Amazon – hot to trot with fashion offering…

DVDs, CDs, Zak Posen, Books…Hang on a minute; did you just say Zak Posen…on Amazon?

It’s well known that Amazon has been trying to enter the fashion world for some time, and 2015/2016 has really seen it step up its efforts to break the notoriously difficult market.

Amazon

Hey little guy! We love the Ama-bot! Perhaps all Amazon fashion deliveries should come in a package like this one…

The beginning…

Amazon has been on the fashion trail since as early as 2006 when it first acquired online retail website SHOPBOP. In 2011 it launched MyHabit, another online retail website created “in response to customers’ desires to shop intelligently from a selection of great brands”.

In 2012 it really took a leap of faith, opening a huge Brooklyn photography studio, hiring Barneys’ Fashion Director as an advisor and launching My Fashion on the Amazon website, a section dedicated to all things fashion. The following year saw the launch of East Dane, an equivalent to SHOPBOP targeting the male market.

Barneys NYC

Amazon pulled out all of the stops, even hiring Barneys’ NYC fashion director to advise on all things fashion!

Louis Vuitton on Amazon?

So has Amazon attracted any high fashion brands?

Well, not as yet, unfortunately! Designers such as Louis Vuitton have been reluctant to create an association with Amazon, preferring to keep their designs exclusive and prices high. In fact, the then Louis Vuitton Chief Executive, Yves Carcelle, made this perfectly clear during 2012, telling Vogue UK that “Amazon will never sell Louis Vuitton, because we are the only ones that sell it.

LV

“Amazon will never sell Louis Vuitton”…

In 2015, the Chief Marketing Officer of Amazon’s fashion division explained to Business of Fashion that they were not targeting designer brands, confirming that “there has been a lot of speculation on us entering the luxury market and that is just not something we’re focused on right now.

So which brave brands have been enticed by Amazon? Well, high profile designers such as Zac Posen and Kate Spade are both available on the US site, whilst Lacoste, Calvin Klein, Tommy Hilfiger and Hugo Boss can also all be purchased via amazon.com. Amazon also has a partnership with department store giants Debenhams. So whilst many designer brands may have thus far resisted Amazon’s call, Zac Posen can hardly be considered downmarket (especially not when a handbag could set you back $595!).

Lacoste

…but it will sell Lacoste!

The mission continues

Not one to be defeated, Amazon has continued to try and develop its fashion credentials, sponsoring the first ever New York Men’s Fashion Week held in July 2015, and the OCFDA/ Vogue Fashion Fund Fashion Show held during October 2015.

Vogue

All about British Vogue

It has also partnered with up and coming British model Suki Waterhouse, marketing her favourite Autumn/Winter pieces that are all purchasable on Amazon, whilst East Dane has launched a new Michael Kors collection dedicated to ‘streamlined accessories’.

October 2015 saw the purchase of the new season of the fashion based reality show ‘The Fashion Fund’. The show features none other than fashion royalty Anna Wintour and Diane von Furstenberg, and a dedicated section on the Amazon website will be set up to sell a collection of the 2015 finalists’ designs.

The new Prime Now service may also be a step towards the coveted fashion elite, with customers able to buy clothing and accessories with one and two hour delivery slots.

The future…

It’s clear that Amazon has increased its efforts to become a fashion destination, and there appears to be no sign yet that it will be slowing down any time soon. So whilst you may have to currently shop elsewhere for your Chanel handbag or Louboutin heels, there may be a time very soon when you can buy these alongside your books, DVDs and CDs, perhaps even by drone delivery!

Chanel

Wonder what Coco would think about her legacy brand being potentially bought alongside groceries?!

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Hey! Hands off my IP! (Design Rights)

Continuing with the Hey! Hands off My IP series, October’s blog post looks at the benefits and drawbacks of design rights for fashion brands, and asks whether it really is worth pursuing a registered design right in the fashion industry.

Vintage Courreges shades

An iconic sunglasses design from the 60’s space age designer, Andre Courreges

What are design rights?

Design rights protect the appearance of a product, or part of the product, enabling owners of the design to enforce their rights against anyone using the design without consent.

