Fashion enthusiast or not, has it ever occurred to you that law plays a significant role in the fashion industry? After all, law dictates whether Louboutin’s famous red sole is worth protecting or may be copied by other designers. Similarly, law dictates whether a new H&M bag infringes Gucci’s intellectual property rights or not. Basically, law decides which products are allowed to appear on the market. Already interested? Keep reading.

Welcome to IP of the fashion world

The fashion industry is a battlefield. Competition is high – everyone wants to leave their footprint by presenting something different, trendy and remarkable. While fighting the battle, designers have a “new” frenemy by their side – IP law. On the one hand, IP law helps to protect designs and trademarks, and counterfeiting of products can result in serious repercussions. But on the other hand, IP law sometimes refuses protection when “designs” or “trademarks” are not new or distinctive enough, even if they are otherwise recognised by (almost) all fashionably aware men and women. Two parallel judgements of the General Court in Louis Vuitton (“LV“) cases (Case T-359/12 and T-360/12) are clear examples of this. In both cases, the General Court concluded that LV’s chequerboard pattern in alternating colours of light and dark grey, or brown and beige, is not distinctive. According to the General Court, this pattern does not differ from the traditional form of the chequerboard pattern, and, moreover, it is commonly used for the goods at issue (eg trunks, travelling bags, handbags, etc).

Before going further, the options IP law provides designers to protect their products in the European Union (“EU”), should be clarified. Firstly, designers may protect their creative ideas as designs which cover “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”.1 Designers may choose between registered Community design and unregistered Community design, which differ in scope of protection and duration. Secondly, well-known designers’ names such as LV, Chanel, Gap, are protected as trademarks. Besides the name, distinctive shapes can also be protected as trademarks. However, names and shapes, for which trademark protection is sought, need to have a distinctive character: inter alia, words used to describe the product or shapes resulting exclusively from the nature of the products themselves will not be awarded protection under IP law.2

A recent and well-known case in Europe and the United States is undoubtedly the so called “red-sole shoe” case, featured by Christian Louboutin. You may not be a fan of, and may not be able to afford Louboutin shoes, but the red-sole shoe most certainly gives rise to an association to this famous shoe designer. Long story short: Louboutin sued another famous designer, Yves Saint Laurent (“YSL“), in the US for infringing his rights (namely, YSL presented “monochrome” shoes with the entire shoe in the same colour, also in red). The main question was whether a single colour may be protected as a trademark in the fashion industry. Louboutin succeeded before the Court of Appeal, however, its trademark is limited to use where the red sole contrasts with the colour of the remainder of the shoe. (Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., No. 11-3303-cv (2d Cir. 2012)).

Similar matters were heard in the Netherlands and Switzerland. The Dutch case is currently before the Court of Justice of the European Union (“CJEU“) for a preliminary ruling (Case C-163/16). Unlike the US courts, which focused on whether a colour can be protected as a trademark, the Dutch court is assessing whether a “shape”4 is restricted to three-dimensional characteristics of the product, or whether it also includes other product properties, such as colour. However, this question was not the crux of the Louboutin case before the Swiss court, which simply concluded that the famous red sole, in combination with other elements, is not distinctive enough in the eyes of somewhat fashion-conscious women of any age. It will be interesting to see the outcome of the CJEU judgement.

Can the fashion industry take a joke?

We all know that counterfeiting of famous products is not allowed, however, the situation is not as black and white when it comes to parodying famous brands (and/or their products). US courts explained that a parody is “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner” and “a parody must convey two simultaneous – and contradictory – messages: that it is original, but also that it is not the original and is instead a parody“. For the owner of the protected trademark it is difficult to succeed in parody cases since a parody is protected as fair use under US law.

However, even if it is difficult to convince the court not to apply the parody exception, it seems that some designers cannot take a joke. In one of the most recent “parody cases” before the US courts, LV lost a battle against a company which sells tote bags with the text “My Other Bag …” printed on the one side and drawings meant to invoke iconic handbags by luxury designers, also LV, on the other. (Louis Vuitton Malletier, S.A. v. My Other Bag , Inc., No. 1:2014cv03419 – Document 119 (S.D.N.Y. 2016)) While the court concluded that these bags are an obvious joke/parody and do not infringe or dilute LV’s trademark, LV did not agree and has filed an appeal. It is worth mentioning that LV is not a stranger to “parody cases”; the company also lost a furrier dispute against Haute Diggity Dog, a producer of small imitations of handbags for dogs labelled “Chewy Vuiton”. (Louis Vuitton Malletier S.A. v. haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007)) Another case from the animal world concerns pet perfumes called “Timmy Holedigger” and, as you might have guessed, this was not part of the famous Tommy Hilfiger brand which also did not succeed with its lawsuit. (Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002))

While the parody exception is well established in US courts, European courts have not yet adopted such approach. In one of its most recent decisions (Case T-265/13) referring to the parody of the well-known Ralph Lauren polo player, the General Court decided that trademark rights of the Polo/Lauren Company were infringed, since the use of the applied trademark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of his trademark, however, it did not even consider whether such an exception could be applied.

However, it seems that the EU is starting to understand the humour of parody, and may-be products such as Jimmy Chew and Sniffany & Co. will be found in a store near you soon. The recent Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, provides that “use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Furthermore, this Regulation should be applied in a way that ensures full respect for fundamental rights and freedoms and in particular the freedom of expression“, meaning doors for the parody exception might have opened. Let’s see what future case law will bring.

Are your favorite fashion pieces endangered?

It appears as if the battle in the fashion world is heating up, and designers are using all available means to protect their precious products. However, leave it to legal authorities to decide whether “Bucci” infringes Gucci, or whether Forever 21 copies H&M’s “Beach Please” tote bag. In the meantime, you can count your red soles and take stock of your LV travel bags; but don’t take it all too seriously!

While fighting the battle, designers have a “new” frenemy by their side – IP law.