The worlds of fashion and intellectual property (IP) often intersect. Recently, we’ve written on how clothing designer Karen Millen has used design law to deal with competitors, and how Converse has sued 31 different retailers for selling shoes that are said to infringe trade mark registrations for the appearance of the Chuck Taylor range of shoes.
Over the past few weeks, a number of fashion IP cases have made the news. One involved a product that’s very popular in South Africa, the Crocs shoe. The German retailer Lidl, which presumably wishes to sell a shoe that’s similar in appearance, applied to cancel an EU-wide Community Trade Mark (CTM) registration for the 3D shape of the Crocs shoe. Lidl claimed that the trade mark registration was invalid for non-distinctiveness, saying that the shape is common for clogs, sandals and beach shoes. Lidl, in fact, went so far as to describe the shape as one that’s been ‘known for centuries’.
Those who are involved in trade marks will know that 3D or shape trade marks are difficult to protect at the best of times. In Europe the authorities seem to set the bar higher than they do for word trade marks, in that they say that consumers are not accustomed to seeing 3D representations of goods as indicators of origin or trade marks, and that they will only do so if the shape ‘differs significantly from the norm’ . The authorities (in this case the Cancellation Division) decided that the shape of the Crocs shoe does indeed differ significantly from the norm. The reports also suggest that the authorities were prepared to accept evidence that the shape has become distinctive through many years use. The authorities said this: ‘Some consumers love the shape of the Crocs shoes, some consumers hate the shape of the Crocs shoes, but what they agree on is that the shape is distinctive and that they should have a monopoly right to the shape’.
Lidl also claimed that the trade mark registration fell foul of the prohibition against registering a trade mark that consists exclusively of a shape that’s necessary to obtain a technical result. Once again the authorities dismissed this claim, finding that although some elements of the Crocs shoe may be functional, others aren’t. This means that the trade mark isn’t one that exclusively incorporates a technical solution.
The second case involved a range of footwear that’s also becoming very popular in South Africa, Havaianas. This brand is owned by a Brazilian company called Alpargatas, which has a CTM registration for what’s been described as ‘a pattern composed of two symmetrical sequences of geometrical figures in the form of an elongated S, intertwined and positioned slantwise.’ When a competitor called Too Beach brought out a look-a-like product, Alpargatas sued for trade mark infringement. Too Beach responded by applying for the cancellation of the trade mark registration. The French court that heard this matter decided that the registration was valid. It said that the pattern differs significantly from the norm. It made the point that the pattern is arbitrary. It said that the mere fact that the pattern is decorative does not mean that it doesn’t function as a trade mark. And it seemingly accepted survey evidence that showed that the Havaianas shoe is widely recognised in France.
The third case involved a trade mark that comprises stitching that’s applied to jeans. Trade marks of this sort are automatically associated with Levi Strauss, which was the pioneer with its famous arcuate back-pocket stitch trade mark. In the latest case, NYDJ v Commissioner of Trade Marks, a New Zealand court held that a trade mark application for stitching applied to jeans should be accepted because it was inherently distinctive. What makes this case interesting is the fact that the trade mark isn’t visible when the product is worn, although it is visible in the purchasing process including the try-on. That’s because the stitching – which consists of a particular criss-cross stitching pattern in red or purple – is applied to the inside of the front two pockets rather than the outside. The court accepted that the stitching serves no function other than to act as a trade mark or indicator of source.
If this product does exist in South Africa, I’ve not seen it. But as it’s seemingly very clever, it’s one that we could probably do with in these parts – it’s described as a ‘slimming jean’, apparently because it has panels sewn on the inside of the front pockets that, in the words of the judge, ‘flatten the belly and lower abdomen which make the wearer look smaller’. The fact that the front pockets have the ability to make wearers look thinner may well explain why the company chooses not to have its trade mark - the stitching - visible to the world.
These three cases – all of which went in favour of the IP owners – should encourage those in the world of fashion to use IP protection in order to maximise their profits. There are two areas of IP that lend themselves particularly well to the world of fashion, namely trade marks and registered designs. The three cases do suggest that most companies favour trade mark protection. Whether this is down to ignorance of design law or concerns that design registrations will be invalid for lack of novelty isn’t clear.