Given that it is much easier for the consumer to pick or
differentiate between certain items, styles and washes within a
clothing line or collection by name rather than by an article code
sequence, fashion houses have established a practice to use style
names. In order to fulfil their function as an easy reference,
style names typically consist of male or female first names or
Even though a style name's basic function is to enable the
public to differentiate between a fashion company's very own
styles and not to serve as a reference to third party products, its
use may give rise to trademark conflicts.
Whilst sometimes claims will be put forward by a competitor, it
increasingly occurs that cease and desist letters are sent by
companies which do not manufacture or supply clothing, or at the
very least are not known for this, but rather hold trademarks and
engage in monitoring the market for possibly infringing style names
in order to collect legal fees and damages. Apart from the fact
that these companies would usually not let a party "off the
hook," unless it issued a formal cease and desist declaration
(with penalty clause) and paid a certain compensation, a litigious
claimant would often sue other companies in the distribution
scheme, including retailers, in order to increase the pressure on
the fashion house.
Fashion companies, however, are caught unattended by this
B. Case Law
From the legal perspective, claims may only be asserted, if the
specific use of the style name qualifies as "use as a
In order to assess whether a style name (such as
"Angela" or "Jim") is used in a trademark-like
manner (or, in other words, as a secondary mark), or, on the other
hand, as a mere article designation, the court will have to take
into account all the specific circumstances of the case.
Whereas the assumption of a trade custom in the fashion industry
to use style names as article designations has played an important
part in several older decisions of the German Federal Court of
Justice (see for example BGH, judgment of 26 November 1987, I ZR
123/85 – Gaby; BGH, judgment of 20 March 1970, I ZR 7/69
– Felina-Britta), the German instance courts have
traditionally followed a particularly rights holder-friendly
Based on the ECJ's findings in its judgment of 23 March
2010, Cases C-236/08-C-238/08 – Google France and Google,
according to which the trademark's function of indicating the
origin of the product is adversely affected, if an advertisement
does not allow consumers, or allow them only with difficulties, to
ascertain whether a given product originates from the trademark
owner or a company economically connected to it or, to the
contrary, originates from a third party, the Appellate Court of
Hamburg only recently ruled that the female first name "USHA,,
which was not descriptive for the designated goods, would (at least
also) be perceived as an indication of origin and thus as a
secondary trade mark – a view which is i.a. shared by the
Appellate Court of Frankfurt on other occasions and regarding other
In contrast, the Hamburg District Court (first instance) and the
Cologne Courts (both levels, first and appellate) have expressed
different thoughts with respect to the style names "USHA"
(in Hamburg) and "MARLO" (in Cologne). In these
decisions, the courts acknowledged that the average consumer is
perfectly aware of the fact that fashion companies use style names
in order to identify a certain style or product line. These courts
held that neither the function as an indication of origin nor
another function of the claimant's mark would be adversely
affected by such use.
It has to be noted, though, that different scenarios of use
might be assessed differently. Use of a style name on a hangtag and
thus in a position in which the consumer is accustomed to find the
brand, is more likely to be considered use as a trademark as when
depicted on care labels along with further article details, and
that may lead to "split" decisions in the individual
Due to these inconsistencies in German case law and the fact
that even a (false) allegation of infringement may impose a serious
threat to a fashion company's distribution scheme and the
relationships with wholesalers and retailers, trade mark conflicts
involving style names have to be handled carefully. Keeping in mind
that larger fashion companies are using hundreds or even thousands
of style names, worldwide clearance is not always an option because
of enormous costs. If a certain style name has become important for
the company's business, e.g. because of its extensive use, it
may be worth treating it as a trademark and protecting it. There
are famous examples, where simple style codes have evolved to
renowned brands – just think of the "501" by
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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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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