Under English law, you can have a registered or unregistered design right and rely on either for protection. However, registered design rights offer more protection. A registered design right lasts for up to 25 years (subject to renewal every 5 years), whereas an unregistered design right is only valid for either:

  • 10 years from first marketing the product made to the design; or
  • 15 years from creation of a design document

whichever is shorter.

If relying on an unregistered design right, the right doesn’t actually come into existence until the design has been recorded in a design document, or an article has been made to the design.

Records

Record everything!

Designers should therefore always sign and date their design documents. Records should be kept of the design document and the design process, and the date of first marketing of articles made to the design should also be recorded. These will be needed if your design is infringed in order to prove the date from which the right exists and that it is still valid.

Design right criteria

For both registered and unregistered design rights, a design must be:

  • made up of a shape or outline of the whole or part of an object;
  • original and have individual character, which means that it cannot be common; and
  • recorded in a design document or be the subject of an object made to the design.
Fashion design 1

Even a rough sketch of your design will be a sufficient record

To be protected by unregistered design right, a design must not be:

  • a method or principle of construction;
  • comprise features of shape or configuration of an object which:
    • enable the object to fit with another object so that either object can perform its intended function; or
    • are dependent upon the appearance of another object, of which the article is intended by the designer to form an integral part; or
  • be a design for surface decoration.

For all of you legal buffs out there, the relevant statute is the Copyright Designs and Patents Act 1988 and the above criteria and restrictions can be found at section 213 here.

What can’t be registered

There’re always some restrictions on what can and can’t be registered, here are some of the main ones:

  • hidden parts (parts which can’t be seen once the product is made);
  • features which are needed to allow the object to perform a technical function; or
  • designs which go against public policy or morality.
Restriction

Don’t forget to consider the restrictions before applying to register a design

Why register?

Apart from being easier to prove than an unregistered design, and the fact you have 10, possibly 15 years more worth of protection, other benefits of registering as opposed to simply relying on unregistered rights are:

  • Speed: Protection starts from the application date. Registration is likely to take place within two months of filing the design with EU Intellectual Property Office.
  • Geographical scope: With a registered Community Design, the right provides EU-wide protection with the possibility of further international protection.
  • Enforcement: A pan-European injunction may be available and is a cost-effective way of protecting a design in a number of different markets.
Speed

The registration process is fast, unlike registration of other IP rights

What do I need to do to register a design right in the UK?

It’s always worth doing a clearance search first to check there isn’t a similar design right registered in the territory you’re looking for protection in. However, unlike with trade marks, the examiner assessing your application doesn’t notify owners of those designs, which could be deemed similar. Instead it would be up to those owners to check on any design rights potentially infringing their earlier rights and challenge on the basis of infringement. This means the registration process is fast!

If you elect to have a clearance search carried out, once you have the go ahead, you can register a design with the UK Intellectual Property Office for UK-wide protection only, or with the EU Intellectual Property Office for EU-wide protection in all 28 Member States. A registered Community Design (EU-wide) is more expensive, but obviously offers much more protection than registering in the UK only.

As with all IP rights, it’s really important to get an expert involved to avoid any nasty pitfalls. Be sure to therefore instruct a lawyer to carry out any clearance searches and register the designs for you – not only that, it takes the hassle away from having to do it yourself!

Register

Registering a design right can be hugely beneficial, but be sure to consider your individual circumstances to assess whether it will work for you!

When should I apply to register my design?

An application to register a design should be lodged prior to publication, ideally the day before, or the same day that the design is showcased to the public.

Is it worth a fashion designer applying to register a design?

As an early stage brand unless you are likely to re-use the design, collection after collection, season after season, then it’s not worth registering a design in the fashion industry. Doing so could be extremely costly given the amount of individual designs one collection will produce and the amount of collections a brand will show during its lifetime!

However, that said, some designers do re-use particular designs as a sort of trade mark of their brand. Take for example Chanel’sBoy Chanel” iconic handbag, or Dior’sFuturist Boots” from Raf Simons’ Spring/Summer 2015 collection.

