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Talking Business: When imitation becomes an illegal form of flattery

The biggest brands are instantly recognisable for their signature styles but protecting them legally can be tricky

In theory, designers have a wide range of intellectual property (IP) rights they could rely upon against potential copycats: copyright in sketches, design documents and in the 3D articles themselves; registered and unregistered design rights; and trademarks and passing off in relation to logos, brand names and other badges of origin.

However, despite the industry’s undeniable culture of “borrowing” ideas, the courts are not bursting with copyright or design right infringement claims brought by disgruntled designers. This is perhaps unsurprising, given the transient nature of each season’s trends: bringing a time-consuming and expensive legal claim over a design which is itself “over” is not the most sensible investment. However, fashion houses can become remarkably litigious when fellow designers or the high street fly too close to the iconic design features or logos that make up their unique aesthetic.

High-profile disputes include Christian Louboutin’s much-publicised battles over his red soles. His biggest spat was in 2011, when he made a claim of trademark infringement in the US against fellow French couturier Yves Saint Laurent, who was also selling shoes with red soles. After an initial stumble for Louboutin at first instance, the US appeal court decided that his famous red soles were valid and enforceable as a trademark, as long as the rest of the shoe in question was a different colour.

A similar claim by Louboutin in the Netherlands against Dutch shoe brand Van Haren has, just this week resulted in a new question being referred to Europe’s highest court – the Court of Justice of the European Union. In 2013, Louboutin won a preliminary injunction against Van Haren, which was selling blue and black women’s shoes with red soles. Van Haren, however, appealed and it seems that we, along with the designer himself, must now wait for the CJEU to provide guidance on the extent of Louboutin’s trade mark rights in Europe.

From the Polo Ralph Lauren pony to Chanel’s interlocking “C”s, logos on luxury clothing and accessories function as guarantees of the exclusive origin of such items. They are therefore incorporated extensively by high-end designers into their creations in an attempt to combat copycats.

British label Jack Wills was successful in its 2014 claim against House of Fraser for trademark infringement and passing off in respect of its “pheasant with top hat and cane” logo. House of Fraser released a clothing line bearing a logo of a pigeon wearing a top hat and bow tie. The court found that Jack Wills’ logo was “inherently distinctive” and that HoF’s use of such a conceptually similar mark amounted to a misrepresentation that its line was somehow linked to Jack Wills and that this was likely to cause confusion on the part of consumers.

As Coco Chanel once lamented, “being copied is the ransom of success”. In an industry that, by definition, works on transient trends and high turnover of designs, the most successful designers seek to balance creativity with the need to build a brand that is instantly recognisable and, therefore, infinitely more protectable.

Adopting a robust attitude to those who would encroach upon the signature features of your brand is a prudent strategy that is likely to yield a stronger brand identity and greater profits in the future.

Elaine O’Hare is senior associate at law firm Stevens & Bolton

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