Fashionably IP: Recent Episodes
HGF
The FashionablyIP podcast is a look at important and hot topics in the world of fashion and intellectual property. In the podcast, we review the latest intellectual property issues in fashion or discuss matters of IP which have impacted the world of fashion for years and have come up again and again. The podcast will consist of interviews, opinion pieces and case law discussions.The information in this podcast is not legal advice. If you have any questions concerning the issues raised please contact Rebecca Field at rfield@hgf.com or Lee Curtis at lcurtis@hgf.com.
Rebecca Field and Lee Curtis discuss the recent Opinion from Advocate General Emiliou in the Deity Shoes S.L. case. The case concerns whether fashion designs need ‘intellectual effort’ to benefit from EU Registered and Unregistered design protection and whether fashion trends impact the designer's freedom when considering the validity of designs.
Timestamps:
- 2:13 can you provide some background on the Deity Shoes dispute?
- 4:25 The first core issue: How did the Advocate General answer this key point?
- 8:18 The second core issue: The designer’s freedom in developing the design
Rebecca Field and Lee Curtis interview barrister Simon Malynicz KC of Hogarth Chambers on the recent decision of the UK Supreme Court in the Iconix vs Dream Pairs case. We discuss the concept of post-sale confusion in the world of trade marks and as ever have a fashion spin.
Timestamps:
- 3:14 - Summary of the Iconix case
- 10:45 - Has the Supreme Court helped define the limits of post-sale confusion?
- 12:30 - Do you think post-sale confusion is a particular issue in the world of fashion?
- 14:30 - Have there been any other recent cases in the world of fashion in the United Kingdom which dealt with the concept of post-sale confusion?
- 17:30 - The differences in applying confusion with regard to trade mark infringement
Rebecca Field and Lee Curtis interview barristers Andrew Norris KC and Becky Knott of Hogarth Chambers on the recent Sonia Edwards vs Boohoo design case. We also touch on the well-known Rihanna case and other notable fashion IP cases.
Timestamps:
- 3.34 - Introduction to Andrew and Becky
- 4:22 - You acted for Boohoo in that case. Could you, Becky provide a brief summary of the case and the issues involved?
- 6:28 – issue of copying. Andrew explains this and how it came up in the Edwards case.
- 9:40 - Could you provide our listeners with some comments on this aspect of the case?
- 14:58 - For our listeners who are not aware of that case, can you explain your role, the background to the case, and some of the key takeaways of the Topshop case
- 18:34 -What fashion IP case have you found the most interesting?
Rebecca Field and Lee Curtis interview their HGF colleagues Susanne Bilderbeek and Olivia Petter on smell-a-like perfumes and compare and contrast UK, Benelux and German trade mark and copyright case law on perfume comparison lists and smell-a-like perfumes.
Timestaps:
- 4:54 So-called smell-alike perfumes case law
- 8:40 Smell-alike perfumes and German case law
- 15:00 Is there any UK case law on this
Rebecca Field and Lee Curtis interview Professor Johanna Gibson of Queen Mary University of London. We touch on the new Fashion Law LLM, the first fashion law LLM in the United Kingdom and discuss fashion IP cases past, present and future.
Timestamps:
- 6:49 - The new Fashion Law LLM at Queen Mary
- 10:28 - Historical fashion IP law case
- 21:09 – Supreme court
Rebecca Field and Lee Curtis interview barrister Victoria Jones from the chambers 3PB in this edition of the Fashionably IP podcast on good practice in contentious proceedings before the UKIPO. Victoria provides tips on good practice in evidence and oral arguments and the benefits of using a barrister in UKIPO proceedings. Of course, the podcast will also have a fashion spin as always.
Timestamps:
- 3:39 - Could you give an explanation of how the UKIPO Tribunal system works and maybe some of the similarities and differences to UK court proceedings?
- 6:19 - Can you explain the role of a barrister in UKIPO Tribunal proceedings and when do you think it best they are engaged in the proceedings?
