It has been written by Anjali Baskar, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. It has been edited by Ruchika Mohapatra (Associate, LawSikho).

It has been published by Rachit Garg.

Introduction

Trade or brand names are generally confused with trademarks, whereas they differ from a legal standpoint. A person may name their brand or company differently from the mark they register officially. Another term that has been colluded with these two is style name, which is how consumers can differentiate between their products within the same collection having different patterns, cuts and washes. Style names like “Birkin” (by Louis Vuitton) and “Speedy” (by Hermès) are increasingly being used by fashion brands as part of their social media strategy, creating campaigns with hashtags bearing these names. They usually are names of men, women and geographical indications. 

The fast fashion world with retailers like H&M and Zara has been criticized for its tendency to quickly copy high fashion pieces, while the many lawsuits being filed against them for copyright, trademark and design infringement are in vain, because US law does not prohibit brands from copying each other. This debate, however, often overlooks the fact that brand and style names are also being slightly altered and sold as the real brand name. Luxury or designer brands also are greatly appreciated in the fashion industry because the name of the creator is attached to it, so using their name/goodwill or the established brand name without their authorization is a major problem happening all over the globe. Currently, India does recognize copyright, trademark, patent (for its functional aspects, which has been disputed) and design protection for clothes and accessories. Interestingly, the US does not grant copyright protection to fashion apparel, because they believe it does not include any artistic expression.

Is Style Name a Trademark?

Sections 27 and 29 of the Trademarks Act, 1999 can be used to sue for trademark infringement for registered and unregistered trademarks, but this only includes brand and not style names. Sections 2(zb), 11, 13, 14 make no mention of style names being included or excluded as a trademark, so we can assume the present Indian legal position to not consider style names as a trademark. A landmark case in Australia held that most style names cannot be entitled to trademark protection, and thus even if other companies use the exact same name for their products, it would not be considered an infringing use. 

Swimwear brand Triangl released their bikini collection with the style name “Delphine”, which Pinnacle had already trademarked. Pinnacle contended that style names are sub-brands, and sub-brands are considered as marks, and thus style names should be protected, which the Court disagreed with. Pinnacle explained that a brand hierarchy paradigm usually consists of several brands within the company, like a head brand, family brand, individual brand and a modifier. Triangl did acknowledge that they used the word “Delphine” for their bikini line with a different style than their other ones, but that it was simply used to distinguish product lines between the same company and not distinguishing their goods from another person’s company as it did not indicate commercial origin. Thus, they claimed the word was not used as a mark, but simply a designation. The Court agreed with this, because the word “Delphine” did not use a different font size from the names of the colors and floral patterns. The Court stated that the word DELPHINE was not used without a more prominent display of TRIANGL. “Delphine” products had different names and were part of a wider range of thirty-five styles, which also possessed different titles, as seen on their website under the “View All” tab. Thus, the Court clarified that the brand name TRIANGL was used as a mark to identify the origin or source of the bikini. Therefore, the Court laid down the rule that style names are not to be protected unless they are specifically used in the context of a trademark.

When it comes to who exactly files these cases, it is mostly smaller or individual trademark owners and not competitors, who might not be in the business of selling clothes or bags, because they want to scour the market looking for infringers, to file suits and collect damages in case someone uses their style name. In case the style name is owned by a smaller chain of a big brand, they will sue other chains in order to get the company’s attention, even if they lose this case. In Europe, trademark infringement suits do not only require the condition that the defendant’s mark is identical to that of the complainant. They also want evidence that using this mark would cause consumer confusion, such that the mark would be conflated with that of the established brand. The problem is that style names have already been registered as trademarks, which leads to disputes regarding the same in other countries. In Germany, courts have conflicting decisions, wherein some say style name falls under the ambit of a (secondary) mark (in Hamburg and Frankfurt), whereas some consider it to be a mere article designation, so the position is far from settled. The judgments in favor of recognizing style names were generally observed to be older decisions from the German Federal Court of Justice. The Appellate Court of Hamburg ruled that “USHA”, which is also a female first name cannot be considered a primary trademark, as it was not descriptive, but since it indicates origin, it can be considered a secondary mark, also agreed upon by the appellate court in Frankfurt. The District Court of Hamburg and the first and appellate courts of Cologne opined that names like “USHA” and “MARLO” would be identifiable by the customer as belonging to a brand’s product line, but they felt that even if the name was functional and had an indication of origin, they would not be able to protect it as a mark. Interestingly, even in India, hashtags or brand taglines are more likely to be trademarked as they are distinctive and established, like Nike’s #makeitcount being registered in the USA. 

Evolution of style names into style codes like Levi’s “501” have become successful brands, so it makes sense to trademark them only after extensive use by a well-established company, because worldwide trademarking is a highly costly process. As mentioned earlier, the Federal Courts in Germany took a lenient approach to consider a style name as a trademark and even laid down some tips which help companies increase their chances of getting a style name trademarked. They have stated that mere first names or common first names are just model designations and cannot always act as (unregistered) trademarks, unless it is directly associated with the product, example: a name on the button of a shirt or a leather piece fastened on the waistband. Using a first name doesn’t have to mean it is a style name; it could be even a normal brand name as well. It should be prominently seen on the apparel such that customers can spot it and visualize which brand it is associated with. Some also argue that style names are more likely to be trademarked if they are placed on a hangtag, where information about its use and proper care are highlighted. 

The Courts also looked at whether a style name was being used in a catalog or online and their “eye-catching emphasis” while advertising the brand as a factor in deciding whether they should be trademarked. Even when it comes to advertising, designations like the cost, size, apparel description and delivery technique, details of the advertising campaign, like the layout of the ad and the relationship between the style mark to the brand of the company and all other qualitative factors should be taken care of, in order to be trademarked successfully. 

