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Are you trade mark savvy?

View profile for Sarah Redmond
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Whilst some fashion businesses have experienced ‘difficulties’ in recent months – New Look, Claire’s Accessories and House of Fraser – are just some that spring to mind, others have been looking to refresh their brands in the hope of enticing consumers to buy more.

In case you missed it, LVMH Moet Hennessy Louis Vuitton announced recently that it was changing their name from CÉLINE to CELINE.  Meanwhile Debenhams launched a new brand identity which includes a stylised D logo whilst John Lewis has rebranded to John Lewis & Partners.

But what needs to be done from a trade mark perspective to ensure that these companies are adequately protected?   Does it mean that these tweaks to the brands require further trade mark applications to ensure that they are sufficiently protected?
  
In the UK, once a trade mark has been registered for over 5 years it becomes vulnerable to attack on the grounds of non-use.  If seeking to rely on a vulnerable trade mark in opposition proceedings or defending a non-use attack, it will be necessary to show that the trade mark has been used.  The Trade Marks Act states that “use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”. 

But what does this mean?

If adding descriptive or non-dominant elements, such as the change to JOHN LEWIS & PARTNERS, any trade marks for JOHN LEWIS should still be acceptable when showing use.  Also adding insignificant elements such as punctuation or accents should not affect the validity of the trade marks (CELINE).  These minor changes would be seen as not altering the distinctive character when assessing if there has been proof of use of these trade marks.  The UK Intellectual Property Office would assess what is the distinctive character of the mark and whether the changes alter this character.

Use in a different typeface should be acceptable unless the typeface is highly stylised (Debenhams). However, trade marks which consist exclusively of logos are often sufficiently different from a trade mark use perspective when changes occur.

From a search of the relevant trade mark registers it appears that CELINE was always registered in a plain block format and so no amendment to these trade marks is required.  However, protection has currently been put in place for JOHN LEWIS & PARTNERS (for retail services only but not in relation to the specific goods sold under the brand) and Debenhams has filed trade mark applications for its new logo and the stylised D.   These companies are probably quite trade mark savvy. But all fashion businesses should consider when their brands are being used in a different form whether there is a need to register trade marks for the new version.

Finally, two fashion businesses have had a recent (more temporary) brand change. During September Harvey Nicols will be known as Holly Nicols (and in fact it has applied to register HOLLY NICOLS as a trade mark even for this short time of use). Meanwhile earlier this year Lacoste swapped its distinctive crocodile logo for one of 10 threatened animal species on a series of limited-edition polo shirts, designed to bring attention to the global state of biodiversity.

Fashion businesses do not have to be of the size of John Lewis, Debenhams, Harvey Nicols or Lacoste to be trade mark savvy. If a fashion business’s brand is being used in a different form, consideration should be given as to whether there is a need to apply to register fresh trade marks for the new version.