- 15:28 - Fashion cases you have dealt with before the UKIPO with regards to trade marks
Rebecca Field and Lee Curtis interview barrister Daniel Selmi of Three New Square in this edition of the Fashionably IP podcast on the concept of the informed user in UK and EU registered design law. Who is the informed user? How does the informed user impact the assessment of design infringement, validity of registered designs and prior art? Has the concept of the informed user impacted any fashion cases?
Timestamps:
- 3:23 - The concept of the informed user and how does this concept impact the assessment of prior art and design corpus in a UK or EU registered design case?
- 6:27 - How the product for which the registered design can impact the assessment of prior art and design corpus in a UK or EU registered design case
- 9:21 - What is the difference between the concept of the average consumer under UK and EU registered trade mark law and the informed user registered design law?
- 11:09 - How the informed user has impacted any fashion design cases in the UK and/or EU? Can you make any comparisons with the average consumer in trade mark cases and the utility of these sorts of notional constructs of IP law?
- 13:35 - How the courts assessment of the informed user has evolved overtime and how UK courts post Brexit might diverge from the assessment of this concept compared to EU courts.
Rebecca Field and Lee Curtis discuss the often misunderstood concept of honest concurrent use and fashion brands in the United Kingdom. What is the history of this concept and how does it apply to the world of fashion brands?
Timestamps:
- 2:44 - What is honest concurrent use under UK trade mark law?
- 8:19 - Fashion cases where the concept has been applied
- 9:57 – conclusions
Lee Curtis and Rebecca Field discuss the recent Thom Browne/Adidas decision of the English High Court concerning the battle of the three and four stripes. The decision was long and wide-ranging concerning invalidity, infringement, passing off, post-sale confusion and honest concurrent use in the world of fashion.
Timestamps:
- 4:16 - the trade mark invalidity proceedings first and what the High Court decided?
- 9:19 - trade mark infringement and passing off proceedings
- 13:54 - Summary of the conclusion of the decision
Rebecca Field and Lee Curtis discuss non-use revocation actions and fashion brands in the United Kingdom and European Union. What constitutes use? Do you need to use a trade mark in the exact form of the registered trade mark? What are the valid reasons for non-use?
Timestamps:
- 2:49 - The basics of Law
- 6:42 - Cases in the EU of non-use and trademarks in the UK and the EU
- 11:01 - Can anything be learnt from these decisions?
Rebecca Field and Lee Curtis discuss the application of copyright to the world of fashion. Why is it harder to enforce copyright in fashion items in the US compared to the EU? How are fashion items protected by copyright in the UK?
Timestamps:
- 2:16 - Copyright might naturally be thought to be a very apt IP right to apply to fashion, but why has it been generally difficult to apply such rights to the world of fashion at least in the United Kingdom and United States of America?
- 6:15 - Other cases in the EU on the subject of copyright protection and fashion
- 8:23 - Are there any lessons to be learned from these cases in the US, UK and EU?
Rebecca Field and Lee Curtis provide a short history of fashion IP law. They discuss the differences between US, UK and EU fashion IP law and explain that many of the differences are down to history.
Timestamps:
- 2:46 - Introduction to the development of IP law?
- 5:42 - History of fashion IP law?
- 10:57 - differing attitudes to the protection of fashion IP rights between Europe and the US
- 12:42 - What has the discussion shown about the history of fashion IP law?
Rebecca Field and Lee Curtis discuss the IP rights applying to women’s shoes. Rebecca and Lee concentrate on probably the most famous women’s shoes of all, notably the red sole of Christian Louboutin. They discuss how the red sole was registered and some of the IP disputes surrounding that shoe in the EU and US.
Timestamps:
- 2:49 - How was Christian Louboutin's red sole shoe registered in the UK
- 5.44 - IP disputes with the Christian Louboutin red sole
- 8:49 - What other IP rights could apply to the design of a shoe?
