Hey! Hands off my IP! (Trade Marks)

For the next few months, in-between the regular Fash Tech Lawyer news and gossip, I thought it might be useful for all of you budding designers out there hoping to turn your start-up fashion business into a fashion power house of the future, to list my top tips for protecting your intellectual property.

In this series of “Hey! Hands off my IP!” posts, I will give an insight into what IP rights are, how you can use them to protect your business and why you should!

These designers built their brands around their names, can you guess who they all are?

These designers built their brands around their names, can you guess who they all are?

IP – what’s all the fuss about?

Why do I think this is important? Well, being in the creative industry your most valuable assets can often be your intellectual property. What’s intellectual property I hear you cry?! A house of our own that us Londoners can only dream of? Nope! Intellectual property, or IP as it’s more fondly known, is a collection of intangible property rights that come about as a result of intellectual effort – so get those cogs turning! IP can be things like trade marks, copyright, design rights, confidential information, trade secrets and patents.

Trade marks

Fashion brands such as Chanel, Burberry and Louboutin all share something in common, their brands are king! So naturally they would want to protect them. One of the best ways to do this in the early stages, is to register a trade mark for your brand’s name and/or logo.

Be smart like these fashion power houses and be sure to protect your brand name and logo as registered trade marks!

Be smart like these fashion power houses and be sure to protect your brand name and logo as registered trade marks!

So what’s a trade mark? The terms “trade mark” and “brand” are often used interchangeably. Both can refer to a sign which distinguishes the goods, or services, of one trader from those of another. Trade marks are used to help customers identify goods or services as originating from you. A registered trade mark is infringed if it is used without its owner’s permission, so the owner of the mark has a monopoly over its use for the goods and/or services for which it is registered. This monopoly can be maintained forever!

Okay, so you’ve explained what a trade mark is. Why do I need one for my fashion business? 

Once you have decided on a name for your brand, protect it! It’s very tempting for competitors to start using a similar brand name to yours to try and ride off your success, particularly as your brand grows and becomes more successful. I wrote about the retailer VoQuE attempting to use VOGUE’s name on my last post here. Take a look for a prime example!

If I want to protect my brand’s logo, what should my first step be?

You’ll first need to see if there are any identical or similar marks to the name you are thinking of using. Although it’s perfectly possible to carry out a simple online search to see what’s out there, this might not catch everything. The best thing to do is to instruct a lawyer or trade mark attorney to carry out and report on detailed searches for you, known as Clearance Searches.

A clearance search needn't be long and winding! Enlist the help of a lawyer or trade marks attorney to set you on your way!

A clearance search needn’t be long and winding! Enlist the help of a lawyer or trade mark attorney to set you on your way!

What happens if I don’t carry out a search?

If you go ahead and use a name without first doing a clearance search, you can certainly run into problems. I’ve seen situations where businesses choose what they think is a unique name, only to be slapped with a nasty letter from someone who already owns that name! Or worse, they’ve been trading for a number of years, stacked up a tidy sum in assets, and the owner of the registered mark then sues them for infringement, and they lose everything.

What do I do next?

The next step would be applying! If you think here in the UK is your main market, but you hope to expand into other European countries and eventually the U.S.A. (for example), then think about applying for a Community Trade Mark (CTM) first and foremost. This will protect your brand in all 28 Member States and can be cheaper than registering your mark in multiple countries as and when you decide to trade there.

What if I start trading in different countries outside of the EU?

You will need to make separate applications for this and the hurdles for getting this through to registration in the U.S.A (for example) can be quite high! For instance, you will need to prove use or intent to use in the U.S.A. This can be quite difficult to do, but if you already have a national registration or a CTM, the hurdles can be a little easier to jump! What’s more, if you decide that within 6 months of your initial application, you are ready to take on a U.S.A. adventure, you will be granted what’s called a ‘priority period’ if claiming priority in your application. This means that when your U.S.A. application is approved and that mark registered, the U.S.A. mark will be deemed to have been registered from the date you initially applied for your CTM or national registration. Bonus!

Where will your trade marks take you?!

Where will your trade marks take you?!

