Pants Down at Black Forest Games!

After regrettably buying my husband a PS4 for Christmas, I thought it was about time I posted for all of the gamers out there, but of course maintaining a fashion link!

This week’s post focuses on Black Forest Games’ unsuccessful EU Trade Mark (EUTM) application for DIESELSTÖRMERS after opposition from the Diesel clothing brand.

The folks at Black Forest said “the decision caught us with our pants down” and issued the following photograph. At least the brand hasn’t lost its sense of humor!

Dieselstormers

That’s one way to respond to an EUTM application opposition!

All about the game

Dieselstörmers is a computer game, described as combining “roguelike action with 3D graphics and lots of old-school run ’n’ gun action”. In all honesty, this doesn’t mean a great deal to me, but hopefully it resonates with the hardcore gamers!

Black Forest Games, apart from its witty press releases, is an independent game studio that was established in 2012. The studio’s HQ is in Offenburg, Germany. You can find out more here.

Diesel is a well known mid-end clothing label, and sells its goods across the world. Not a brand you would typically associate with gaming!

Diesel

Diesel, a brand you would ordinarily associate with gaming?!

Matter of fact

Diesel S.P.A. owns two EUTMs for DIESEL, which gives the brand protection across all 28 Member states for goods like clothing, shoes and accessories, but surprisingly also covers things like electronic games, game systems, DVDs and computers among others.

Black Forest Games applied to register DIESELSTÖRMERS as an EUTM in April 2014 for goods including DVDs and CDs for computer or video games. The studio also made it clear that their DIESEL reference was to the fuel, and not an ode to fashion in any way.

Diesel opposed this application in July 2014 on the grounds that allowing the application would create a strong likelihood of confusion between its DIESEL mark and the DIESELSTÖRMERS mark.

Confusing

Diesel opposed the DIESELSTORMERS application on the grounds of likelihood of confusion with its well established brand

Black Forest Games expected to be able to settle amicably with Diesel as DIESELSTÖRMERS would not in any way relate to the main wares under the Diesel brand. However, Diesel turned out to be a tough cookie and decided to formally continue with the opposition.

Decisions decisions…

The EU IPO (the regulatory body governing EUTMs) agreed with Diesel. Black Forest Games’ application was rejected. The grounds the EU IPO referred to in its decision were:

  • The goods Black Forrest Games applied for were identical or similar to Diesel’s registered goods.
  • The marks were visually, aurally and conceptually similar based on the use of the word DIESEL in both.
  • The overall impression of the sign may have led the public to believe that the goods came from the same company, or from a linked company.
Similar

Far too similar for the EU IPO’s liking!

FTL verdict

This case is a timely reminder that trade mark oppositions are fought on the basis of the goods and services for which the earlier mark is registered, not just those goods and services for which it is used.

In this case Diesel was successful because its trade mark registrations covered computer games, even though its reputation is as a clothing brand. This is why it is so important to have professional trade mark clearance searches carried out before you decide to adopt a new brand.

Pacman

Who would’ve thought, Diesel games!

Since the decision, Black Forest Games has re-branded the game in question to ROGUESTORMERS – catchy!

Until next time it’s over and out. I’m off to brush up on my FIFA skills…

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“SNAP!” Says Lacoste

Does anyone remember the kiddie card game SNAP!? Perhaps not if you’re a digital native – maybe it was just an 80’s thing!

Well all of this nostalgia got me to thinking about a recent trade mark opposition from Lacoste against Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna (phew!), we’ll just refer to them as the Applicant to save space, for their application to register KAJMAN as a logo in the shape of a crocodile. Perhaps not a SNAP! But surely similar?

Lacoste2

SNAP! or just similar?

Background

Here’s what the earlier 2004 Lacoste Community Trade Mark looks like…

Laoste01

Lacoste’s croc trade mark.

…and here’s the KAJMAN mark, which was applied for on 1st February 2007 for purses, handbags, leather goods, footwear, and clothing (amongst other things):

Lacoste 02

The KAJMAN logo.

The Lacoste mark, funnily enough, was also registered for things like purses, handbags, leather goods, footwear and clothing (to name but a few goods).

I’m sure you’d agree that the goods for which Lacoste’s croc is registered and the goods which came under the KAJMAN application are extremely similar!

What happened next?

Not wanting to roll over on this one, Lacoste wrestled with the Applicant and opposed the KAJMAN application with full biting force in May 2008 on the basis that:

  • the co-existence of the two marks would be confusing to the general public, in that one mark may be confused with the other (Article 8(1)(b) of Regulation No 207/2009 for all you law geeks out there); and
Lacoste 5

Creating public confusion!

A decision

What did the powers that be have to say about this SNAP! happy fight? Surprisingly the Opposition Division rejected Lacoste’s opposition saying the marks were visually and phonetically different, that they had low conceptual similarity and Lacoste’s mark wasn’t overly distinctive in nature. It was therefore decided that no likelihood of confusion existed.

It was also noted that Lacoste did not provide enough evidence to support its point on the KAJMAN mark taking unfair advantage of the earlier registered mark, therefore damaging the reputation of the Lacoste brand.

Decisions

Decisions…decisions!

Now, I know what you’re thinking, yes, they are extremely similar, and yes of course Lacoste should appeal this decision…

Let’s appeal!

