Archives: IP protection

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Legal Workshops at Central Saint Martins

Covington announced its support of the MA Fashion course at Central Saint Martins (CSM) towards the end of last year.  Since then, we have provided a number of practical workshops to the students enrolled in the course.   Our aim is to equip aspiring designers with important legal and commercial knowledge as they near graduation. The … Continue Reading

German Court sends online sales bans to ECJ

On 25 April, the German Higher Regional Court in Frankfurt filed a request for a preliminary ruling with the European Court of Justice (“ECJ”) in a case that turns on the ability of branded goods manufacturers to protect the reputation of their brands by controlling online trade. Coty is suing one of its authorised distributors, … Continue Reading

CJEU gives guidance on 3D shape marks

On September 16, 2015, the Court of Justice of the European Union (“CJEU”) responded to three preliminary questions referred to it last year from the High Court of England and Wales. The CJEU gave guidance on the registrability or otherwise of 3-dimensional shapes as trade marks. Although the facts concerned the bitterly fought dispute concerning … Continue Reading

Guess Wins Latest Trademark Infringement Dispute Against Gucci in the French Courts

The Court of Paris has ruled in favour of Guess in the latest lawsuit brought by Gucci for alleged infringement of some of its trademarks.  Gucci claimed that Guess was infringing its rights by selling wallets, belts, and other products whose designs copied or mimicked its own. On 30 January 2015, the Court of Paris … Continue Reading

ISPs ordered to block websites infringing trademarks

The English High Court ordered recently ordered several internet service providers (ISPs) to block access by their subscribers to certain websites that advertised and sold goods infringing certain registered trademarks. The claimants (owners of a large number of UK-registered trademarks for Cartier, Montblanc, IWC and other luxury brands) sought orders requiring the ISPs to block, … Continue Reading

Ralph Lauren succeeds in opposing “parody trademark” before EU Court

With Contributions From Ramon Luque The General Court (EU) recently delivered a judgment which could offer brand owners greater protection against adaptations and parodies of their brands.  The case is  The Polo/Lauren Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). In late 2009, FreshSide Ltd filed a Community trade … Continue Reading

Michael Kors, Costco settle “Bait and Switch” Mother’s Day ad dispute; raises question of best brand policing strategy

With Contributions From Matthew Verdin Michael Kors, LLC and Costco Wholesale Corp. recently settled a trademark infringement lawsuit that the famous fashion designer company filed against the warehouse giant over a nationwide “bait and switch” ad campaign for Mother’s Day.  The lawsuit raises the question of how brand owners can best police their trademarks for … Continue Reading

Belgian court declares Louboutin trademark invalid in three European countries

Christian Louboutin SA’s registered trademark on red-soled shoes is one of the most litigated intellectual property rights in the fashion industry in recent years.  In a decision on the validity of the trademark in March, the Brussels District Court held against Louboutin and declared the trademark void in Belgium, the Netherlands and Luxembourg. Louboutin had … Continue Reading

Advocate General clarifies “individual character” requirement for unregistered community design rights

A recent opinion issued by Advocate General Melchior Wathelet could strengthen the IP rights of fashion designers in Europe.  In a long-running infringement case by Karen Millen Fashions against Dunnes, a major retail chain in Ireland, the Advocate General’s opinion issued to the Court of Justice of the European Union (CJEU) sides with designer Karen … Continue Reading

Blomqvist v. Rolex: EU Court of Justice says a foreign online sale is enough to stop counterfeits at the EU border; No need to show further evidence of ‘targeting’ EU consumers

A fake ‘Rolex’ sold from a website in China is delivered to Denmark  The case began in January 2010 when Danish resident Mr. Blomqvist purchased a ‘Rolex’ watch from a Chinese online shopping site.  The order and payment were made through an English version of the website.  The seller dispatched the watch from Hong Kong.  … Continue Reading

The protection of brands in Europe using a Community Registered Design – Trunki v Kiddee

“Copycat” branding — where a lesser known brand mimics the appearance or design of a more successful or well-known brand — is becoming more common. Copycat products will often undercut the better known brand on pricing, in order to attempt to access a piece of the market captured by that brand. Designers looking to use … Continue Reading

Tobacco plain packaging laws: public health as a basis for restricting branding rights

Should a government be allowed to take away branding rights for a product that is widely acknowledged to be unhealthy?  That’s exactly what happened in Australia—in December 2012, Australia’s controversial “plain packaging” tobacco law came into force with the enactment of the Tobacco Plain Packaging Act 2011.  The Act requires cigarette companies to manufacture and … Continue Reading

In China, it’s use it or lose it or else, get to be well-known: lessons to draw from Burberry’s battle to defend its signature tartan

A brand iconic for its tartan-lined raincoats faces stormy weather in China (at least in a metaphoric sense).  Burberry — like other brands with a strong presence in the People’s Republic— confronts the challenge of protecting its trademark under Chinese law, and there are lessons to absorb from its experience.  Burberry is currently appealing a … Continue Reading

Is counterfeit enforcement in New York limited to the supply side?

