28/02/2018
One of the biggest events in the fashion industry took place last week, London Fashion Week, where top designers in the industry exhibited their pieces. London has a reputation for creativity and we saw brand owners getting playful adapting other brand owners’ protected works. Indian designer, Ashish Gupta added some sparkle with his sequin designs, modifying the logos of major credit card brands: American Express read as “American Excess” and Visa was altered to read “VIVA (L’Amore)”.
People may question as to how this brand alteration is possible without running into the copyright or trade mark infringement laws. On 1 October 2014, the Copyright, Designs and Patents Act 1988 was amended to include a defence to copyright infringement where there was an act of fair dealing: “Fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe a copyright work”. What constitutes ‘fair dealing’ is not straightforward. Two key factors must be taken into account: the work must evoke an existing work whilst being noticeably different and the work must constitute an expression of humour and mockery.[1] The “American Excess” and “Viva L’Amore” artistic creations are not an exact replica of the original work and are designed to be humorous, with the words adapted a playful manner. It is unlikely that a consumer would view these fashion designs to be the original works of American Express or Visa. Fashion designers have long been creating works of this nature, including Jeremy Scott’s collection for Moschino back in 2014, with handbags and clothing using a stylised version of McDonalds golden ‘M’ arch logo amongst other big American food brands.
There is currently no similar parody defence outlined under UK trade mark law. Whether brand owners could, or would want to, take action against this kind of use, would come down to whether they felt this use would dilute their trade mark. Dilution occurs where a third party uses a similar mark in commerce which, by association, would harm the reputation and distinctiveness of the earlier famous trade mark. It is arguable that brand owners may even benefit from the additional PR through this use, assuming that the creations denote positive connotations. The UK press report widely on the runway shows at London Fashion Week.
Brand owners having fun with fake ‘counterfeits’
While fashion designers were appropriating and modifying other brand owners’ protected works at London Fashion Week, some leading brand owners were having fun with their own products at New York Fashion Week. Diesel and Gucci have taken the “if you can’t beat ‘em, join ‘em” approach against counterfeiters, ripping off their own trade marks.
Diesel opened a pop-up shop under the misspelt name “Deisel”, where buyers would think they are getting a cheap replica of the real deal, when in fact the products sold in the pop-up shop were of Diesel’s own creation. Gucci adopted a similar concept with its recent Cruise collection under the name “Guccy” instead of Gucci.
Interestingly, Diesel also filed a trade mark application in the US just before New York Fashion Week (US TM Application no. 87779516) for the mark “DEISEL for successful living” in the stylised and misspelt format that was used on the “knock-off” merchandise in the pop-up store. Gucci have also obtained an international trade mark registration for the word mark GUCCY (IR TM No. 1382508) in various countries globally, including the UK. Seeking protection for these modified versions of their house marks will assist Diesel and Gucci in enforcing their trade mark rights against third parties and counterfeiters.
[1] Deckmyn and another v Vandersteen and others, Case C-201/13.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
