Trade marks and the fashion, clothing and footwear industries - lessons we can learn
Introduction
The fashion, clothing and footwear industries are of crucial importance to Europe's economy.
It therefore comes as little surprise that a number of legal decisions involving businesses engaged in the fashion, clothing and footwear industries have helped to form the bedrock of the EU's case law on the interpretation and application of the Trade Marks Directive and the Trade Marks Regulation. One has only to think of the European Court of Justice's ("ECJ") decisions in Sabel v Puma, Windsurfing Chiemsee v Boots, Adidas Salomon AG v Fitness World Trading Ltd and Lloyd Schufabrik v Klijsen Handel to appreciate the contribution made over the recent past by the fashion, clothing and footwear industries, to the development of European trade mark law.
This article cannot possibly attempt to comment (and arguably little would be achieved if it did) on every trade mark decision involving fashion, clothing and footwear brands that has been handed down in the UK and at an EU level over the past few years. Nor would much be achieved by reviewing the aforementioned well-known legal decisions of the ECJ, in the light of the weight of expert commentary that has already been forthcoming. Instead, the aim of this article is more modest, seeking to highlight just a few lessons that can be learnt from some of the other, perhaps lesser-known, legal decisions involving fashion, clothing and footwear brands that have been handed down over the past few years either in the UK, by OHIM or by the ECJ.
Forenames and surnames
As all trade mark practitioners know, in the EU a trade mark cannot be registered if the mark in question is devoid of any distinctive character (i.e. it is not capable of distinguishing the specified goods of the applicant from those of other undertakings).
Often many fashion, clothing and footwear businesses choose to trade under a forename, a surname or both (e.g. Morgan, Laura Ashley, Ted Baker). The ECJ has given guidance as to the assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname. In summary, the ECJ has ruled that such marks must be assessed no differently from other categories of trade marks. Thus, the distinctive character of such a mark must be assessed in relation to the goods or services in respect of which registration is sought and in relation to the perception of the relevant consumers of such goods or services. Stricter general criteria of assessment based, for example, on a pre-determined number of people with the same name as the name for which registration is sought, cannot be applied.
By way of illustration, an application to register the word ABERCROMBIE as a UK trade mark, in relation to various items of clothing and footwear, proved successful. It was held that the name ABERCROMBIE was not a common surname in Scotland or the UK as a whole and therefore the name was capable of distinguishing the applicant's goods from those of other undertakings.
But what happens when a surname, a forename, or both are registered as a trade mark for goods such as clothing and footwear, and a third party comes along wishing to trade under a similar name for such goods?
In the McQueen case, it was held that a UK application to register stylised versions of the words MCQUEEN CLOTHING CO, for goods including t-shirts, sweatshirts, jackets and tops, could not be opposed successfully on the basis of an earlier registration for the name ALEXANDER MCQUEEN, covering goods such as clothing, footwear and bags (the later registration being owned by the well-known clothing and fashion designer Alexander McQueen).
The distinctive character of the mark ALEXANDER MCQUEEN was held to reside in the combination of the forename and the surname, with the distinctive character of the mark MCQUEEN CLOTHING CO being 'front-loaded' on the word MCQUEEN. On the basis of the evidence presented, it was held that the word MCQUEEN simplicitor would not be interpreted by an average consumer of the goods concerned as a reference to ALEXANDER MCQUEEN and thus the absence of the word ALEXANDER from the applicant's mark meant the opposition was bound to fail. The marks could co-exist without creating a likelihood of confusion.
However, in the Perkins Case, a UK application to register a series of trade marks for the work PERKINS for a variety of clothing goods, including shirts, t-shirts, jackets and trousers, was opposed successfully on the basis of earlier registrations for the mark DOROTHY PERKINS. The Hearing Officer deciding the case felt that, because of the common surnominal element and the identity of goods, there was a "high likelihood" of consumers assuming that there was an economic link between identical goods bearing DOROTHY PERKINS and PERKINS labels.