- 11:15 - HGF IP in Retail Conference
Rebecca Field and Lee Curtis discuss position trademarks in fashion. What are position trade marks and how easy or hard are they to register in the world of fashion. What happens when fashion position trademarks come into conflict?
Timestamps:
- 3:02 – can you define what is a position trade mark?
- 6:35 - Recent cases which might suggest that the registration of position trade marks is getting harder or easier
- 9:31 - Cases on when position trade mark registrations have come into conflict?
- 10:50 - Have there been more successful challenges based on a position trade mark registration?
- 12:17 - Key takeaways from discussion
- 13:57- Retail Conference
Rebecca Field and Lee Curtis discuss the intellectual property rights which apply to perfume, why they are integral to the success of a fashion house and how they can be protected under IP law.
Timestamps:
- 2:35 – why a perfume has historically been important to fashion houses.
- 5:05 – why is it not possible for the smell of perfumes, at present, to be protected under trademark law in the UK and EU?
- 6:50 – what types of IP protection could apply to perfumes?
- 8:31 – are there any other forms of protection that a fashion brand might seek in relation to a perfume.
Rebecca Field and Lee Curtis discuss the intellectual property rights that apply to jewellery, some recent cases on the protection of jewellery under trademark law, and also why all things that glitter as jewellery may not always be protectable under intellectual property law.
Timestamps:
- 2:44 – Why jewellery is not a form of fashion which is apt for trade mark protection
- 7:49 – what types of IP protection are probably better suited to the protection in the UK and EU?
- 11:32 – Seminar on Fashion IP Law
Rebecca Field and Lee Curtis discuss the intellectual property rights which apply to dresses and how dress design has moulded some of the IP rights that apply to fashion items. Further, can the ‘overall look’ of a dress designer be protected via IP law, as opposed to individual dress designs?
Timestamps:
- 3:30 - how dress fashion has influenced IP and the rights that designers seek in their protection.
- 6:23 - Community unregistered design right
- 9:15 - Copyright protection in relation to the dress design
- 12:04 - Seminars on fashion IP law
Rebecca Field and Lee Curtis discuss the recent decision of the General Court of the European Union, which upheld previous decisions of the EUIPO to cancel a Community Design Registration for a pair of trainers in the name of Puma SE based on prior disclosures of the design by Rihanna on Instagram.
Timestamps:
- 3:39: How Rihanna inadvertently destroyed the novelty of the Community Registered Design of a trainer design by Puma.
- 3:53: Rihanna signs contract with Puma
- 4:46: Facts of the case
- 6:40: Law of the case
Rebecca Field and Lee Curtis discuss IP law in the fashion sector via a series of objects. The second object they will discuss is the handbag. What IP rights apply to this form of fashion item? Are there any particular IP rights most applicable to the handbag? Are there any significant recent IP cases impacting handbags?
Timestamps:
- 2:42: Why is the handbag important in the world of fashion?
- 4:04: How are they protected under IP law?
- 4:36: Community Unregistered Design Right
- 6:15 commercial importance of hand bags
Rebecca Field and Lee Curtis start to discuss IP law in the fashion sector via a series of objects. The first object they will discuss is the humble trainer or sneaker. What IP rights apply to this form of footwear? Are there any particular IP rights most applicable to the sneaker or trainer? What special consumer issues and traits impact the protection of IP in the sneaker or trainer market?
Timestamps:
- 2:57 - Why is the sneaker market so important and why has it been the centre of some of the most interesting IP issues
- 4:50 - the possible core IP rights which apply to sneakers or trainers.
- 9:12 - are there any IP issues particular to the sneaker and trainer markets
Rebecca Field and Lee Curtis discuss the impact of exhaustion of rights on intellectual property law in the world of fashion. The exhaustion of IP rights is particularly important in the world of fashion retail and impact of IP rights owners’ ability control their distribution channels. Under what conditions can brand owners object to the resale of genuine branded fashion products in the UK? What is the ‘aura of luxury’? What is the impact of Brexit on exhaustion of rights in the UK? Does the UK government have any plans to bring in international exhaustion into the UK?
