This article is written by Maksuda Monir Mimu, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Dipshi Swara (Senior Associate, LawSikho).
Table of Contents
Introduction
Do you remember the famous case of Gucci v Guess, where Gucci went against the American company Guess, just for bearing the letter “G” in their trademark and using the shape Rhombus? While such minor disputes (although turns into a huge conflict among companies) are often dealt with by trademark attorneys, there are many peculiar circumstances that the fashion industry comes up with.
Did you know there are circumstances where even large companies, with their extraordinary legal departments, fail to protect their brand against minute firms? I am talking about Apple, which failed against the Italian clothing and accessory start-up named “Steve Jobs” on the ground that the fruit “apple” (which represents the brand apple) is edible, but the letter “J” (which represents the clothing brand) is not.
It is not hidden that luxury apparel today, which is worth more than 70 billion U.S. dollars globally, has been living on their brand name, and a little crack in their monopolistic identity in the market creates huge concerns within the industry. A small familiarity in the name, logo, slogan, between brands, may result in tremendous market fall for luxury apparel.
So, what are the barriers in these intellectual property protections, and how to overcome those? The article will provide a detailed focus on the different trademark battles that ignite between the small and large fashion houses and how we can come out of those obstacles.
The difference between prêt-à-porter de lux and simple prêt-à-porter
There is hardly anyone who does not recognize Gucci, Prada, Armani, Versace, Christian Dior, and other such in-fashion clothing brands. Although most of them have evolved as Haute Coutures, i.e., high-end customized designer wears, with time they came up with affordable, high-quality prêt-à-porter or Ready-to-Wear collections, produced in standardized sizes in the factories. Although not mass-produced and known as the image and label boosters for high-end designers, these luxury pre-tailored apparels catch the attention of fashion lovers, who appreciate high-quality designer wear at an affordable price. The prêt-à-porter de lux collections are showcased twice a year in February and September, as the Autumn/Winter collections and Spring/Summer collections. The fashion shows take place a year prior to the release of the stock and are exhibited internationally.
As an alternative, there are simple ready-to-wear collections by regular designers which are mostly sold through multi-brand boutiques. Such products are lower-priced everyday wear and do not necessarily associate with the name of the designer. The quality here does not play a major role, rather the affordability to the mass population does.
Why are fashion industries keen to trademark their brand?
The rising hunger of the fashion inns to brand their businesses may be blamed on the fourth industrial revolution, which exposed the industry at large to Artificial Intelligence (AI). Homogenized production and network communication through AIs have taken the sector to a different level, with the inclusion of 2D and 3D designing tools, smart merchandising options, customized software to pre-collect and study new apparel designs and many more. Such evolution in the fashion industry is not only limited to designers but also has a greater impact on producers, developers, and marketing professionals of the industry. That being said, fashion houses today have reached a new dynamic. However, with high evolution comes higher opportunity cost, which the industry needs to offset through branding and marketing.
There has been a rising concern that the designs of famous designers are frequently copied by other smaller designers, while at the same time the production houses face difficulty to hold on to their name due to brand faking. This issue remains ignited due to the fact that it is easier to copy and produce textiles compared to many technical products such as machinery or automobiles. Furthermore, those who copy the designs are greatly influenced due to the high mark-up attached to the clothing production as well as the goodwill and recognition of the design is an added bonus.
Therefore, the luxury fashion houses often find themselves in dispute to protect their trademarks and copyrights, and often find themselves in a position where saving their brand identity becomes a challenge.
On the other hand, the regular clothing industry faces higher objections and refusals while trademark registration, due to the higher barrier set by the luxury apparel around them, and any slightest similarity to a well-known or prior brand name drag them into a legal battle with the powerful firms, with their massive legal force. This acts as a barrier to entry and uncertainty for smaller firms. Let us now discuss how start-ups and small fashion houses can avoid such disputes.
How can the simple ready-made clothing industry protect itself from disputes with large firms?
Prior to starting a clothing line, the firm may be advised to conduct a preliminary search of any prior mark which might contradict the name of the company in the long run. If such a conscious step is taken by a start-up or an existing business that intends to grow in the ready-made clothing sector, then it may be able to avoid any future disputes, which might even compel them to shut down their business.