Lo and behold! Lacoste did exactly that in December 2010.

The Board of Appeal partly upheld Lacoste’s appeal saying a likelihood of confusion existed in relation to leather goods, purses, bags, footwear and clothing. Hurrah, at long last, the Board of Appeal had seen sense! Or perhaps not…

The Board of Appeal went on to dismiss Lacoste’s view, agreeing with the Opposition Division, that allowing KAJMAN to be registered would create an unfair advantage and potentially cause damage to Lacoste’s brand. So only half of the battle was won!

Lacoste 1

Not quite game, set and match!

Recent news

On the 30th September this year, after further Lacoste and KAJMAN snipes, the General Court said that there was a likelihood of confusion between Lacoste’s croc and KAJMAN in relation to those goods listed above. They based their decision on the following factors:

  • the signs were conceptually similar;
  • the Lacoste mark had acquired a highly distinctive character for leather goods (class 18), clothing and footwear (class 25) through use (finally the Court is in agreement!); and
  • there was a likelihood of confusion that the public would believe that the goods had come from the same organisation, or were at least linked, with regards to classes 18 and 25.

The Court did however note that there was low visual similarity between the marks aside from the fact both represented a crocodile. Similarly, the marks were not held to be phonetically similar.

What does this tell us?

Despite the lack of any real visual similarity between the marks, Lacoste had built up a significant reputation with regards to goods such as leather bags, and as such had acquired a distinctive character for these, but as always EVIDENCE OF USE IS KING!

Lacoste 4

Always always ALWAYS remember to keep records of use!

The marks were also conceptually similar, based primarily on the fact they were both representations of a crocodile.

The FTL verdict

So reputation through use can ultimately be key, just ensure you keep this evidence stored for a rainy day and don’t fall foul of Lacoste’s initial error by not producing enough evidence in support of any oppositions!

Lacoste 3

A Lacoste 1970s vintage original. because we love vintage!

Crocs away!

For more information on trade marks, see my last post “Hey! Hands off my IP (Trade Marks)” here.

HUGE thanks go to Laura Rose for her help researching this case and to Issy Bennett for her creative input!

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!

Louis Vuitton’s “Damier” in the Dog-House

Louis Vuitton has lost its Trade Mark protection for the famous chequered pattern, the Damier.

In addition to its “LV” monogram, the French fashion giant Louis Vuitton has been using the brown and beige check – known as the Damier Ebene – since 1888. It successfully registered a European-wide Community Trade Mark (“CTM”) in 1998, and for the cream and grey Damier Azur ten years later. However, Nanu Nana, an online gift item supplier, filed a legal claim to remove protection for these patterns in 2009.

The Damier Azur and Damier Ebene, side by side

The Damier Azur and Damier Ebene, side by side

Nanu Nana argued that Louis Vuitton could not legally protect the Damier pattern because it was:

  • descriptive;
  • devoid of distinctive character;
  • an established practice of trade; and
  • consisted exclusively of a shape giving substantial value to the goods themselves.

If a Trade Mark is found to be any of the above, it will be refused protection under the Community Trade Mark Regulations (Article 7). In eight of the 27 European Union countries, Louis Vuitton could not prove it had acquired distinctive use of the Damiers. In other words, it could not prove that the Damier was distinctive enough for people to automatically associate it with its origin, being the Louis Vuitton official brand. The Courts therefore cancelled the Trade Mark protection of both the Ebene and Azur Damiers.

After a few rounds of appeal by Louis Vuitton, it all boiled down to the decision of the General Court. The decision was handed down in April 2015 and said:

  • The marks lack inherent distinctive character. They are too basic, too common and have a long-standing link with leather goods for which they were registered.
  • The evidence provided by Louis Vuitton did not prove distinctive character throughout the European Union (in all 27 countries).
  • Photos of celebrities holding Louis Vuitton merchandise did not prove the brand had acquired a special or well-known distinctiveness through use.
Just because celebrities - like supermodel Miranda Kerr - use a particular product, doesn't mean that the design can be protected under law!

Just because celebrities – like supermodel Miranda Kerr – use a particular product, doesn’t mean that the design can be protected under law!

Without a protected Damier, Louis Vuitton will now have a harder time going after counterfeit products.

What could the brand have done differently?

Louis Vuitton’s crux has been lack evidence. Had the brand provided sufficient proof, showing acquired distinctiveness of the Damiers in every EU country, perhaps the Damiers would still be protected. Louis Vuitton now has the opportunity to appeal to the Court of Justice for the EU, which is a route the luxury designer brand will likely take to protect the patterns. Let’s watch this space!

What does this case teach us?

  • A mark must be distinctive throughout each and every one of the EU countries in order to be granted an EU-wide protection.
  • Even marks that have been used for over a century can be vulnerable to invalidity claims. The key to protection, as always, is evidence. If sales, PR and marketing data is maintained for all EU territories, distinctiveness and use are easier to prove.
  • Trade Mark erosion is when a trade marked name or pattern becomes generic (think “Hoover” or “Kleenex”). You can help prevent this with savvy marketing, to include identifying and adding a durable distinctive element to the core design. This will help to withstand opposition or cancellation proceedings from competitors.
  • Where a Trade Mark constitutes a valuable asset, businesses should always have a strategic approach to registering multiple marks in their core markets.