Chanel boy bag

Chanel’s iconic “Boy Chanel” handbag registered design

At this particular show, Simons exposed a supernatural fashion crusade between past, present and future, which was inspired by David Bowie, who provided a soundtrack for the psychedelic looks on the runway. On his design, Simons commented, “This season, the Dior couture woman will walking on diamonds on the soles of her shoes”, pure poetry!

With such an iconic design, and given the magnitude of the design house itself, it’s no wonder that the House of Dior Couture wanted to protect this particular design.

Dior Futurist Boots

Walking on diamonds, here’s an example of Dior’s “Futurist Boots” registered design

If however, you think a particular design will only be shown once in one collection, or isn’t likely to become iconic of the brand itself, copyright is perhaps a better intellectual property right to rely on to keep costs down. See my previous post, “Hey! Hands off my IP! (Copyright)” for more info.

FTL verdict

When protecting designs, here are some really useful practical steps to consider, whether relying on unregistered or registered design rights, or copyright:

Fashion design sketch 2

It’s always a good idea to keep documented evidence of your designs, whether you decide to apply for registration or not

  • Use appropriate copyright notices. These put third parties on notice of a designer’s rights, such the rights in a design drawing. These should take the form of “Copyright © – [name of copyright owner]” followed by the date of first creation (the year will be sufficient), for example “© Sarah Simpson 2007”.
  • Safely archive the original design drawings, with dates and stamps/signatures.
  • Think about creating a stamp to use on key documents to mark their importance.
  • Avoid circulating design drawings, sketches and other prep work to third parties.
  • Keep contact details for each individual designer or artist working for you, including their name and nationality, copies of their employment or consultancy contract and any assignment documents.
  • Have the above documents checked by a lawyer to ensure it is the brand that owns the designs and not the individual designer – this is particularly important where designers are engaged with the brand on a consultancy basis, rather than employed by the brand.

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…

Hey! Hands Off My IP! (Patents)

Have you designed the next influential thing in fashion? You might want to patent it…

Patents can be used to protect inventions. With wearable technology on the rise, patenting enables inventors to stop third parties from using their invention without permission.

Fashion bubbles New York

Wearables, like those displayed in the Fashion Bubbles exhibit in New York, are becoming ever increasingly popular, leading to a rise in patent applications!

“Perfect solution” you say? Hold your horses, there are strict requirements on what you can and can’t patent and this post will take you through those hurdles. Also, applying for a patent can be time-consuming and expensive. Doesn’t sound too appealing does it? Well the good news is that the benefits can outweigh the negatives, which this post seeks to explore…

Jump those hurdles

Patents are only available if you have invented a new product or method for doing things. In the fashion industry, this may be a design feature of the garment or a technical feature, such as drag resistance technology, for example.

Patent plate from 1879

Patents are a long established form of intellectual property protection…check out this patent plate from 1879 – retro!

One of the earliest examples of patenting in fashion technology is by Danish company Novozymes which revolutionised the traditional use of stones to create stone-washed denim effect by utilising enzymes and microorganisms to create the exact same effect on jeans. Other examples of patenting being used to protect fashion inventions include products such as Speedo’s FASTSKIN FSII swimsuit fabric and Geox’s footwear technology.

The invention itself must be new, inventive and be capable of manufacture, but what does this mean?

  • New? There must be no public disclosure prior to putting through a patent application. Fashion tech company XO once deliberately designed wristbands that detect user’s emotions to not work outside the auditorium they were in. This prevented the product from becoming accessible to the public in any way, which would have affected their patent application.
  • Inventive? The invention must not be obvious to another person skilled in fashion design.
  • Commercialisation? The product should have the ability to be made in any kind of industry.
Brand new

Gotta be brand new baby!

This means that aesthetic creations, designs or logos, such as the iconic Louis Vuitton symbol, cannot be patented. Instead, a trade mark application could be pursued. For more info on trade marks, see my post on trade marks in the “Hey Hands off my IP!” series here.

Another often over-looked point is that it’s not usually possible to patent software. Software is protected by copyright in the UK. Here’s some more information on copyright from the series.

Sounds great – my invention fits the bill! How do I register a patent?