Likewise, in the Lorna Morgan case, a UK application to register the mark LORNA MORGAN for clothing, footwear and headgear was opposed successfully by Morgan S.A., the owner of an earlier registered trade mark for the word MORGAN for identical goods. It was held that "the average consumer might well assume that LORNA MORGAN related to MORGAN in the same way as COCO CHANEL to CHANEL, MIUCCI PRADA to PRADA, GIORGIO ARMANI to ARMANI and GIANNI VERSACE to VERSACE".
By contrast, in the Laura case where a UK application to register the mark LAURA for clothing goods was opposed on the basis of an earlier registration for the mark LAURA ASHLEY, the opposition failed.
However, in the Ted Baker case, a Community trade mark application to register the mark TED BAKER, for goods including clothing and footwear, was opposed successfully based on an earlier registration for the mark CLAUDIA BAKER, for goods including clothing and footwear. It was felt that the average consumer who knew of the mark CLAUDIA BAKER might be confused when seeing the mark TED BAKER on clothing, into thinking that TED BAKER was a line of clothing coming from the same source as that of CLAUDIA BAKER.
So what lesson can be learnt from these "superficially similar" cases? As Richard Arnold QC said in the Lorna Morgan Case, it is not right to question each decision, each of which depends upon "the application of the same principles of law to different factual circumstances and different evidence". To try to compare cases, with a view to deciding which decision to follow, is, in his words, both a "fruitless, as well as an illegitimate, exercise". The age-old rule applies: each case depends on its own facts and evidence. Drawing factual analogies between different cases may be of some interest to trade mark practitioners, but it is of no relevance when determining whether or not a particular mark should or should not be registered.
Post assignment – can a trade mark deceive or mislead?
The UK Trade Marks Act 1994 and the Trade Marks Regulation permit the assignment of registered trade marks. Such assignments commonly take place as a consequence of the transfer from one party to another of a business which owns relevant trade marks.
It is accepted that the mere sale of such a business, and the consequent transfer of such trade marks, does not, of itself, result in those trade marks becoming capable of revocation or being declared invalid, on the basis that they now deceive or mislead the public. As Lord Nicholls explained in the Scandecor case, citing Romer LJ in Thorneloe v Hill: "A trade mark is not usually to be understood as a representation regarding the identity of the source, namely, who is in control of the business in which the mark is being used. Rather, with the changes in trade, a trade mark can "fairly be held to be "only a representation that the goods were manufactured in the course of the business using the mark, without any representation as to 'the persons by whom that business was being carried out' ".
But what of the situation where the trade mark is seen as identifying a certain person or entity as the source of the goods or services bearing the mark and yet, because of the assignment of the mark to the third party, that person or entity is no longer the source of the said goods or services? Does this mean the mark deceives or misleads the public and can be revoked or declared invalid? This was the issue considered in the Emmanuel case, which concerned a dispute between Elizabeth Emanuel (the designer of Diana, the Princess of Wales' wedding dress) and a company called Continental Shelf 128 Limited ("CSL").
In summary, in the mid 1990's Elizabeth Emanuel had assigned to a company called Elizabeth Emmanuel Plc ( ("EE Plc") her business of designing and selling garments, formerly operated by her under the name ELIZABETH EMANUEL, including a UK registered trade mark for a device mark incorporating the name "ELIZABETH EMANUEL", registered for goods including clothing.
In 1997, EE Plc assigned this business and the said trade mark to Frostprint Ltd, which subsequently changed its name to Elizabeth Emanuel International Ltd ("EE Int"). Elizabeth Emmanuel was initially employed by EE Int, but later that year she left the employment of EE Int.
Subsequently, EE Int assigned the said trade mark to Oakridge Trading Limited. This company then applied to register the name ELIZABETH EMANUEL as a UK trade mark. In turn, both this application and the earlier registered trade mark were transferred to CSL. Elizabeth Emanuel opposed the new application and also applied to revoke the earlier registered trade mark. She argued that both marks were deceptive and misleading, in that a significant proportion of the relevant public understood use of the name ELIZABETH EMANUEL, in relation to garments, to indicate that she was involved in their design and creation, whereas in fact this was no longer the case.