What are classes?

Don’t worry, you don’t need to go back to school and take one – classes in the trade marks sense categorise goods and services for which the mark is registered. You will need to consider what goods and/or services, covered by these classes, you want to use your trade mark for. Typical classes for the fashion industry are class 25 for clothing footwear and headgear; and class 35 to advertise your goods for sale, but these are just a few. There are a number of classes available and a full list can be viewed here. Which classes you choose may largely depend on your brand, so always seek specialist advice from a lawyer or trade mark attorney before going ahead and selecting them.

How do I actually apply?

Most applications can be made online and there will be a fee to pay to the relevant IP office you are applying to. An examiner will then assess your application and if he or she is happy with it, will publish it for people to view and oppose (see warning above!). If you’ve had proper clearance searches carried out you shouldn’t have any oppositions and your trade mark will be entered on the relevant trade marks’ registry within a matter of months. Happy days!

Don't just stand around looking pretty like this Valentino model, get applying!

Don’t just stand around looking pretty like this Valentino model, get applying!

What’s a watch service?

All of this is no good if once registered, someone starts infringing your mark and you don’t pick up on it! For a small fee, most lawyers and trade mark attorneys will offer a watch service, where, by the power of highly intelligent software, any marks that appear online or that are applied for in territories of interest to you that are slightly similar to your mark will be reported to you. Well worth doing!

The moral of the story

Carry out full and proper clearance searches on any name you plan to use, protect your brand early on by applying to register a trade mark, and always keep a watch out!

Don't forget to keep a watch out!

Don’t forget to keep a watch out!

For more information on how to protect your IP, contact me!

Battle of the Cities – NYFW or LFW?

Only one more sleep to go until the 62nd London Fashion Week! This week’s FTL post features ones to watch for the London Spring/Summer 2016 collections and gives a summary of New York Fashion Week’s highlights. Which do you think will come out on top? LFW or NYFW?!

LFW3

Let the countdown begin!

Dig the new breed

London effortlessly challenges its rival global counterparts during fashion week, showing some of the most commanding creative flair in the world. Amongst its staple brands treading the boards, like Burberry and Christopher Kane, there is a new breed of designers, so fresh they only recently showed their graduate collections. Those that have attracted the talent-scouts graduated from Central Saint Martins just last year, such as South London-based Caitlin Price, who also won the Armani scholarship and Richard Malone (featured below).

LFW2

Great British heritage brand Burberry, showcasing a pastel inspired finale.

NYFW highlights

But who can argue with the feat of NYFW, closing today, which has generated 900 million dollars in revenue, drawing in over 200,000 people. Highlight of the week was the Oscar de la Renta timeless elegance show, which was the fashion power house’s second collection following the death of its founder. Pieces included Spanish-inspired suits, ball-gowns and cocktail dresses from its creative director, British-born Peter Copping. The designer used bold floral prints, crimson palettes, lavish lace and abundant ruffles to create a truly classic de la Renta collection. Lowlight, personally, was Kanye West for Adidas idly named “Yeezy Season 2”. The military-inspired assortment was made up of nude and neutral-coloured hoodies, bodysuits and loose-fitting trousers, which drew many parallels with his last collection. Not only has this all been done before, it was done last season by the man himself! Time to give up the game Kanye!

Oscar de la Renta

Classic de la Renta – pure poetry!

Topshop partners with Pintrest

This week in London we will see Topshop team up with Pintrest to launch “Pintrest Palettes”. The savvy high street store is renown for its social media campaigns. The partnership will enable UK and US Pintrest users to create a custom colour palette based on Spring/Summer 2016 key colours via Topshop.com.

LFW2

Which Pintrest colour palette will you be this season?

LFW ones to watch

There’s so much jaw-dropping talent showcased during LFW, but for me it’s the new kids on the block that can be the most inspiring. FTL’s “ones to watch” are:

Richard Malone, graduating from Central Saint Martins last year with a Bachelor of Arts degree in fashion, he has already attracted attention from the fashion industry’s big-wigs. In 2013 his graduate collection was supported by the Grand Prix LVMH scholarship and he will show his collection as part of the Topshop-sponsored Fashion East collective this week. The label’s aesthetic has to date stemmed from structured silhouettes with contrasting hound’s-tooth fabrics and bold stripes. Pieces in Malone’s graduate collection invoked a 70s vibe with both cropped and bell-bottom flares on show. I’m excited to see what delights the upcoming collection will bring this week.