Careful considerations must be made prior to the inclusion of any descriptive words in the name, logo, or other trademark-worthy aspects of the business. Since a descriptive mark may lead to higher objections and in some cases may even lead to refusal. Instead, the business should opt for fanciful words or phrases which are arbitrary, to be able to successfully register the mark and use it without dispute. Furthermore, absolute grounds, such as the inclusion of geographical names, misleading characters, or even inclusion of any deceptive component should be avoided.
In case the trademark, while registration, is met with any provisional refusal on relative grounds, it is recommended that the pros and cons of further claiming the rights on the mark should be assessed. This may save time and effort if the business hires a specialist in the field, who may be able to advise on the chances of overcoming the refusal and gaining legal protection.
How can luxury brands avoid brand exploitation?
The well-known brands, as well as the fast-growing companies, should consider having their in-house counsel, who would regularly keep track of any counterfeiting as well as registration of similar marks to theirs. This will reduce the chances of the company losing the market since the matter shall be resolved at an earlier stage, instead of waiting for an impact made by the deceiving firm to take an action.
An issue arises when well-known brands start their clothing line without a prior search of the mark’s availability in the relevant class of the market. An example can be the case of Bentley Motors, who are forced to destroy their clothing stock, since a declining business trading since 1962, has been using the name “Bentley Clothing”. Therefore, even if a successful business would want to join the fashion industry, they may be contradicted by any prior mark.
Another concept of branding which has rigorously evolved in this era is cloth marking. The well-known brands may mark their clothes with a computerized marking machine, stitching or printing the brand logo in the clothes. Moreover, there are many famous brands who print their logo in a ginormous size in their t-shirts or other clothing, which trends as fashion wears.
How to overcome trademark battles?
Following MAC Douglas, perfumes, cosmetics, and accessories chain, when the Ukraine PTO opposed the trademark of Douglas which trades goods mainly made of leather and imitation leather, Ukraine would have refused to accept the letter of consent for using the mark from MAC Douglas due to their internal policies. Therefore, along with the letter of consent the trademark attorney provided strong arguments in relation to the different types of products the two companies produce and any other remarkable difference between the trading of the companies.
If an attorney was to argue from the prior trademark holder’s end, he would have to focus on the argument of whether there remains any consumer confusion between the brands, and whether the usage of a similar mark would wither the reputation of the brand and affect its market. The fact that the opposition company intends to exploit the market of the prior mark holder by using such a mark.
On the other hand, when it comes to arguing for the company who is opposed from using the mark, the attorney needs to focus on actual facts, and whether there was, in reality, any chances of a customer mixing between the two products, the argument may be supported by the difference in the type of product supplied, the difference in quality, pricing, etc. It may be argued that the customer, who is used to high-class fashion and holds high loyalty to the other brand, is unlikely to be confused between the two products.
Trademark practice of clothing industry in India
Although brands like Lacoste, Marks & Spencer, Zara, Promod, Benetton, and Levi’s have immensely grown in the Indian market, garage stitching cannot be seen as holding the pace of branding anyway. Although in recent times, many small boutique owners or small tailor shops are keeping a tab of their brand name, this may be a negligible growth in branding by these household tailors and boutiques.
One of the main reasons for such reluctance in having a recognized brand name may be due to the customers being keener on buying from foreign fashion houses. This makes them vulnerable against the shark industries, spreading their brand recognition even before entering the market. Therefore, trademark seems like a remote concept for such businesses.
Conclusion
To conclude, fashion is a creative industry, where 1000s of small and large designers’ creations are exhibited. In this vast market, it is highly unlikely that the same idea would not pop up in the production of different designers. It may be advised to the brand owners to assess the cost of dispute against a minor firm because in many circumstances high fashion brands are seen to invest more in trademark protection than the cost of their market exploitation by small fashion houses. Although, it may be argued that such infringers of rights should be tackled from the seed stage, to ensure no harm is caused to the brand.
On the other hand, when it comes to everyday wear fashion houses, a similar analysis is advisable, where they are to consider whether the exploitation of their brand name could affect their future growth and whether they would be entering the market which the larger brand has been serving with a similar brand name. They also need to consider whether the large firms are to intervene in their market.
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