In April, CovBrands reported that New York City Councilwoman Margaret Chin made a renewed push to pass a bill that would criminalize the purchase of counterfeit goods.  If passed, shoppers caught purchasing counterfeit goods could be fined up to US$1,000 or face a year in prison, provided that the shopper “knew or should have known” … Continue Reading

Spanx v. Yummie Tummie design patent lawsuit — the battle lines are drawn

Launched by Sara Blakely in 2000, Spanx is a well-established women’s shapewear brand with worldwide brand recognition.  Since Spanx’s launch, numerous competitors have flooded the market.  Among them is Yummie Tummie, which was founded by reality TV personality Heather Thomson in 2008.  Yummie Tummie and Spanx are now embroiled in a design patent dispute in … Continue Reading

Image rights versus the First Amendment: athlete cases tee up issue for courts across the U.S.

The rights of celebrities to control the commercial use of their images has been a hot topic in both the UK and the US for some time now.  You may recall, CovBrands reported on the issue before in connection with a lawsuit by Rihanna against Topshop for selling a t-shirt bearing her image without her … Continue Reading

Terahertz time-domain spectroscopy technology — a new tool to combat counterfeiting?

Counterfeiters are constantly coming up with new and clever ways to produce high quality copies of fashion and luxury products.  Many copies can’t be distinguished from the original products without authentication features.  Brands are increasingly using RFID tags and other ways to help consumers and customs officials identify what’s real and what’s fake.  The latest … Continue Reading

UPDATE: Rihanna successfully sues Topshop for using her image on t-shirts

You may remember that, back in May, CovBrands reported that Rihanna was suing Topshop for selling a t-shirt, which bore her image, without her consent.  The judgment is in and the High Court has ruled that Topshop is liable on the grounds of passing off. However, the court did not take the opportunity to introduce … Continue Reading

The dawn of the “wearable technology” era

As news breaks around the world that Apple has applied in multiple jurisdictions for an iWatch trademark, this seems to signal the start of a new era of the “wearable technology” brand. Consumers are accustomed to high-end and luxury lifestyle brands selling wearable accessories — from perfume and sunglasses to handbags and shoes — but … Continue Reading

In Delay There Lies No Plenty — the dangers of procrastination in brand protection

If you’re a brand owner, you’re well-advised to be diligent about addressing infringement of your trademarks because delay could preclude your remedies. And, if you’re an unlicensed user of a trademark, you should consider obtaining legal advice even if your unchallenged use spanned decades as there’s no guarantee you’ll be allowed to keep using the … Continue Reading

Adidas v. Christian Faith Fellowship Church: an object lesson in the pitfalls of aggressive trademark enforcement

A David and Goliath matchup currently before the United States Trademark Trial and Appeals Board shows that aggressive, adversarial trademark enforcement may not always be the best approach. The dispute pits global sportswear powerhouse Adidas AG against the Christian Faith Fellowship Church, a small-town congregation located outside of Chicago, Illinois. Adidas applied in 2009 to … Continue Reading

“Bring your own device to work” – how to embrace the trend without risking your brand

Since Apple launched the first iPhone in 2007, the popularity of smart phones and tablets has sky-rocketed.  These devices, with their sleek design, touch screens and easy access to a myriad of entertainment options, have fast become the preferred method of communication for executives. In recent years, a growing number of companies have allowed employees … Continue Reading

Louboutin Launches New Wave of U.S. Trademark Litigation Over Red-Soled Shoes; Charles Jourdan and Alba are Louboutin’s Latest Targets

Armed with a landmark decision from the U.S. Court of Appeals for the Second Circuit, French footwear design Christian Louboutin has renewed efforts to police his U.S. trademark for red-soled women’s shoes. On Tuesday, Louboutin filed suit against Charles Jourdan Fashion Footwear in the U.S. District Court for the Southern District of New York (which … Continue Reading
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