LFW1

Good luck to our new-comers on their debuts, the Frow be with you!

This is the Uniform’s Jenna Young is a fine arts textiles graduate of London’s Goldsmiths University. She worked in the luxury textiles industry for three years before launching her own label in 2013. Young also worked in fashion styling, and it was via this experience that her designs came to the attention of British Vogue fashion director Lucinda Chambers. The designer will also début as part of Fashion East this week. Young’s signature style is luxurious fabrics, no doubt stemming from her background. I predict plentiful silk organza and natural fabrics.

Marta Jakubowski completed the Masters of Arts program at the Royal College of Art and has already worked with the likes of Alexander Wang, Bruno Pieters, Hussein Chalayan, and Jonathan Saunders before embarking on her own label last year. In December 2014, the designer was chosen to show her Autumn 2015 collection for the British Fashion Council’s NewGen scheme. Wide velvet and cotton trousers in bold colours have played a key theme in Jakubowski’s collections to date. I’m hoping for a clever use of fabric and texture in her Spring/Summer 2016 collection.

JS collage

A personal FTL favourite – the Matlock established John Smedley, here’s to the northerners!

The veteran luxury British brand, John Smedley, and a long-time love of mine, is finally launching an out-and-out women’s wear collection. This I have to say, I am very excited about! Pip Jenkins, head designer of the John Smedley women’s range, said the collection will include “a lot of lighter, sheer fabrics designed for layering, and cuts that feature wrap and split detailing designed to drape and flatter the female form.” A new direction for the staple knitwear brand, which I’m sure to be raiding the Brook Street store for post show!

FTL verdict

For me, London always comes out on top, perhaps I’m biased, perhaps I just think the standard is higher. If NYFW dropped the dead-wood and focused more on emerging innovative talent, rather than Kanye and his entourage I might have a different opinion.

LFW1

LFW SS16 kicks off on Friday 18th September leaving its old premises, Somerset House, behind to make a new home at the art-deco Brewer Street Car Park in Soho.

One thing’s for sure, London’s collective of burgeoning talent, both veterans and newcomers, are guaranteed to bring something new and exciting to the trends of Spring/Summer 2016. Let the count-down begin!

NAT-A-PORTER NO MORE!

The shock-resignation of Natalie Massenet from Net-A-Porter, just before the merger with Yoox Group was due to take place, has sent shock-waves through the fashion industry!

Starting out

Massenet’s start-up story is a familiar one. Founding the company in her spare room in 2000, the ultimate Fash Tech entrepreneur saw a gap in the market for an online platform supplying luxury fashion. This led to the birth of Net-A-Porter and forever changed the way we shop online!

Massenet is an American-born former journalist who began working for Women’s Wear Daily and Tatler, which is where her idea of an e-commerce website in a magazine format began. However, the glitz and glamour of the early stage setup was not so high-brow, as Massenet initially stacked the signature Net-A-Porter black packaging in her bath! How times have changed!

bathtub+vintage+image+graphicsfairy002c

Perhaps Natalie’s bathtub will no longer look so rosy!

In Natalie’s words

So what happened? In her own words this week, Massenet gave us an insight into her decision, saying:

“The completion of Net-a-Porter Group’s merger with Yoox Group is the right time for me to move on to explore new ideas and opportunities…The business I started in 2000 could not be in better shape today. Having joined forces with Yoox Group, the company will be bigger, stronger and superbly well positioned under Federico Marchetti’s leadership to lead the industry and create the future of fashion. As a continuing loyal customer I will be excited to see the next chapter for this amazing business.”

natalie-massenet-vogue-9sept13-pr

So long Natalie!

The FTL verdict

Is this really such a surprise? Well, given the fashionista’s position following the merger was to be restricted to an editorial and communications role, perhaps it’s not completely unexpected!

