Why do brands dominate fashion?
The essence of fashion is the construction of an image – clothing, accessories, make-up – which proclaims to the informed onlooker that the wearer is up to the minute, in with the vanguard of culture and opinion, forward and not backward looking. Of course, that majority of shoppers who buy their clothes on the high street rather than direct from the catwalk will always be a few paces behind the privileged few, actresses, models and the super-rich, whose collective choices from the leading designers determine what styles the major retailers will adopt for the coming season. It is precisely that process of selection which confers the associations and stamp of approval which make the clothing desirable. Fashion leaders’ choices from the ideas presented as haute couture, and the commentary made on them by the spectrum of fashion writers, together create the vital market for high street versions.
Imitation, inspiration and homage, then, are key to successful fashion marketing despite the tensions arising from copyright and design law and the restrictions they impose. Personal and corporate brands encapsulate and communicate the particular image and status to which the wearer aspires. As a result, branding will persuade a significant proportion of customers to buy, as much as specifics of cut, fabrics and colours. Fashion is about what – or who – the customer wants to look like, as well as what the clothes actually look like on the customer.
In the circumstances it is no surprise that fashion retailers are extremely protective of their brands, and designers constantly look for ways to maintain the distinctiveness of their creations using whatever legal rights may be available.
But the fast-moving nature of fashion can be at odds with the attention to very different kinds of detail required by intellectual property law. 2013 saw a number of high-profile disputes in Europe and the UK, illustrating the care that needs to be taken even by well-known brands to maintain their market position and rights. The advent of the new generation of global domain names, which include .clothing, suggests that 2014 may herald still more.
Celebrity v brand: Rihanna routs Topshop
Rihanna’s objection to Topshop’s sale of a T-shirt bearing a photograph of her inevitably hit the headlines as soon as the row began. The fact that the row was over a photograph of the singer, rather than the use of her name, raised much discussion as to a celebrity’s right to control the use of his or her image, under English law, but in fact that was never in issue. Rihanna was no doubt advised, correctly, that in the case of a photograph taken in public with no invasion of her privacy, she has no such rights. Nor could she prevent anyone from selling copies of that image to fans who merely wanted it as a memento of her, or of a particular performance. Instead, her claim was that by selling the T-shirt, Topshop was passing off its goods as endorsed or approved by her, when she had actually had nothing to do with it.
In order to prevent further sales, Rihanna had to establish that she had goodwill in clothing design and sales, that the T-shirt and Topshop’s presentation of it to customers did add up to a representation of her involvement, and that this would cause her damage.
The court had no difficulty in accepting that Rihanna had goodwill, both through her merchandising and endorsement business and through her specific ventures into fashion on her own behalf: designing a T-shirt for the Fashion Against Aids campaign of 2008 and entering agreements with Armani to promote a small collection, as well as most recently with River Island to design and endorse her own collection. She is regarded as a style icon by many fans. But whether or not her face on a T-shirt would on its own cause those fans to believe she had endorsed the product was less clear-cut.
There was no direct evidence that any did. Nevertheless, the fact that the image related to one of Rihanna’s video shoots, and that the T-shirt was of a markedly higher quality than many, and that Topshop had previously run a competition to win a shopping appointment with Rihanna, convinced the court that any customers would make an assumption that the T-shirt was endorsed, if not designed, by her and would therefore have been deceived in buying it. The consequent loss of control over her reputation in the fashion world was sufficient damage for the tort to have been made out, whether or not she lost any merchandise sales, or any potential customer deplored her taste in supposedly approving the T-shirt in question.
The decision illustrates that even where a celebrity with fashion associations is concerned, it is still perfectly lawful to produce and sell clothing bearing the image of a celebrity (provided that copyright issues are cleared), so long as care is taken to ensure that nothing about the promotion or sales suggests that the celebrity themselves is involved in the process. Where the celebrity has no fashion pretensions, such as most sportsmen and women or TV presenters, then normal retail channels should have nothing to fear from using their images.
Aspirant v fashion aristocrat
Established fashion brands are diligent in registering and maintaining registrations for their key marks, and particularly those logos which are actually incorporated into products, such as Louis Vuitton’s LV, Chanel’s double C and Gucci’s double-interlocking Gs:
The Gucci symbol was first registered in 1984, for goods in classes 3 (perfumes and cosmetics), 14 (jewellery), 18 (handbags) and 25 (clothing). The brand was then and is still popular in the United Kingdom, with substantial sales of a range of different goods. The precise representation of such symbols tends to evolve over time as the original version starts to appear dated, and this is no exception: in use the bottom part of the double G is now used in a slightly less closed form, but the straight horizontal bar is still present.
