By: Melinda Upton and Josephine Gardiner

When e-commerce initially established itself in the Australian marketplace, industry experts predicted the imminent death of brick and mortar – physical retail stores.
Continue Reading CLICKS AND MORTAR: THE EVOLVING RELATIONSHIP BETWEEN ONLINE AND IN-STORE SHOPPING IN THE AUSTRALIAN MARKET

By Josephine Gardiner (Sydney)

Australia’s best-known horse racing event, the Melbourne Cup is on today. The race is known to stop the nation… but that’s not all they’re stopping for! Floral frocks, feathers and fascinators – the event is a real life fashion show with its own catwalk known as ‘Fashions on the Field’. The dress etiquette for the event requires ladies to wear a headpiece, usually a one-off piece of millinery. However, such ‘one-off’ pieces are becoming harder to find as millinery falls victim to copying.
Continue Reading WHEN IT COMES TO INTELLECTUAL PROPERTY, MILLINERS SHOULD TAKE OFF THEIR FASCINATORS AND PUT ON THEIR THINKING CAPS!

By Sara Balice and Elena Varese (Milan)

A number of fashion players base their business on the very thin line running between tribute and misappropriation.  In this context, it is difficult to understand how quotations of well-known fashion trademarks made with humorous intent should be treated, especially as European Union legislation has not provided any guidance on the parody fair use defence — at least, up to now.
Continue Reading A NEW PROVISION FOR TRADEMARK PARODY: IS IT A JOKE?

By Farid Bouguettaya and Karine Disdier-Mikus (Paris)

Have you ever compared products or services when contemplating a purchase? Companies, whenever they can, also strive to mark themselves out from their competitors to gain a competitive advantage and new clients.  In an internal market where competition is highly encouraged by the European Union, comparative advertising has been strongly promoted and praised.
Continue Reading THE DIFFICULT BALANCE BETWEEN COMPARATIVE ADVERTISING AND TRADEMARK PROTECTION

By Ulrike Gruebler (Hamburg) and Gaspard Debiesse (Paris)

To stay ahead of the competition, players of the fashion industry have a permanent need to renew their communication strategies, including the use of new technologies and media.  “Sensory marketing”, the art of playing on the various senses of the customers (sound, smell, taste, touch, in addition, or in lieu of, vision), has lately become an important trend.  Retailers like Abercrombie & Fitch use their customers’ senses as a communication tool:  the same fragrance is diffused in every stores worldwide, so customers instantly associate this scent to the products sold inside the stores.
Continue Reading DELETION OF THE “GRAPHIC REPRESENTATION” REQUIREMENT FOR TRADEMARKS: OPENING PANDORA’S BOX?

By Ruth Hoy and Emily Leach (London)

Designing under your own name is a natural, even intuitive choice for many designers and is an established practice in the fashion industry.  To protect their brand, designers often register their own name as a trade mark.  Associating your own name with your designs has many advantages, but it is also important to understand that your trade mark, incorporating your name, is also a commercial asset.  Losing the rights to that asset (through corporate restructuring, insolvency, or assignment) can be costly to a designer.
Continue Reading WHOSE NAME IS IT ANYWAY?

By Justyna Wilczynska-Baraniak and Aleksandra Baczykowska (Warsaw)

In the fashion industry, tags and labels are a key element of the end product.  Therefore, the change of Regulation 2015/2424 and Directive 2008/95/EC of 16 December 2015


Continue Reading THE RIGHT OF A TRADEMARK OWNER TO ACT AGAINST PREPARATORY ACTS OF INFRINGEMENT

By Leonie Kroon and Anne Voerman (Amsterdam)

When taking action against illegal fake goods, you are no longer limited to goods destined for the EU. The new EU trademark rules introduce the right to take action against all goods at EU borders even when they are in transit (Article 9(4) of Regulation (EU) 2015/2424, and article 10(4) of Directive (EU) 2015/2436). Counterfeit and to some extent lookalike goods are infringing unless proven otherwise by their holder. This means a reverse of the high burden of proof that trademark owners previously faced under the ECJ’s Philips and Nokia case law.  It is up to the holder of the goods to prove that the trademark owner cannot rely on trademark protection in the country of final destination.
Continue Reading A VERY IMPORTANT DEVELOPMENT FOR BRAND PROTECTION TEAMS IN THE FIGHT AGAINST COUNTERFEIT – GRAB THE MOMENTUM