This is where the fun begins! Unlike copyright, patents need to be registered. Applications have to be made to the Intellectual Property Office (IPO) in the territory or territories in which you want patent protection (usually wherever you are trading) and will require the following details, among others:

  1. a written description of the invention;
  2. drawings;
  3. claims that precisely set out the distinctive technical features of your invention; and
  4. an abstract that explains all of the important technical aspects of your invention.
A lot of 500 to 700 nm of exquisite light strewn across a pixelated matrix in linear crisscrossing fashion for your optical eye's delight and your mind's eye's respite

Fash tech’s 700m of exquisite light sewn into fabric for the eye’s delight!

Once the application has been processed, the IPO compiles a search report to investigate and assess if the invention is new and inventive, which can take up to 6 months! If all of the formal requirements are met, the application will be published approximately 18 months after filing.

Unfortunately it doesn’t end there…

Patent pending

It’s a long old process, so be prepared to wait!

Within 6 months of publication, more forms will need to be submitted along with an additional fee requesting a substantial examination for any changes required and this is reported back. If all of the application requirements met, the IPO will then grant your patent, publish your final application form and send you a certificate. Hurrah!

How long does a patent last for?

Patents can be granted for up to 20 years, but have to be renewed regularly during the 20 years, incurring a further fee! The first renewal is due 4 years after the date the patent was filed, and then annually. However, as always, there is a price to pay. This ranges from £70 for the first renewal to £600 for the 20th year!!

Wow, that sounds like a lot of effort – why bother with all this hassle?

Although the process to obtain and maintain a patent is long and expensive, with the right product, it is a great tool and can provide many benefits to those looking to generate a long-term investment return.

INTIMACY is a fashion project exploring the relation between intimacy and technology

INTIMACY is a fashion project exploring the relation between intimacy and technology. These Smart fabrics turn transparent when worn in close proximity to another person  resulting in feelings of an intimate nature! Yikes!!

In a fast-changing industry such as fashion where trends change season-by-season, it may not always be appropriate to register a patent and another form of IP protection may be better. However, with more and more start-ups looking to combine fashion and wearable technology, patenting could be very beneficial as this industry increasingly becomes mainstream, especially to prospective businesses or investors.

Patenting an invention gives you a monopoly right over your product. The mere existence of a patent application can also deter rival businesses from patenting a similar piece of technology.

Got my patent, now what?

It is your responsibility to police any unauthorised third-party use of the invention where they have manufactured, sold or imported it, not the IPO’s. It may be advisable to set up a watching service so you can keep an eye on any newly filed patent applications within the area of your invention.

Patented 1923

Keep a watch out for any potential infringements of your patent – it’s your responsibility, not the IPO’s!

A notable example of patent infringement in the fashion industry was when global retailer H&M infringed the ‘coveted bra technology’ of UK manufacturer Stretchline Holdings in a multi-million pound dispute. H&M sold bras using Fortitube technology without obtaining a licence from Stretchline Holdings. Tut tut!!

This goes to show the importance of having clearance searches carried out before applying to register a patent and also monitoring any future patents – not doing so could lead to a legal nightmare, which no one wants!

3D printing by Novabeans India 2

3D printing is also on the rise in the fashion industry – yet another form of fash tech!

Top Tips before applying for a patent?

Research, research, research – if the invention is not novel, inventive or capable of being manufactured, then the patent application will fail and your money will be wasted. Research online and through the IPO’s published patents catalogue to ensure there is nothing similar within your industry. This will not only help to ensure your invention is new, but will also ensure you don’t infringe anyone else’s patent rights.

Keep it a secret – confidentiality is crucial if a patent application is being considered. If your invention has been made accessible to the public in any way, this could seriously sabotage your application.

Secret

Ssshhh! It’s a secret – don’t spill the beans to avoid having your patent application declared invalid!

Be prepared for commitment – once your invention has been patented, it is important to analyse whether renewals are necessary and to monitor potential developments or inventions within your industry.

For more information on patents, feel free to contact me!

Naughty Gucci!

