22 May 2018

A Chic Approach to IP

As a creative brand itself, Marc Jacobs International, LLC (USA) adopts a similarly creative approach to dealing with challenges around trademark registration and enforcement, says Antonio Borrelli, Vice President, Associate General Counsel at the fashion brand.

He says the need for such innovation derives from some IP offices taking an approach that can favor “trademark pirates.” These jurisdictions are very strict in their interpretation and application of likelihood of confusion standards and, in many of these places, the “first to file” rule applies.

“In such jurisdictions, pirates may be able to register trademarks that have only slight variations from a registered mark, because IP offices take the position that consumers are able to discern even small differences between marks and to understand that the sources of the respective products are distinct,” says Mr. Borrelli.

“In those jurisdictions, it is extremely important to have a watching service in place in order to monitor trademark applications filed by third parties and to take action against copycat trademark filings as necessary,” he adds.

The consequences of these standards can complicate registration and enforcement strategies, in particular with new marks or designs (as opposed to recognized and established marks), Mr. Borrelli explains.

It is vital in these situations to develop creative approaches in response, including filing a trademark in a different format or seeking alternative forms of protection to trademarks.

For example, he says, an alternative can be filing copyright or design patent registrations where they are available.

“Instead of filing a word mark in all jurisdictions, it may be advisable to incorporate another element into the mark (such as another word element, a house mark, or a design/logo) to facilitate the registration process, Mr. Borrelli says.

He adds: “When it comes to registration of IP, there is no ‘one-size-fits-all’ approach—the strategy needs to be carefully adapted to further the registrant’s goals.”

One Strategy

Based in New York City, New York, Marc Jacobs International, LLC is owned by LVMH (France), the multinational luxury goods conglomerate, and was initially launched by the designer Marc Jacobs in 1984. LVMH owns other fashion brands, including Céline, Fendi, and Louis Vuitton.

Marc Jacobs International LLC’s IP portfolio includes more than 1,600 international trademark registrations, copyright, and design patent registrations. As Mr. Borrelli notes, the renowned house mark, MARC JACOBS, is the jewel in the portfolio’s crown, “as it is our oldest trademark and has been used for over 30 years.”

Asked about the major challenges in the IP clearance and application processes, Mr. Borrelli says it is important to perform these tasks on a worldwide basis. Marc Jacobs International LLC is a global company and needs to maintain and enforce its rights in key markets, manufacturing locations, and notorious piracy areas throughout the world, he explains.

But because IP rights are essentially territorial, it can be a challenge to develop a unified strategy in many different countries simultaneously, he adds.

“In some countries it may be easier to register one IP right over another—generally speaking, copyright registrations are easier and cheaper to obtain than trademark or patent registrations due to the more streamlined examination conducted by copyright offices,” Mr. Borrelli explains.

“In addition, the manner in which an IP right is depicted in an application may need to be tailored based on local practice; for example, whether to include a logo or design element, color, local language translation/transliteration, or other details,” he says.

Another element that should be considered, he adds, is the level of local law enforcement’s willingness to help brand owners enforce their rights.

Marc Jacobs International LLC is active in trying to raise awareness of its brands among authorities. This includes partnering with and training law enforcement and customs officials, and taking legal action when counterfeit products are discovered, according to Mr. Borrelli.

Combating "Creative" Counterfeits

Counterfeit products come in many forms; most commonly, Mr. Borelli sees infringements of the company’s best-selling products, such as handbags, backpacks, and wallets, and accessories including sunglasses and watches.

"Counterfeiters are very creative, and we have seen ‘original’ counterfeit products that are not direct copies of the company’s actual products."

“Counterfeiters are very creative, and we have seen ‘original’ counterfeit products that are not direct copies of the company’s actual products. For example, a pirate will create a completely new style of handbag or wallet that is not a direct copy of one of the company’s products and affix the MARC JACOBS name to it,” he explains.

“We have also seen counterfeit products in categories that are not currently offered by our company,” he adds.

Mr. Borrelli says the scale of counterfeiting and the accuracy of the counterfeits vary from product to product and from country to country. “In many cases we are able to quickly confirm that a sample is counterfeit by viewing photos of key aspects of a product,” he says.

However, he adds, sometimes it is necessary to touch and feel the product in person and carefully inspect its details in order to confirm whether a sample is counterfeit.

The availability of high-level manufacturing has increased the quality of counterfeit products, so physical inspection is now a more critical part of the investigation, he says.

“We very often need to be creative with enforcement strategy,” he concludes, showing that creativity is firmly embedded within the fashion company’s IP mindset too.

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