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.
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 Bel-
This protection strategy has
been employed by a number
of fashion and footwear
designers in Australia.
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
gium, 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. ■
For more information on trade mark issues, please contact Lisa Egan, Partner at K&L Gates (lisa.egan@klgates.
com) or Shehana Wijesena, Senior Associate at K&L
Gates (shehana.wijesena@klgates.com)