Trademark Infringement for Brand Names (and Their Creators’)

Two COVID-19 face mask-manufacturing companies based in Tamilnadu, India used American corporation Tommy Hilfiger’s brand name as well as their logo and sold it on e-commerce sites like IndiaMart. The Delhi High Court granted an injunction in favour of Tommy Hilfiger. This is also evidence that Indian courts explicitly recognize trademark protection for brand names, besides their inclusion within the Trademarks Act. A personal name is also considered a proper mark, but it is vital to remember that all personal names cannot be considered brand names or style names. In the US, the company making knockoffs is allowed to use the original designer’s name in their advertisement to increase sales, which leads to a lot of brands losing out on protection and should not be followed. Christian Louboutin, one of the world’s most renowned fashion designers in the world has trademarked his name such that it is not used without authorisation on a brand by a company he is not legally associated with.

Conclusion

We can understand from the courts’ views in Australia and Germany that though there are some general factors they look for while deciding whether a style name can act as a mark, like prominence of the brand and prolonged use, the scenario also depends on the facts and circumstances of each case. The general consensus is that it is not likely to be protected under intellectual property laws, and India has also been silent on its recognition. When it comes to brand name, it is recognized mostly in all parts of the world, but recognition of the creator’s name is still disputed unless it is a famous international brand. One proposed solution is for Indian courts to lay down guidelines regarding use of style names, as it is becoming prominent in the age of digital marketing. When it comes to brand names, the US should crack down more heavily on the fast fashion industry who are using names of brands as well as that of their creators and designers on their counterfeit products, thus infringing upon their trademark, goodwill and reputation established in the market. In the author’s opinion, not expanding trademark protection to style names or even designs lead to people losing out on recognition, which gives them less incentive to be creative and innovative. Obviously, if the counterfeit brands are less established than the big brands, they might not have the money to spend on litigation, so they can pursue a faster and cost-efficient alternative route to settle.

References

• Allison B Pitzer, ‘Unfashionably Late: Protecting a Designer’s Identity after a Personal Name Becomes a Valuable Trademark’ (2011) 35 S Ill U LJ 309 
• Ashley E Hofmeister, ‘Louis Vuitton Malletier v. Dooney & (and) Bourke, Inc.:
Resisting Expansion of Trademark Protection in the Fashion Industry’ (2008) 3 J Bus & Tech L 187 
• Chavie Lieber, ‘Fashion brands steal design ideas all the time. And it’s completely legal.’ (Vox, 27 April 2018) <https://www.vox.com/2018/4/27/17281022/fashion-brands-knockoffs-copyright-stolen-designs-old-navy-zara-h-and-m> accessed 16 November 2021
• David A Westernberg, ‘What’s In a Name – Establishing and Maintaining Trademark and Service Mark Rights’ (1986) 42 Bus Law 65 
• Dr Sandra Müller, ‘An Ongoing Challenge for Fashion Brands: Legal Issues with Style Names’ (The Fashion Law, 22 October 2020) <https://www.thefashionlaw.com/an-ongoing-challenge-for-fashion-brands-legal-issues-with-style-names/> accessed 15 November 2021
• Dr Sandra Müller, ‘Germany: Tough Times For Fashion Brands In Germany? A Brief Update On The Legal Issues With Style Names’ (Mondaq, 19 December 2014) <https://www.mondaq.com/germany/trademark/361754/tough-times-for-fashion-brands-in-germany-a-brief-update-on-the-legal-issues-with-style-names> accessed 16 November 2021
• Elizabeth Vulaj, ‘Will Fast Fashion Go out of Style Soon? How Couture Designers, Celebrities, and Luxury Brands Fighting Back May Change the Future Legal Landscape for Mass Affordable Retailers’ (2020) 36 Santa Clara High Tech L J 65 
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• McCarter & English, LLP, ’Fast fashion and IP regulation: will fast fashion kill the golden goose?’ (World Trademark Review, 24 May 2018) <https://www.worldtrademarkreview.com/anti-counterfeiting/fast-fashion-and-ip-regulation-will-fast-fashion-kill-golden-goose> accessed 16 November 2021
• Michelle Brownlee, ‘Safeguarding Style: What Protection Is Afforded to Visual Artists by the Copyright and Trademark Laws’ (1993) 93 Colum L Rev 1157 
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• Robin M. Nagel, ‘Tailoring Copyright to Protect Artists: Why The United States Needs More Elasticity in its Protection for Fashion Designs’ (2020) 54 U Rich L Rev 635
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• Seth DiAsio, ‘Fashion Has No Function: Diminishing the Functionality Bar to Trademark Protection in the Fashion Industry’ (2019) 38 Miss C L Rev 28 
• Tiffany din Fagel Tse, ‘Coco Way before Chanel: Protecting Independent Fashion Designers’ Intellectual Property against Fast-Fashion Retailers’ (2016) 24 Cath U J L & Tech 401 
• Tommy Hilfiger Europe B.V. v M/s Taqua Textiles & Ors, CS (COMM) 160/2020, http://delhihighcourt.nic.in/writereaddata/orderSan_Pdf/mug/2020/66504_2020.pdf
• Will Fast Fashion Go out of Style Soon? How Couture Designers, Celebrities, and Luxury Brands Fighting Back May Change the Future Legal Landscape for Mass Affordable Retailers, 36 Santa CLARA HIGH TECH. L. J. 65 (2020).