FTL’s newest post features a recap on an interesting US copyright infringement issue. This involved super-brand Gucci and occurred during a showcase of its Spring/Summer ‘16 collection.

The grudge arose when Gucci’s models walked down the catwalk in New York wearing golden nail rings highly similar to those designed and created by jeweller Bijules.

Gucci 1

Gucci’s Spring/Summer 2016 show

All about nail jewellery

Bijules is a famous jeweller renowned for its signature nail rings, with ambassadors such as Rihanna and Beyoncé flying the flag for the brand.

As we know from the last “Hey! Hands of my IP!” post on copyright, which you can find here, unlike copyright protected by English law, copyright in the US is a legally registerable right.

Bijules protected its copyright in the ‘Bijules Serpensive Nail Ring’ and ‘Bijules Serpensive Nail Ring II’ by registering them with the US Copyright Office in 2007. To view the registrations, type “Bijules” into the search box of this link.

Bijules 1

Shock horror! One of the fashion big boys ripping off an up and coming accessories designer – think of the publicity Kim!

Bijules bites back

Bijules founder, Kim Jules, stated that she may consider bringing proceedings against Gucci for copyright infringement following their use of the nail rings and commented:

“While it is an honor to be knocked off by Gucci, they have all of the resources to create something unique; instead they went back to something that’s steadfast and iconic of my company and that is unjust. If Gucci sells those nail rings to stores, those stores are going to believe Gucci made them and not me, and that is not a fair statement.”

Gucci 2

Although his designs are beautiful, Gucci’s creative director Alessandro Michele is under fire for allegedly copying the New York based designer, Kim Jules

Jules also pointed out that Gucci Creative Director, Alessandro Michele, was aware of Bijules and their nail rings.

Here’s an example of the original Bijules designs:

Bijules 2

The Bijules original…

and here’s an example of Gucci’s later versions:

Gucci rings

…and a highly similar Gucci rip off!

Too close to warrant coincidence methinks!

A slap on the Gucci “Bijuled” wrist?

To date Kim Jules has not brought formal proceedings against the Italian fashion power house, and there doesn’t appear to have yet been word on whether Gucci will be making the nail rings available for retail sale.

FTL comment

Perhaps Gucci has taken note and won’t be progressing its “Gujuled” nail rings! Perhaps Kim Jules doesn’t think pursuing this would be commercially worthwhile…

Gucci 3

Gucci showcasing its accessories at Milan Fashion Week – S/S16

In any event, this is a great reminder that you should never ever try to pass off another’s design as your own. You will be found out!

A tut tut to Gucci who should know better!

Hey! Hands off my IP! (Copyright)

As promised, FTL is continuing with the “Hey! Hands off my IP!” series of blog posts. The first post in the series was on trade marks, you can access it here. Next we take a look at copyright.

It’s a common error to mistake copyright as a registerable right and get it confused with a trade mark. This piece aims to demystify the differences, provide greater clarity on copyright and explain why it’s a useful tool for those in the fashion/fash tech industries.

 

2

Protect your designs and avoid copyright infringement by reading on…

What’s copyright?

Contrary to some general public perception, copyright cannot be legally registered in the UK, which is one of the key differences often confused with a trade mark.

Recently when listening to the radio (yes I’m a retro gal!), I heard numerous presenters assuming that certain objects, lyrics and recipes need to be registered to attain copyright. WRRRRONG!! This really infuriates me…

3

Glued to my radio!

Copyright automatically arises on the creation of a Work. An idea alone cannot generate protection, the idea must be Recorded to become protectable under copyright. The Work must also be Original.

What does it mean to be a Work, Recorded and Original?

A Work: to be classified as a Work, the piece must fall within one of the following categories (for the legislation buffs out there, the relevant statute is here):

• a literary, dramatic, musical or artistic work;
• a sound recording, film or broadcast; or
• the typographical arrangement of a published edition.

For those in the fashion industry, this could include sketches of new clothing, handbag designs, shoe drawings, photographs of mock-ups or photos of the final product for example. However the garments themselves would not generally be protected by copyright, as it would be hard to drop them into one of the above categories.

4

Copyright would exist in these very designs!