David Kitchen QC, sitting as the Appointed Person and initially hearing the appeal of the case, concluded that, at the relevant dates, a significant proportion of the public genuinely believed that use of the mark ELIZABETH EMANUEL, in relation to garments, indicated that Elizabeth herself was involved in their design and manufacture, and those same members of the public were likely to purchase those garments in reliance of that belief. The question was whether such confusion was "lawful deception", or whether it entitled Elizabeth Emanuel to an order preventing the registration of the application and revoking the earlier registered mark. Did the relevant Articles in the Trade Marks Directive and the Trade Marks Regulation cover this sort of situation? Was there a public interest in preventing or revoking the registration of a trade mark which conveyed an "inaccurate message to the relevant public" and thus gave rise to a "real risk of their economic behaviour being affected" by that message?
Unable to identify any existing Community case law which addressed such circumstances, Mr Kitchin referred the matter to the ECJ for determination. The ECJ gave its guidance and the matter then came back before Professor Ruth Annand, then sitting as the Appointed Person hearing the appeal. Following the guidance of the ECJ, she held that a registered trade mark is not liable to be opposed or revoked simply by reason of the fact that the mark corresponds to the name of the designer and first manufacturer of the goods bearing the mark and the goodwill associated with the mark has been assigned, together with the business making the goods to which the mark relates, to a third party with whom the designer is not involved.
Moving into fashion, clothing and footwear
The Trade Marks Directive and The Trade Marks Regulation enable the owner of an earlier trade mark to prevent the registration and use of a mark, or sign, which is identical or similar to the earlier trade mark, in relation to goods or services, where the earlier trade mark has a reputation and where the use of the said mark or sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trade mark.
A number of businesses involved in the fashion, clothing and footwear industries, which have adopted trade marks that are the same, or similar, to earlier trade marks registered for other goods or services, have found themselves the subject of opposition or Court proceedings in which the aforementioned articles have been cited. By way of illustration, in the MERC case, the Court held that the Defendant's use of the trade mark MERC, in connection with clothing and footwear, did not constitute infringement of the Claimant's earlier registered trade marks for MERCEDES and MERCEDES-BENZ, in respect of cars and vehicles. Whilst it was acknowledged by the Court that the word MERC was recognised by some people as an abbreviation referring to the Claimant's motor cars, nevertheless there was no evidence to suggest that the Defendant took advantage of this recognition when using the sign MERC on items of clothing, or that such use was detrimental to the repute of the Claimant's trade marks.
However, in the Loaded case, it was held that the applicant's use of the word mark LOADED, in relation to articles of clothing, would cause detriment to IPC, the opponent in the case and the owner of an earlier UK registered trade mark for the work mark LOADED, in respect of printed publications. In addition, if the mark were to be registered, it was felt that the applicant would be obtaining an unfair advantage. Simon Thorley QC, sitting as the Appointed Person hearing the appeal of the case, admitted that it was a "borderline case" but he felt it was "inescapable that some of the kudos of LOADED magazine will accrue to any clothing sold under the LOADED trade mark." He held that the trade mark LOADED had a substantial reputation in relation to its use as the title of a magazine aimed at young men, and its use by the applicant on articles of clothing might prevent IPC from marketing promotional clothing bearing the trade mark LOADED and also affect IPC's ability to sell advertising space in its magazine to advertisers.
So what is the lesson we can learn from the two cases? Certainly the age old rule also applies here: each case depends on its own facts and evidence. Of more significance is that the two cases highlight the difficulties that the UK judiciary and Hearing Officers face currently when it comes to interpreting the scope and intent of the Trade Marks Directive and the Trade Marks Regulation. As Pumfrey J said in the Merc case "This area of the law is bedevilled by the nuances of different national approaches to trade marks".
Conclusion
The fashion, clothing and footwear industries have played an important role in the recent development of European trade mark law. Many lessons can be extracted and learnt from the cases that have been heard since the introduction of the Trade Marks Regulation and the Trade Marks Directive, which have involved these industries. Doubtless many more valuable lessons will be absorbed and handed down in the future.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