If all had gone to plan, Ms Massenet would have become the executive chairman while Mr Marchetti stepped into the chief executive role. To add fuel to the fire, over lunch with the Financial Times in May this year Mr Marchetti was quick to clarify where the power would lie. There was to be only one boss, he said, “And that’s me”.

Marchetti

In the wise-words of the Godfather of Soul: “Paid the cost to be the Boss!”

Yet to be seen is how the merger between these two rivals will work in practice, in a marketplace that has become increasingly crowded and competitive. For example, is it business-savvy to retain The Outnet, Net-A-Porter’s cut-price site that directly rivalled Yoox? Most definitely not, but which of the two will bite the dust?! There are many questions surrounding what the future holds for Yoox-A-Porter (by the way, I highly doubt this will be the new branding!), but what’s certain is that the new group will have to act decisively to retain shareholder confidence.

Both companies have faced mounting pressure from new businesses entering the luxury e-commerce space, as well as from traditional brands beginning to sell their products online to consumers directly. With big brands reeling from the ongoing economic slowdown in China, and the feeling that the days of rapid expansion are behind them, the mood of the luxury industry, as a whole, is far from sanguine.

NAP bag

Will the branding change post merger?

Also, despite Ms Massenet’s diplomatic statement, it looks like this was a rather contentious departure: Bloomberg reports that Massenet leaves with over £100 million ($153 million) after the sale of shares in her company. The Financial Times reported that the sum came as a result of a dispute over the value of the Net-A-Porter Group that led to her quitting.

The FTL concludes a trouble at the mill scenario, what other explanation could there be for such a sudden departure?!

Do you know what really caused this turn of events? Do you have an opinion on the matter? If so, we’d love to hear from you via the comments box below!

IN VOQUE?

VOGUE versus VOQUE, “strike a pose VOGUE, VOQUE, VOGUE…”

I know what you’re thinking…it’s only her second week and Fash Tech Lawyer has committed the blogger’s cardinal sin, a typo! Or not…

As I sit here bleary eyed after a looooooong night reviewing a laborious software agreement and sipping a double espresso, I find myself having to double take. Am I going mad? Am I seeing this right? Does that say “VOQUE or VOGUE“?!

Vogue collage

Vintage Vogue from June 1950 (left) and Christmas 1985 (right).

Condé Nast’s opposition

VoQue Limited is a wholesale fashion company with a UK registered office. The company is two years old and reported a 2014 turnover of £10,000.

In September 2013 it applied to register the logo below as a UK trade mark for leather goods; clothing, footwear and headgear. As we know from the Louis Vuitton case (posted here last week), once a trade mark is registered, it will enjoy a presumption of validity until challenged. However, sadly for VoQue it didn’t get that far…

VoQue

No longer “Queen V”!

Hot on VoQue’s heels, the fashion bible VOGUE was not too happy about this and quickly opposed the VOQUE application in December 2013.

Condé Nast, which owns VOGUE, said that the VOQUE mark:

• is confusingly similar to VOGUE, and if registered or even used, would take unfair advantage of VOGUE’s success (if you’re really interested, the relevant law can be found under Section 5(2) (b) and 5(3) of the Trade Marks Act 1994); and
• would cause misrepresentation and damage to the holier than thou publication under Section 5(4)(a) of the Act!

VoQue bites back

In response to this, VoQue said:

• VOQUE and VOGUE carry out totally different activities;
• the typeface used by the VOQUE mark is completely different to the VOGUE mark; and
• VOQUE means “evoke” or “awaken” in French and is different to VOGUE’s “fashionable” or “popular” meaning.

Drum roll please….and it was decided…

No surprises, Condé Nast’s opposition was upheld. Nice try VoQue!!

In July 2015 a decision in favour of the fashionistas’ handbook said:

• the two marks are confusingly alike and have an overall degree of visual, aural and conceptual similarity; and
• VOGUE is distinctive given its reputation and the fact it is not entirely descriptive when used on the iconic publication.

Founded in 1892, Vogue has been at the forefront of fashion publications for well over 100 years! This example is from the 1920s Art Deco era.