It’s worth noting that in other countries, garments can be protected by copyright due to their more openly drafted laws on copyright. This is the case in France, Germany and the US and was how Bijules could register its nail ring for copyright protection in the US.

Fixation: A further hurdle to leap before copyright protection applies is that the Work must be fixed. This means the literary, dramatic, musical or artistic work, for example, must be put “in writing or otherwise” (section 3(2), Copyright designs and Patents Act 1988, or CDPA for short!).

5

“Record” everything to achieve fixation!

Originality: Finally, the work must be Original! It’s no good copying someone else’s work and then claiming copyright in it – that won’t work!!

Interestingly, it’s not necessary for the whole piece to be original for copyright to exist. Generally, the level of originality required in the UK is low; for example, copyright in calendars and competition cards have been accepted in the UK.

For fashion photographers, originality of photographs has raised questions, but European law states that:

“Photographs which are original in the sense that they are the author’s own intellectual creation shall be protected… “

6

Photographs are able to achieve copyright protection. Follow the steps outlined above to ensure they’re safe!

Who owns copyright?

Normally the owner of copyright within a Work will be the creator. However Works created in the course of employment by an employee will usually be owned by the employer, due to express terms in the employee’s contract.

Also, where a piece is commissioned, let’s say Vogue UK commissioned the famous milliner Philip Treacy to create an exclusive design as part of the 2016 100th year anniversary, it’s unlikely that Vogue would fail to formally contract with Treacy to secure Vogue’s ownership of any copyright in the design. So here, the commissioning party will typically own the copyright.

8

Philip Treacy’s amazing creation for the late Alexander McQueen’s Spring/Summer 2008 collection. Wonder if Treacy was commissioned by McQueen and if so, who owned the copyright!?

How long does copyright last for?

Copyright exists from the moment a work has been created. The duration of this depends on the type of work created, by way of example, an artistic work affords protection for 70 years from the death of the author/creator.

7

Vogue is celebrating its 100th year this year! Continuing the theme, copyright even exists in these vintage Vogue covers dating all the way back to 1916, provided the date of the author’s death was not before 1946 of course!

What rights does copyright give the owner?

The copyright owner has the exclusive right to do the following with the Work:

• copy it;
• issue copies to others;
• rent it out;
• perform, show or play it in public;
• communicate it to the public; and
• make an adaptation.

Are any rights reserved for a creator who may no longer own the Work?

The author automatically acquires a number of moral rights in relation to their Work including rights:

• to be identified as the author;
• to object to derogatory treatment of the Work; and
• not to have a Work falsely attributed to him or her.

What happens when someone breaches copyright?

Copyright is infringed if, without the permission of the owner, someone does, or authorises another to do, any of the acts that are exclusive to the copyright owner as outlined above.

1

Universal sign for copyright. Stamp on all of your works capable of copyright protection to warn off any copyright thieves!

This can apply to the whole of the Work or only part of it and relates to direct or indirect infringement.

Round up

Being an automatic right, and not one that can be legally registered in the UK, copyright can often be difficult to prove. For example, a startup fashion business may create a wonderful design, which is then totally ripped off by large corporate retailer. The startup may not have filed evidence of its creation, which would prove originality prior to the date the corporate giant made a copy. The startup would therefore find it difficult to its ownership of the Work.

9

Although your studio may only have humble beginnings, be sure to record your original works to benefit from copyright protection!

What can be done?

A way around this is to record and keep dated copies of your file drawings, plans and photographs. This will then go some way to prove you are the owner and that the Work does not belong to those trying to steal your work!

Copyright can be mind-boggling and legal advice often needs to be tailored on a case by case basis. If you’ve hit a copyright wall and don’t know where to turn, contact FTL via the contact me page.

Until next time…

Data Protection – Considerations for Online Brands

The popularity of shopping online has undoubtedly made buying your favourite shoes or handbag even easier, but the ever-growing list of considerations for brands has only gotten longer! One of the main headaches is data protection.

For brands with an online presence already, or those just starting out online, a key consideration should be keeping your customers’ data safe.

Shops

Could online shopping be the end of the traditional experience?