Timestamps:
- 2:54 – Why are the exhaustion of rights so important in the world of fashion retail in particular?
- 4:20 - Exceptions of the exhaustion of rights rules
- 5:52 – How has Brexit impacted the issue of exhaustion of rights?
- 7:06 - Has the UK government discussed changing the exhaustion of rights regime?
- 8:48 - Could the U.K government change the exhaustion of rights rules.
The impact of artificial intelligence on IP in fashion?
Rebecca Field and Lee Curtis discuss the impact of artificial intelligence on intellectual property law in the world of fashion. What is artificial intelligence? How does an AI application learn to become a fashion designer? Can AI applications own and create IP rights in fashion? How do you deal with the issue of liability and the infringement of IP rights?
Timestamps:
- 2:44 What is artificial intelligence?
- 4:09 How does an AI application learn its craft in fashion design?
- 6:08 Recent decisions on whether AI can create a new IP right and diversions on laws in various countries
- 7.38 Liability in AI applications
- 9.30 Does IP law need to change to accommodate the rise of AI in fashion?
Rebecca Field and Lee Curtis interview their HGF colleagues Lauren Somers and Emma Pallister on the quiet luxury trend in fashion and what impact does it have on IP rights. How do you protect and enforce aspects of quiet luxury?
Timestamps:
- 1:40 – Introduction to guest speakers, Lauren Somers, and Emma Pallister
- 2:51 – Quiet luxury and buying habits.
- 4:06 – How does quiet luxury impact IP right?
- 7:18 - Maison Margiela trade mark
- 9 :16 – Key takeaways when considering quiet luxury and its protection via IP right
Rebecca Field and Lee Curtis interview their HGF colleague Suzan Moss on searching for fashion designs in the UK and EU. What IP rights do you have to consider? What about disclosure dates, novelty, and individual character? What is good practice in registering designs for fashion items.Timestamps:
- 1:25 – Introduction to guest speaker, Suzan Moss.
- 2:22 – Design clearance searches for fashion products
- 3:37 – Unregistered design right protection
- 5:41 – Date of disclosure
- 6:36 – Brexit and design rights
- 8:02 – Good and bad practices in design registration
- 9:09 – Difficulties of obtaining rights in the world of fashion
- 10:18 – HGF IP in Retail Conference
There is a lingering impact of Brexit on design and trade mark rights in the world of fashion. You might have thought that Brexit no longer has an impact of IP law in the fashion world, well it still does. The 31st December 2023 is approaching, and that date will be significant in a number of ways in IP rights in the world of fashion. We discuss the expiry of Continuing Unregistered Design Rights, Supplementary Unregistered Design Rights, the potential divergence of UK and EU laws, UK address for service for UK design and trademark registrations and the potential for international exhaustion of IP rights in the UK.
The key time stamps are:
- 02.43 – Unregistered design rights
- 03.09 – What are CDR design rights?
- 04.03 – What are SUR design rights?
- 05.46 – Can designers obtain UK and EU design rights at the same time?
- 06.30 – Will Case Law diverge between the UK and EU?
- 07.10 – What will be the impact of REULA?
- 08.39 – Impending changes due to BREXIT
- 09.33 – The Exhaustion of Rights regime
- 11.00 – HGF’s IP in Retail Conference
Welcome to Series 3, Episode 4 of HGF’s Fashionably IP podcast. In this podcast we talk about parody fashion brands and whether there are any differences in the approach to them in the US, UK, and EU from a trade mark law perspective. Has a recent decision in the US on parody brands brought the various approaches closer together?
Timestamps:
- 02.25: Bad spaniels branded dog chew - the Jack Daniels case
- 04:04: Why are parody brands popular in the world of fashion?