Founded in 1892, Vogue has been at the forefront of fashion publications for well over 100 years! This example is from the 1920s Art Deco era.

The application for the VOQUE mark was therefore dismissed and VoQue Limited was ordered to pay the costs incurred by Condé Nast.

The decision also noted:

• the fact that VoQue’s mark has a large crown element around the letter “Q” does not matter, as the average shopper would not see it as sufficiently different;
• the word “Vogue” is a well-known English word meaning “in fashion” and when used in relation to leather goods and clothing, for which the VOQUE mark was registered, alludes to such goods being “of the moment”, which draws parallels between the two marks; and
• the typeface used by VoQue is not unusual, in fact, Condé Nast would be well within their rights to use their VOGUE mark in the same style.

Interestingly, had VoQue managed to slip this one past VOGUE (unlikely!) thereby obtaining registration status, only for VOGUE to then challenge the registered mark at a later date, VOQUE would have been revoked (ironic huh, or just a really bad joke!?)!

Final thought

After reading the case first and foremost, I’m pretty pleased I don’t need my eyes testing, but the lesson to learn from all of this is that it’s risky business basing your branding on a similar, earlier and well established registered mark. There’s only one VOGUE!

I’m setting up a fashion business: where do I start?

Establishing a fashion business can be electrifying and a roller-coaster journey. To avoid pitfalls, read on…

Think of an amazing brand name, and protect it!
A catchy brand name can make all the difference, as it’s the basis on which your business will be established and will flourish. It’s therefore crucial to first ensure your name is unique, and avoids confusion with other names already out there. Once you’re clear on this, get the brand name and any logo associated with it registered as trade marks. This will allow you to protect your brand from copycats, and safeguard the value of the goodwill you generate.

What can the quarters of a burgeoning fashion startup look like? This is the Everlane Studio in San Francisco

What can the quarters of a burgeoning fashion startup look like? This is the Everlane Studio in San Francisco

What legal structure is most suitable for you?
Three most common business structures are below:

Sole Trader: you run your business as an individual, retain all profits post tax and can employ staff. You are accountable for the business and personally responsible for any losses your business makes. For tax purposes, you are considered self-employed.
Partnership: responsibility is shared between you and your business partner (or partners). The profits of the business can be shared between all partners in the business. Each partner pays tax on their share of the profits.
Limited Liability Companies: a company is a separate legal entity owned by shareholders. The company is responsible in its own right for everything it does and its finances are completely separate from your personal finances. Any profit made by the company, after payment of corporation tax, can be distributed between the shareholders.

Have you thought about your location?
Some of the most famous start-ups have begun in a back bedroom, but as you expand you might need to relocate to an office or shop space. Space is often bought via leasehold, but don’t be too eager to sign without ensuring you fully understand and agree to the terms. A more cost effective strategy might be to trade over the web. If doing so, it’s a great idea to get expert advice on trading over the internet as there’s a whole host of complex laws and regulations surrounding this.

Make sure to do your homework before starting your fashion business, which includes having the correct contracts in place with partners or staff.

Make sure to do your homework before starting your fashion business, which includes having the correct contracts in place with partners &/or staff

Do you have the right agreements in place?
Before entering into a business relationship, you should ensure that you have all of the appropriate agreements in place. For instance, if negotiating with a third party – such as a supplier or developer – you should have signed a non-disclosure agreement to protect any confidential information you may exchange. Having the right contracts set out from the beginning is essential, particularly to avoid complexities in the event of a dispute!

For more information on setting up your business don’t hesitate to contact me.

Technology in Fashion: Fad or Future?

The appointment of Burberry’s Chief Executive Angela Ahrendts at Apple suggests the company does not simply plan to dip its toe in the fashion pool, but intends to fully submerge itself. With the current hype over the marriage of the fashion and technology industries, Sarah Simpson, Associate at Taylor Vinters and fashion law expert, asks whether the collaboration between technology and fashion will really take off, or whether it’s just the latest fad. Sarah also looks at the serious data protection implications that designers and developers of fashion-led technology need to be aware of.

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