Brand building, trade marks and the fashion industry – an overview

In the highly competitive fashion industry, protecting the uniqueness of a fashion brand and its products from pressure and copycatting by competitors is vital to a brand’s success.

Cultivating a recognisable brand in the eyes of consumers can be the cornerstone of a fledgling house’s marketing strategy; maintaining it is essential to the longstanding success of even the most well-known designers. There is also added sensitivity in that the brand of high-end and upcoming fashion houses might also be the personal brand of the lead designer or head of the company.

In this article, we will take a look at why branding is so integral in the strategy of fashion houses, what protection is available to brands through trade marks, copyrights and designs, and how to go about securing and maintaining it.

Why branding is important for fashion houses/brands
Infringement by inferior quality goods is a considerable risk facing fashion brands. If allowed to persist, the existence of copycat brands and products can damage the reputation of a fashion brand.

The damage to a brand from infringements also has a significant financial impact: according to a study conducted by the European Union Intellectual Property Office (EUIPO), the fashion industry globally loses billions annually due to counterfeit and knock-offs.

The fashion industry is a fast-moving, competitive space. Trends change swiftly and the failure to keep up and capitalise with new collections and products can see brands miss out on potential new markets and revenue. However, failing to consider the long-term impact of counterfeit and copycat branding and products at launch could prove costly. Getting new facets of a brand or products in a portfolio to market in a manner that is time efficient and future-proofed from replication by competitors should be a key consideration for fashion designers and executives.

Building a trade mark protected brand
To counter these risks, it would be prudent to consider developing a trade mark strategy early on in the creation of their company and products, to protect its most important assets from infringement from competitors and counterfeit producers. Typically, fashion brands might be looking to protect names and logos, and these kinds of marks are definitely protectable – if they are distinctive, non-descriptive, non-generic, non-offensive, and non-deceptive.

To take those in order:

• Distinctive: Perhaps the most difficult to define, but the most important part of procuring protection (more on that below). The mark needs to be unique, and the public need to be able to recognise it as having a specific origin.
• Non-descriptive: The mark itself cannot be descriptive of what the brand is. For example, a handbag brand can’t be x-handbags, or a jean manufacturer can’t be blank-jeans.
• Non-generic: The proposed mark isn’t already in use in common parlance to describe the product – think of the use of “hoover” to describe vacuum cleaners.
• Non-offensive: It can’t include any swear words word that might cause offense.
• Non-deceptive: The mark doesn’t include wording or suggestion that might mislead or deceive consumers as to  the nature or quality of its goods or services.

That isn’t to say that trade marks are limited to just the name and logo of a brand – far from it. Trade marks can be filed for packaging, designs, patterns, sounds, colours and even smells. It isn’t easy to do so, but it is possible to gain protection for these. In either case, proving the “distinctiveness” of a logo, wording, or aspects of a physical product is paramount in a successful trade mark filing.

Distinctive marks
Achieving a “distinctive” mark is one of the key pillars to a successful trade mark registration. At the examination stage, a trade mark application may be considered “non-distinctive” by examiners and then it is up to the applicant to prove the distinctiveness of their trade mark as viewed by consumers.

In addition, maintaining brands on the basis of distinctiveness takes vigilance to achieve. Brands need to present consumers with continual evidence to maintain the association of their brand with the mark in question in their minds. The public need to be continually reminded of the association of design elements of products with their fashion houses – say, that a red sole on a high heel is synonymous with Louboutin – to ensure distinctiveness is maintained.

If a trade mark is particularly hard to register, it is more likely to face challenges from competitors during its lifetime. It is important to build a strong case for the uniqueness and distinctiveness of brand’s trade marks during the filing process, to mitigate costly defence actions of a portfolio during a brand’s lifetime.

Use of a designer’s name as a brand
It can be common for fashion producers to use their founders name as central to their branding. Utilising a designer’s name as a brand has a longstanding history amongst some of the most prestigious fashion houses in the world, from Versace to Karl Lagerfeld, to Gucci to Marc Jacobs – but it’s a tradition that carries inherent risk. Tying a brand to an individual’s person could make it difficult for new talent to continue to revitalise the company once the initial founder retires or moves on. In the case of takeovers, it could see the original designer become orphaned from the company of their own name, resulting in complicated legal situations and competing brands in the future.