- 05:26: Reputable fashion brands
- 07:04: Do free use provisions come into consideration for parody fashion brands?
- 07:55: Can you have a parody defence under copy right law in the UK and the EU?
- 08:40: Key takeaways
This podcast is the final in a series of three podcasts on key aspects of trade mark protection in the UK and EU. We talk about two ‘quirky’ aspects of UK and EU trade mark practice, notably series and position trade mark applications, with a fashion spin.
Timestamps:
- 03.14 – What is a series Trade mark?
- 05.37 – What use are series Trade marks for fashion clients?
- 06.40 – Position Trade marks
- 08.58 – Litigation relating to position trademarks
- 09.24 – The Christian Louboutin case
- 10.11 – Key takeaways
This podcast is the second in a series of three podcasts on key aspects of trade mark protection in the UK and EU. We talk about the decorative use of trademarks in the world of fashion and who exactly is the average consumer in a trade mark infringement action under UK practice.
Timestamps:
- 03:04 - why is decorative or ornamental use an issue in the world of fashion and trademarks?
- 05:41 - The Rihanna x Topshop case
- 06:28 - Can elements of fashion design act as Trade Marks or are they purely decorative?
- 07:24 - The average consumer under UK and EU Trade Mark law
- 08:58 - Key takeaways
Welcome to the first episode in series 3 of HGF’s Fashionably IP podcast. This podcast is the first in a series of three podcasts on key aspects of trade mark protection in the UK and EU. This episode will focus on the subject of goodwill with a fashion spin as ever. We will also have a special guest in this podcast but you will have to tune into the podcast to find out who it is!Timestamps:
- 1:29 Our special guest
- 3:15 Goodwill in the UK
- 4:26 Can you assign goodwill?
- 6:10 Can you explain what residual goodwill is?
- 9:11 Can you explain the similarities and differences between US trade dress protection and the protection of goodwill under passing off in the UK?
- 11:28 Karen Millen case
Welcome to episode 3 of our second series of HGF’s Fashionably IP podcast. This podcast is the final podcast in a series of three podcasts on key aspects of design protection in the UK and EU. We are going to talk about all the small but potentially significant quirks and points of UK and EU Registered Design Practice, including disclaimers, drawings, descriptions and much more.Timestamps:
- 3:05 - Drawings and disclaimers of registered designs
- 4:13 - PMS International Plc vs. Magmatic Limited case
- 7:07 - Locarno classifications and descriptions
- 8:57 - Marks and Spencer Plc vs Aldi Stores Limited case
- 10:09 - Quirks of UK and EU registered design practice that you should be aware of
Timestamps:
- 2:39 - Novelty and the scope of infringement rights.
- 3:33- What is the test for novelty?
- 6:07 - What is the test for infringement for registered designs in the UK and EU?
- 7:38 - Procter & Gamble Co vs Reckitt Benckiser (UK) Ltd case.
- 8:20 - What is the novelty test for UK and EU Unregistered Design Rights?
- 8:57 - Karen Millen case.
Welcome to Series 2 Episode 1 of HGF's Fashionably IP Podcast. In this episode we will be talking about disclosure and its impact of unregistered and registered design protection and we are going to have a fashion spin as always.
Timestamps:
- 1:35 - About HGF
- 2:40 - Disclosure and registered and unregistered design rights
- 5:14 - The Crocs case
- 6:17 - The importance of disclosure for Unregistered Design Rights
- 7:30 - Beverly Hills Teddy Bear Company vs PMS International case
- 9:20 - General rules to follow on disclosure
In the ninth edition of HGF’s Fashionably IP podcast in the spirit of the new year and new beginnings or at least recycled beginnings, we are going to talk about recycling, upcycling and resale in fashion. How do IP rights impact recycling, upcycling and resale? Can a brand owner control the resale of its branded product and product which may have been upcycled or customised from the product it originally sold?
Timestamps:
- 1:51- recycling, upcycling and resale in fashion.
