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We're joined by Amanda Dominick, who's a Solicitor in the Intellectual Property and Technology Group at HopgoodGanim; Amanda thank you so much for joining us.
Thanks for the opportunity to talk on such a great topic Kate.
Well it is a great topic, we're talking today about Alannah Hill's departure from her eponymous fashion label, will this mean that Alannah Hill is prevented from using her own name commercially in the future?
That's a really good question Kate and I guess one that Alannah Hill might be pondering at the moment. It's particularly controversial in terms of the Australian fashion community, and given how well known the Alannah Hill brand has become. So what we know from media reports at the moment is that Alannah Hill the designer has announced termination of her employment with Factory X; Factory X is a retail business run by Miss Hill's business partner. The situation here is that Factory X owns the Alannah Hill trade mark registrations, so they own her word mark for Alannah Hill and also the stylised AH mark. Factory X are going to continue to operate the Alannah Hill stores across Australia, so there's no risk of the brand shutting its doors at this point. Although we obviously don't know the finer details of the contractual arrangement at this point, it appears that Alannah Hill no longer retains any rights in relation to the brand which bears her name, which is a bit of a problem for a fashion designer. So practically what this means is that unless Alannah Hill and Factory X agree otherwise, Alannah Hill won't be able to use her name as a headline brand for any future clothing designs that she puts out. Obviously she'll be able to use her name in the general sense and provisions made for good faith use of one's name in the Trade Marks Act but Alannah's really going to have to be careful to ensure she doesn't infringe Factory X's trade mark registrations in the future. I think what this highlights is a really common issue which faces the fashion industry, and in particular young designers who are starting out the question of whether or not to use your own name as a brand is a big one for designers to consider.
Yes certainly. Well last year Elsa Peretti who is a designer for Tiffany & Co wanted to terminate her licensing agreement, they have resigned now but was the situation last year similar to what we've seen with Alannah Hill?
Well the Tiffany and Elsa Peretti situation was a little bit different to the issues that are facing Alannah Hill at the moment. For those of you who don't know Elsa Peretti is an Italian jewellery designer and she has been designing for Tiffany for around 30 to 40 years, reportedly her designs amount for about 10% of Tiffany's global sales so we're talking some fairly big bucks. The difference with Tiffany's dilemma was that Elsa Peretti had retained ownership of the intellectual property in her brand, including personal ownership of her trade mark registrations. The media heat arose last year because it was reported that Peretti was looking to retire from the Tiffany's brand but Tiffany and Peretti were unable to agree on a price for Tiffany to purchase Peretti's intellectual property rights. So Tiffany was faced with a huge dilemma and a particularly costly dilemma, and if Peretti had decided to retire and terminate the agreement, and Tiffany's wasn't able to purchase Peretti's intellectual property, they would only have been able to sell any Peretti design jewellery, which includes that little heart shaped necklace for around 18 months after termination. As you said before fortunately for Tiffany's they got out of hot water by negotiating a 20 year extension to Peretti's contract.
So you've mentioned here Amanda two separate issues that arise when someone uses their own name for their designs, what are the risks involved in using real names as trade marks?
What these scenarios illustrate I think in terms of very real problems for designers is that if you chose to use your own name, and you end up in a situation where you're no longer associated with your brand, which is the case for Alannah Hill, if adequate contractual provisions aren't in place you can end up in a situation where you've got no control over the subsequent use of the brand that you started, and that's a particular issue if the brand is then used in connection with products that you might not have wanted your brand used with, and products of inferior quality. So Alannah Hill has already faced this type of issue, in December last year Factory X filed a trade mark application for word mark Alannah Hill in connection with alcoholic beverages and I can completely understand her horror at this application, she's opposed the application and the proceedings at this point are still underway. The fashion industry has given us some of the best warning stories in terms of why it might not be a good idea to use your own name as a trade mark, some examples that come to mind you've got Jimmy Choo the shoe designer he had to licence use of his own name back from the company that he originally co-founded. Then probably more well known to the Australian market we've got Peter Morrissey who was prevented from registering his full name as a trade mark and then had to buy back his company Morrissey after his trade mark applications were opposed. My personal favourite is French designer Roland Mouret, and apparently he paid an undisclosed sum to buy back his eponymous brand when he lost it during a company take over, and there's hundreds of other examples. And then there's some success stories as well, such as Tom Ford when he designed for Gucci, or Sara Burton with Alexander McQueen.
Yes certainly, well it seems like it's a difficult area for both brand owners and designers, what can they do to protect themselves?
I think there's a couple of different things that for designers and brand owners to think about. For designers I think the Alannah Hill dispute and the Tiffany and Peretti negotiations highlight two pretty important issues. Firstly the need for designers to spend some time considering branding issues at the outset, whether it – you know whether you're a small designer starting up or someone slightly further down your career, it's particularly important to really think about branding issues if you decide to use your own name as a fashion brand. Secondly the importance of a carefully drafted contract, designers who do chose to use their real names as brands really need to think about how matters should be dealt with in the event that things turn sour and they have to you know make the horrible decision to walk away. Brand owners on the other hand should really pay attention to the dilemma that Tiffany nearly faced, and make sure that they're not faced with the same situation, a carefully drafted contract and some forethought in terms of ownership of intellectual property rights if parties go each way, really does go a long way, especially when you're 30 or 40 years down the track.
Yes it certainly does. Well it's a very interesting issue, Amanda thank you so much for sharing your insights on it today.