How to establish a strong trade mark strategy as a fashion brand
To bring all this together, what should a fashion house do in order to create the best possible foundation for the protection of its brand?

• Conduct a thorough trade mark search: When creating a brand (or when creating new sub-brands within the portfolio) perform a thorough trade mark search to identify what currently exists in the market. This is critical in building a foundation for successful filings and avoiding costly legal actions in the defence of marks in the future where a company might have inadvertently infringed branding or products already in the market.
• Secure trade mark registration: Register aspects of the brand that are integral to the brand or the new product. Consider the points listed above (distinctive, non-descriptive, non-generic, non-offensive, non-deceptive) to ensure as strong a case for the new marks as possible.
• Consider associated copyrights and designs: Be aware that underlying designs (upon which products such as clothing, shoes or bags might be based) and relevant copyright works (i.e. works which might consist of company’s logo or design) and designs are protectable under IP law. Recognising these will further bolster a brand’s defences in the instance that its products or brand are infringed upon.
• Monitor the market for potential infringements: Put in place a system to monitor the market for potential infringement. Act quickly to begin legal proceedings to counter infringement as efficiently as possible to reinforce the reputation of an existing brand or product in the minds of consumers.

International protection
Much of potential infringement for fashion brands is international in nature; for example, copycat brands in foreign jurisdictions, or knock-off brands widely available internationally or being manufactured in another country and imported. If a brand is looking to establish protection internationally, then it can use the Madrid System (administered by the WIPO) to register trade marks across multiple countries (that are members of the Madrid protocol), or they can file individually for the countries relevant to its brand to tailor protection.

Combatting infringement internationally
If and when infringement of your trade mark is identified either in your home location or internationally, acting quickly is advised in order to assert your rights and prevent dilution/distribution of the infringing goods.

Other preventative steps which might support a brand’s attempt to counter infringements include:

• Do not refer to the brand in descriptive manner marketing materials: these might weaken your own protection by association.
• Maintain strict brand guidelines: ensure these are followed by employees and partners externally – again, confusing your own brand in the eyes of the consumer can weaken the case for “distinctiveness”.
• Seek protection for designs and copyrights where applicable: gaining protection for registered designs that underpin key products, services and goods is an excellent layer of protection for brands.

Licensing arrangements:
Lastly, it is worth giving some consideration to potential licensing arrangements when creating a brand IP strategy. An increasing trend in the fashion industry is the prevalence for collaborations between high-end brands and celebrities or influencers. Fashion houses should tread carefully around creating licensing arrangements in this manner to ensure the correct use of trade marks between collaborators – identifying what the scope of the licence is, which trade marks (or designs and copyrights) it encompasses, the terms of the licence, and responsibility for action between the parties should infringement be identified.

Conclusions
Establishing a robust trade mark portfolio is critically important for fashion brands. Failure to do so will not only impact the future-proofing of your products and brand in the eyes of consumers, it might mean losing out on opportunities to competitors and direct monetary loss from infringements on a brand internationally.

• Trade mark early, and robustly: consider distinctiveness of your brand and physical products as a priority. Can you make a case for distinctiveness? Can this be evidenced by your band’s impression in the eyes of the public?
• Be careful of utilising a lead designer name in branding: is there a strategy in place for succession-planning down the line? Can the designer and brand be separated amicably, if needed?
• Be alive to the possibility of infringement: remain vigilant to changes in the market. Are there products in other jurisdictions or at home that might impact on your brand? Move quickly to bring legal proceedings where applicable to prevent damage to the brand, reputation and to reduce the financial impact of copycat brands.

Our trade mark team includes experts who advise fashion brands on all aspects of international trade mark portfolios. Read more here  – (or contact your regular Boult representative).

Our wider consumer goods and retail practice encompasses trade mark, designs and patents experts. Read more about their work here.