Despite the high profile of the brand, fashion rival Gerry Weber brought an application at the Intellectual Property Office challenging the registration for non-use over a five year period. Any mark which is not used can be removed from the register to free it up for other traders. Gerry Weber argued that the mark had not been genuinely used in the UK between either 2003-8 or 2007-12. As he was entitled to do, he then sat back and left it up to Gucci to prove the assertion wrong.
Gucci ought to have won this challenge hands down: the mark is actually incorporated in their jewellery and shoes, for example, and the hearing officer found that the slight differences from the registered version were not sufficient to disqualify use in that form from justifying maintaining the registration. Gucci did indeed file a range of evidence in their response to the application, but inexplicably failed to provide sufficient hard facts, such as invoices, actual copies of dated magazine advertisements or webpages, point of sale materials such as swing tags and shopping bags, which would conclusively demonstrate actual sales of specific goods in the UK in the relevant time period. Relying initially on copies of catalogues and total turnover figures, without establishing that these related to UK promotion and sales, they presumably expected to fill any gaps in a second round of evidence once Gerry Weber’s criticisms had been made. But Weber declined to file evidence so that Gucci were forced to apply to file a second round at the registrar’s discretion. This was refused: the hearing officer had nothing before her as to what the evidence in question was going to prove, in order to assess whether it was likely materially to affect the outcome, and therefore could not justify the exercise of discretion.
The revocation application was therefore decided solely on the basis of Gucci’s strategically limited first round of evidence – and Weber’s objection upheld except for the registration in class 3 which was allowed to remain, in a restricted form. The high level of global consumer recognition of the brand for fashion goods generally was not in itself sufficient to counter the specific allegations regarding use on particular goods ion particular dates in a particular country.
The case illustrates the importance of having expert local counsel even when contesting proceedings at the Intellectual Property Office.
Had the case been managed differently, the famous Gucci logo should never have been at risk.
Performance gear v virtual high street
In a dispute which started brewing as soon as online retailer ASOS started to achieve a significant profile, the established high performance cycle clothing specialists ASSOS sued ASOS for infringement of its registered trade mark, ASSOS, and for passing off. Despite the clear demarcation between their respective target customer bases, the two marks are simply too similar for their respective owners not to be concerned about the risks of consumer confusion. In response, ASOS counterclaimed for revocation of the ASSOS mark in respect of all products other than cycle clothing.
In its core market of sports clothing, and cycle clothing in particular, ASSOS (“best” in Greek) has a strong reputation and significant sales. Its mark has been used on all manner of specialist engineered clothing since the company launched the first Lycra cycling shorts in the late 1970s, primarily through cycle shops although also through more general outdoor activity shops. Only a few online retailers are authorised to sell ASSOS products, and although there is some intention in future to launch a line of non-sporting clothing which may retail online and in non-cycling shops, detailed plans and timings have not yet been finalised.
In contrast, ASOS (originally “As Seen On Screen”) is a purely online business and at its launch in 2000 sold either products identical to those seen on television or film, or similar but lower priced products.
Today it is a broader fashion retail business including own-brand clothes, which has at times included shorts characterised as cycling shorts.
It is unlikely that any business choosing a trade mark from scratch would have been advised to select ASOS given ASSOS’ presence in an overlapping market. But ASOS arrived at its name as an acronym of its initial trading concept, with its own reputation rapidly accruing, before it became aware of ASSOS – and was by then, understandably, reluctant to rebrand.
The case centred around the extent of genuine use of the ASSOS mark on clothing beyond the engineered racing cycle wear range, and the existence and future likelihood of consumer confusion between the brands. Although ASSOS were able to show limited sales of a limited range of casual wear (t-shirts, track suits, polo shirts, caps and jackets), their use did not come close to the full range of goods covered by their registration for “clothing; footgear; headgear”. The registration was accordingly revoked save for that restricted range.
Similarly, ASSOS’ evidence of consumer confusion failed to impress the judge who remarked that it was surprising (given how similar the marks are, and that ASOS was bidding on the other’s mark as a search term on Google) that there was not more. The passing off claim therefore also failed.
The outcome is not, however, a straightforward victory for ASOS. Whilst it is free to continue to trade under its brand, the continued existence of ASSOS and its future expansion into less cycle-specific clothing and online sales may prevent the ASOS brand from ever acquiring the absolute distinctiveness it might otherwise have had.
Ideally, a brand should be clearly different from any other in its market; the presence of ASSOS dealing in a broader range of non-sporting clothing could mean that another fashion retailer might be able to establish as ASAS, or ASSUS, without necessarily infringing ASOS’ rights.