Iain Connor is a partner specialising in intellectual property at law firm Pinsent Masons.
Gucci’s €55m (£41m) trademark claim against Guess, which came to a conclusion last month after six years, is yet another example of why fashion designers must become increasingly cognisant of the fine line that can result in trademark infringement. In this case the Court of Paris dismissed Gucci’s claim that Guess infringed its copyright and invalidated three of Gucci’s ‘G’ community and international trademarks.
It follows a number of other disputes among high-profile fashion brands, including Burberry against a Korean underwear company, Gap against Levi’s over a faded effect on jeans and Chanel over smartphone cases.
Fashion brands are increasingly fierce about trademarking, as more and more market disrupters are emerging. These may be existing companies or new ones, and they go in with their hobnail boots and steal a march on the competition before it knows what has hit it.
As a retailer or brand, you must be ready to defend your patch.
Thomas Pink was ready when Victoria’s Secret hit the UK streets with its Pink sub-brand aimed at 15 to 22-year-olds, winning its legal dispute against the US lingerie giant over the use of the word for its stores in the UK.
On the other hand, Assos, the cycling brand established in the 1970s, wasn’t able to stop Asos.com using the name, despite the former’s long-standing reputation.
The key to survival is brand strategy. Is the brand, and any sub-brands, protected for the right products in all the key markets?
Many businesses forget that registering a trademark can be both the best sword for market disruption and a shield against it.
Designers need to use their trademarks to conquer markets. Good examples include Apple registering whole store layouts, Crocs protecting its shoes or Adidas transforming its three stripes from design feature to trademark monopoly.
The good news is, once you’ve got them, provided you use them, trademarks last forever.