- 3:05- Consequences of recycling, upcycling and resale for intellectual property law
- 3:57 - Christian Dior vs Copad case
- 5:20- Hamilton International Limited vs Vortic LLC case
- 5:52 - Rolex vs BeckerTime LLC case
- 6:54 - Chanel vs Shiver + Duke case
- 7:44 - Resale websites
In the eighth edition of HGF's Fashionably IP Podcast, we are doing something different to what we have done with our previous podcasts and have a Christmas special. In this podcast we are talking about Father Christmas and how if he had been starting out in his toy and joy distribution business what trade mark and design rights he could have combined in his famous red and white outfit. So we are going to combine Christmas, fashion and a bit of IP. Merry Christmas from us and all at HGF.
Timestamps:
- 1:34: Santa's outfit and Coca Cola
- 2:50: Could Father Christmas's outfit have achieved unregistered design rights in the UK and EU?
- 4:09: EU Unregistered Design Rights
- 5:29: UK Unregistered Design Rights
- 8:09: Registered Design Protection
- 10:54: Could Father Christmas benefit from any forms of IP protection?
In the seventh edition of HGF's Fashionably IP Podcast, we discuss the protection of shape trade marks in the world of fashion. Our discussion centres on the recent refusal by the Board of Appeal of the European Union Intellectual Property Office to register the shape of the Christian Dior saddle bag hand bag. We also touch on the decision from the General Court of the EU from 2021 to allow the registration of a cosmetics applicator by Guerlain. Why did Guerlain and Christian Dior find themselves in different positions? Is there still hope for Christian Dior in registering its saddle bag hang bag as a trade mark?
- 2:27 The issue of shape trade marks
- 5:06 Guerlain lipstick applicator case
- 7: 10 Dior Saddle bag case
- 10:41 Takeaways from the Guerlain and Dior cases
In this sixth podcast, we discuss the protection of geographical terms in the world of fashion. An emotive subject for businesses and countries alike.
- Examples of geographical terms in fashion 01:46
- The Windsurfing Chiemsee case 03:29
- Iceland (the country vs the food retailer) case 05:12
- Louis Vuitton's Vendôme trade mark registrations 08:20
- Takeaways from the discussion 09:55
In our fifth podcast we talk about trade mark rights protecting fashion designs. Design and copyright may be of obvious use, but what about trade mark rights?
Timestamps:
- An intro to HGF and the podcast
- Trade mark rights to protect fashion designs and why is that an important subject 02:07
- Freddy SpA vs Hugz Clothing 05:12
- Position trade marks 07:00
- Takeaways from the discussion 08:37
In our fourth podcast we talk about heritage brands in fashion or brands which are sometimes unfairly called zombie brands. Can zombie fashion brands come back to life? How does trade mark deal with this particular issue of fashion IP law?
Timestamps:
- An intro to HGF and the podcast
- Intro to heritage brands in fashion 1:50
- Why do such brands cause problems for a trade mark law? 3:32
- The NEHERA case 5:57
- Tips on what to do if you are a 'custodian' of a Zombie fashion brand 9:38
- Takeaways from the discussion 10:26
In our third podcast, we talk about the issue of protecting trade marks when they are the fashion product itself.
- An intro to HGF and the podcast
- The issue of protecting trade marks when they are the fashion product itself (1:59)
- Louis Vuitton chequerboard design (4:48)
- Trade mark protection over design protection (08:01)
- Takeaways from the discussion (11:49)
In this second podcast, we are going to talk about the colour in fashion and the difficulties of protecting it.
In this first podcast, we are going to talk about the use of personal names as ‘brands’ and why this is an important subject in the world of fashion.
- An intro to HGF and the podcast
- Why is the use of personal names as brands important in the world of fashion (2:41)
- The Elizabeth Emanual case (4:35)
- The Karen Millen case (9:40)
- Learnings from the case examples (11:23)