From Vogue to the Court Room – High IP Stakes in High Fashion

By Beth Brown, Marketing Executive

Fashion is a cut throat business; as Heidi Klum says “One day you’re in and the next day you’re out”. The stakes are raised when matters of fashion are taken away from the catwalk and brought into the world of IP. With huge brands and huge amounts of money up for consideration, the world of fashion has seen its fair share of IP disputes.

In 2017 Tommy Hilfiger (TH) filed an application for their logo (the Tommy Hilfiger Flag) to be registered for copyright protection in the US. The application failed as the work was not deemed to have fulfilled the requirements for the work to be sufficiently original. Several factors played a role in the court’s decision, they highlighted that it is prohibited to copyright certain shapes (i.e. common shapes) and that they did not consider the use of shapes in this logo to be sufficient for copyright protection. TH also argued that their logo had been made from a combination of three flags from the nautical flag alphabet, however the court found that the use of these flag designs with, what they considered to be, such trivial changes did not give TH the right level of creative authorship. This case highlights that, while the test for originally is not considered to be setting a high bar, the requirement is very much there and will be considered by the court.

Not everyone wants to look like Kim Kardashian but for those that do fashion retailer Missguided thought that they had found a perfect marketing technique. From tagging Kim in their photos, to making replicas of her outfits to sell online, the company were using Kim’s name to sell their clothes and in doing so, were also implying that Kim was working with the company. The flaw in their plan was that Kim was not happy about this situation and so brought a lawsuit. The court decided in her favour, awarding her $2.7 million in damages and permanently banning Missguided from using Kim’s trademarks to sell their products.

Louboutin and their signature red soles found themselves in an ongoing saga about the validity of the red sole trade mark. This case was brought in The Netherlands; Louboutin brought infringement proceedings when another company, Van Haren, released shoes with a red sole. It was agreed in a previous stage of this case that, should the red sole TM be valid, Van Haren would be liable. Hence began the argument of whether the Louboutin red soles were in possession of trade mark protection. Van Haren tried to argue that rules which prohibit the registration of certain shapes prohibited the red sole from being protectable. This argument failed with the court saying that the mark did not consist “exclusively of a shape”- the mark was valid and had been infringed.

In May 2018 another designer found themselves taking to the courts to protect a trademark. Burberry, who are known for their check design (which is a trademark), brought proceedings against the large American retailer Target who were marketing a number of products, including scarves, bags, luggage and bottles with a very similar pattern to the signature Burberry check. Burberry began using the mark in the early 1920s and has registered trademarks for the check pattern in red, camel, black, white and with no specific colour (potentially giving them the freedom to prevent use of further colours and colour combinations in the future). Late in 2018 the case was settled and both parties agreed to dismiss the case.