Fashion through the eyes of the law: a top fashion legal brain offers advice on brand protection
Sheridans is a celebrated full-service media and entertainment law firm with an impressive fashion offering. The firm's fashion lawyers know the industry inside out and act for brands, retailers, talent/modelling agencies, models and fashion technology businesses.
Andrew Bravin is a senior associate solicitor in the fashion team. He advises some of the world’s most well-established brands on everything from the exploitation of intellectual property (IP) rights to licensing, franchising and dispute resolution.
Though you can’t disclose your own past clients, what interesting IP infringement cases have you seen unfold?
An interesting recent legal saga that demonstrates the value companies attach to their trade marks concerns Louboutin and its successful, but very long running, case to try and prevent the sale of a high street version of its red soled shoes. This raised a number of issues around the registrability of shapes as trade marks.
A very high profile case of recent years was obviously the case Rhianna brought against Topshop, whereby the retailer sold a T-shirt with the pop star’s image on without her permission. She relied on the English tort of ‘passing off’ to stop the product being sold. She was successful and the courts ordered Topshop owner Arcadia to stop selling the product and pay the singer’s costs. This was an interesting case as in England there is no general “image right”, and so the case showed that “image rights” can be successfully protected using ‘passing off’. Even though I don’t think she owned the photograph.
What other fashion design infringement cases spring to mind?
In 2015, Dutch denim brand G-Star claimed that the owner of the Voi brand was infringing its “arc” jean design. It was a good reminder that design rights are a useful, and perhaps underappreciated, right to enforce. Indeed, recent statistics reported by the UK Intellectual Property Office (IPO) showed where claimants litigate on design rights they are successful more often than not.
How do designers and brands protect themselves from the fast fashion retailers who can copy designs in an instant?
The whole fast fashion area is quite difficult to navigate because everything moves so quickly. You’ve got to look at what rights are even protectable. Intellectual property law protects trade marks, copyright, design rights and the unregistered rights like ‘passing off’. Design rights protect the configuration or shape of a product, and copyright might protect artistic work, like a particular logo or pattern. Trade marks protect the brand name or a logo and you have to register them with the IPO. A trade mark examiner looks at it, and if no other third party opposes it, then roughly six months down the line you get a trade mark. But if you’re up against people who are operating in fast fashion, it’s difficult. If you’ve got a brand name and you want to get it registered, it takes six months to get it registered. If someone has used it in that six months on a product then it’s difficult to enforce it. It’s best to act as quickly as possible from the offset as going up against the big fast fashion operators is going to be costly and time consuming.
What other problems need to be looked out for?
Counterfeiting is a massive problem, and it has been for years, but particularly now with the global trade and the access to other brands across the world. You frequently see English brands being copied in China. There’s certainly a difficulty in being able to enforce your rights. Trade marks are territorial, so you need a trade mark in each territory to be able to enforce it. It’s obviously time consuming and costly to get all those trade marks, but then you have to try to enforce them in all those territories as well. That means you need to be taking legal action in all the different countries. The big brands such as Gucci obviously have a huge budget to do that. There’s so much value in their brand that they need to protect it, because if the market gets flooded with copycats then the actual products themselves become less desirable.
What about when you’re starting out?
The big brands will have huge budgets and teams that will handle the counterfeit goods problem, but when you’re starting out it’s very difficult. You have to be quite strategic about where you want to target, and where you don’t. There may be counterfeit goods that you uncover in a particular territory, but you have to think whether that territory is a key market for you, whether you have a registered right there and how difficult is it to actually enforce it in that territory. It’s difficult because if you do let the counterfeiters run rife, it can become a major problem for a brand.
So it’s very important to act quickly to protect your brand name in other territories?
Yes, because in some cases designers find they can’t use their own name in certain territories because someone has got it registered very quickly before them. It’s a particular problem in China again, where there are entities and individuals that monitor any brand name that’s becoming hot in other territories, and they will register that name and get a Chinese trademark. However, fairly recently there was bad faith provisions introduced whereby, if you can show that it’s someone who has clearly done it in bad faith, then you can get them removed from the register. That said, you’re going have to instruct a Chinese lawyer, which is going to be expensive. Time and resources get eaten up. So, it’s always good to try to register trade marks before those people get in there.
Is that also the case with regard to website domain names?
Yes, it’s similar with domain names. When we’re dealing with start-ups we always recommend that they buy all the domains they can which include their brand name, because if you get big you get people trying to set up those domains and then sell them to you, or set them up and try to rip you off. You can buy a domain name for about £20, but the cost of actually trying to recover it would be more like £5,000. So, if you can take those pro-active steps from the outset then that can quite often help in the long run.
What are the new rules that influencers now need to abide by?
Using influencers is often a key part of marketing in the fashion industry whether designer or retailer side. There are a number of rules that need to be considered including from the Advertising Standards Authority (ASA) and the Competition and Markets Authority (CMA) which, rather unhelpfully, take a slightly different approach. Essentially influencer/brands must disclose where social media content/posts concern paid for content, free products, services and free tickets, as well as commercial sponsorships and previous commercial relationships and engagements, or any marketing arrangements.
Recent guidance states that these arrangements should be discloses by using hashtags such as like #AdvertisementPromo, #AdvertisementFeature or #AD.
This is something that shouldn’t be taken lightly as the CMA recently investigated a number of top celebrities and influencers practices. Unfortunately, there is currently still often confusion from brands and influencers about how they should implement the rules. This uncertainty is partly due to the different rules and guidelines and also the global reach of social media platforms.