What do I need to know?

In the UK, the Data Protection Act 1988 (DPA) contains certain obligations that anyone processing personal data must comply with. On your website, personal data will be things like your customer’s name, date of birth, address and so on. As the owner of a brand operating online, you may be considered the data controller under the DPA, and therefore the one responsible for protecting the data!

Padlock 2

Always know whether you are responsible for keeping data secure!

One of your top priorities, regardless of whether you are a data controller or data processor, should be ensuring you have privacy and cookie policies displayed clearly on your site.

What’s a Privacy Policy?

A privacy policy simply sets out what you will do with the customer data you have collected. Before gathering data, you should make customers aware of why you need this. A wise move would be to ensure you have a privacy policy clearly visible on your website, explaining to customers what data you are collecting and why.

Data should only be collected for a lawful purpose (so for the processing of those new orders flowing in!) and you should make sure you tell customers when you make any changes to why you are collecting the data.

Shopping cart area

Don’t forget to let your customers know why you are collecting their data, as well as saying “thank you” for the purchase!

You always need to ensure you collect the data securely too, and don’t keep this for longer than needed.

If you send or plan on sending marketing emails (those wonderful discount emails), you should mention this in your policy.

What’s a Cookies Policy?

Cookies are text files implanted onto customers’ hard drives, which enable you to collect information about the person such as their name, address and user preferences. You can then tailor and personalise their shopping experience, and remove annoying tasks such as requiring a customer to re-enter their details before they can shop again. That way they can shop hassle free and even faster!

Cookies

We love cookies!

Cookies can therefore be a really valuable way of finding out about your customers, and encouraging them to return to spend more! You must however make sure you get consent from your customers for the use of cookies, and so a clear cookies policy on your website is a must. This needs to explain why you are using cookies and note that customers always have to opt-in.

Don’t forget about your employees!

You should also remember that data protection applies to employees too! To help guide us through the key data protection considerations for employers and employees, I have asked Razia Begum (our super Senior Associate, specialising in employment law, at Taylor Vinters) to answer some questions that commonly crop up.

An interesting fact about Razia is that not only is she a fantastic employment lawyer, but she also completed a course in fashion design and marketing at prestigious fashion college, Central St Martins – who could therefore be better placed to talk about this?!

Razia-Begum

Introducing Razia Begum, Employment Law Extraordinaire!

FTL: So Razia, what are the main risks we should be aware of?

Razia: In this day and age data is increasingly centralised and managed digitally. Staff data (including financial and sensitive personal data), which is often not adequately protected by employers, may be more susceptible to falling into the wrong hands and being distributed for the wrong reasons.

Employers have a positive obligation to look after employees’ data and a data breach could prove costly. It may also lead to considerable reputational damage and embarrassment for the company.

If a breach does occur employees may also be able to bring claims such as breach of privacy, confidentiality and data protection law. The success of claims such as these relies largely on the degree of financial loss suffered by an employee as a result of the breach.

FTL: What should employers do?

Razia: They should set up effective data protection and fraud prevention (in relation to confidential data as well as revenue) policies, which are implemented and enforced as required. The processes and procedures within such policies should also tie into the organisation’s HR policies and provide for regular awareness training, for example, the key dos and don’ts of compliant big data usage.

Padlock 1

Employee data security is key!

Companies should also ensure they have appropriate policies in place in respect of “bring your own devices” (or BYOD) and remote working if applicable, as both of these can significantly increase the chances of a data breach.

FTL: Thanks Razia, for the stellar input! Lots to consider when looking after your employees’ data.

FTL Round-up

Although the focus should be on prevention rather than cure, in a digital world where online shopping is the norm, breaches are unfortunately almost inevitable, however big or small. Brands should also therefore have robust emergency response plans in place ready for execution should a data breach occur.

Tottenham Court Road and Oxford Street

Online shopping is great, but you can’t beat the hustle and bustle of Oxford Street – or maybe that’s just me!

Data protection can be a mind-boggling subject and this post only highlights a few key taster points! So for more information on data protection feel free to get in touch via the contact me page.

“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!

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!