The average retailor may be aware that it cannot infringe upon trade marks, traditionally identified as brand names and logos. However, retailors should also take note that in addition to brand names, logos, designs and phrases, there also exist a group of non-conventional trade marks.
Today, all kinds of devices, shapes, colours, sounds and even textures may be registered and protected as a trade mark as long as these marks are graphically representable and distinguishable.
Fashion and its unconventional Trade Marks
Colour or particular colour-combinations can be protected as trade marks. High-end shoe designer Christian Louboutin has registered his red-lacquered outsoles as a trade mark. The trade mark is for a particular shade of red known as Pantone No. 18.1663TP and the designer has a history of legal tussles across various jurisdictions with other brands that have produced shoes with similar red outsoles. Recently, the designer released a warning to shops in Singapore to refrain from selling shoes infringing upon his trade mark.
Similarly, jewellery company Tiffany & Co. has registered its blue box as a trade mark.
It is no secret that fast fashion retailers rely heavily on the ideas of high-end designers. These brands often take inspiration from luxury brands and translate them into wearable designs for a fraction of the price. By recreating the texture of a particular mark on leather goods or selling shoes with red soles, retailers may unknowingly tread upon the toes of fashion giants who may not hesitate to resort to legal action for infringement of their intellectual property.
Protecting Leather Textures as a Trade Mark
Leather has always been a statement of fashion. Today, the latest fashion encompasses leather with a novel texture. A wide variety of textures can be imprinted on leather using various chemical treatment methods. Many fashion houses have created their own texture look for leather goods that can be easily identified with their brand. The unwary retailer may be caught unawares if they do not carry out sufficient trade mark checks before releasing their goods.
Louis Vuitton Malletier registered the leather look of their Epi leather handbags (“Epi mark”) and the Epi mark is protected as a trade mark. The Epi mark is a texture characterised by interleaving ridges and valleys applied to the whole or predominant area of the surface of the product, with the ridges being of a darker shade and the valleys of a lighter shade, thus giving it an immediately recognisable two-tone effect. The Epi Mark is used by the French fashion house on all its products in the Epi Line, including leather wallets.
Louis Vuitton enforces rights against Raffles City Retailer
In July 2015, Cuffz was brought to court in Singapore for infringing upon Louis Vuitton’s Epi mark. Cuffz is a retailer in Raffles City Shopping Centre and deals in costume jewellery and accessories. Among its products are small leather wallets that resemble the registered Epi mark which bore a two-tone leather texture.
A private investigator hired by Louis Vuitton made a trap purchase for S$75.90 and the store was subsequently raided by the Criminal Investigation Department and more goods were seized. Louis Vuitton sued Cuffz for trade mark infringement and sought statutory damages of S$100,000, the maximum amount permitted by the trade marks act. Statutory damages can be awarded when it is difficult to prove actual losses.
The sale of counterfeit goods brings damage to the reputation and goodwill attached to the brand name and business. Before retailing a product, businesses are advised to check whether they are infringing upon other proprietors’ rights.