BRANDING IS VITAL to building customer loyalty,
maintaining goodwill and increasing profitability.
As competition in the fashion market heats up with global
entrants and online stores, savvy fashion designers are not only
creative with their designs but they are also seeking to protect
their products by seeking trade mark protection for distinctive
designs and features as well.
This protection strategy has been employed by a number of
fashion and footwear designers in Australia. For example:
one of the first fashion labels to protect the key elements of
its garments was Levi Strauss & Co (Levi's). Levi's has
registered trade marks for the pockets on its jeans, the curved
stitches on the denim pockets of its jeans, the red tab that
appears on these pockets and the image of horses appearing above
Camper S.L. has registered trade marks for the shape of its
footwear soles, stitching and arches used in it shoes
Vans, Inc. has a registered trade mark for the shape of the
curved strips used on its shoes
Guccio Gucci S.p.A has a registered trade mark for the shape of
the metal links used on its leather goods and accessories
Pacific Brands Holdings Pty Ltd has a registered trade mark for
the shape of the upper part of its Dunlop Volley shoes
Hermes International has a registered trade mark for the shape
of the buckle it uses on its garments such as belts, boots and
Christian Louboutin (Louboutin) has a registered trade mark for
the shade of red used on the soles of its shoes.
"This protection strategy has been
employed by a number of fashion and footwear designers in
The value and importance of protecting the key features of a
product is highlighted by Louboutin's attempts to register and
enforce trade marks for red soled shoes around the world. Louboutin
has sought to protect its red soles as a trade mark in a number of
jurisdictions with mixed success.
In 2012 a US court upheld Louboutin's U.S. registration for
its colour trade mark when it was challenged by Yves Saint Laurent
(YSL). While the trade mark registration was upheld, it was limited
to situations where the red sole contrasts with the adjoining upper
portion of the shoe. In January 2013, the United States Patent and
Trademark Office rejected Louboutin's application to broaden
protection of the trade mark to cover red soles which simply
contrast with the colour of any visible portion of the shoe.
In August 2013, Louboutin sued Van Dalen Footwear BV (Van
Dalen), a Netherlands based retail shoe company, claiming
infringement of Louboutin's registered colour mark in Benelux
(the region consisting of Belgium, Netherlands and Luxembourg). Van
Dalen denied the infringement claim and counterclaimed arguing that
the trade mark was invalid under European trade mark law.
In March this year, the Brussels District Court (Court) found
that Louboutin's trade mark was invalid on the technical basis
that it was not for a colour mark, but was for a threedimensional
The decisions in Brussels and the United States highlight how
important it is to clearly describe and define a trade mark when
filing an application to protect it. With the equivalent trade mark
often being filed in multiple countries/regions, it is even more
important to ensure that the protection being sought accurately
reflects and encompasses the trade mark itself, and takes into
account any local nuances when seeking the trade mark
Significant time and expenditure are invested into building a
brand and maintaining its longevity. To maximise these efforts,
consideration should be given to protection of the unique and
distinctive aspects of your branding and designs which help make
your products stand out in an increasingly crowded fashion
marketplace. Think beyond the name of your label to the other
aspects that define your brand identity and ensure you are
appropriately armed to attack anyone who tries to trade off your
unique design features.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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