28 February 2018Trademarks

INTA Design Conference 2018: Superdry and Michael Kors talk brand protection

It is “very important” for in-house IP lawyers at fashion brands to maintain a good relationship with the designers, according to James Sweeting, senior IP counsel at Superdry.

Sweeting spoke about brand strategy and protection at INTA’s Power of Design conference yesterday, February 27, in addition to in-house lawyers Natasha Hinds-Payne from Cath Kidston and Erica Weiner from Michael Kors.

Clothing company Superdry designs and markets thousands of apparel products and accessories every year, and Sweeting said part of his role is to “encourage designers to think about what they’re designing” and whether it’s deserving of protection.

Given that products are designed nine months before they go to market, Superdry’s in-house counsel has to facilitate and manage the relationship between the designers, marketers, and legal team very closely.

He also works with the events team on product launches, especially when they’re planning on “making a big splash at a fashion show”, which has ramifications in terms of public disclosure.

An additional complication is the nature of the fashion industry: it is “governed by trends” which means it’s very hard to be innovative, explained Sweeting. It’s also important to run a “very robust clearance structure” when creating on-trend products and be “very conscious of rights” which already exist in the industry.

“The downside of getting something like this wrong could be costly,” Sweeting added.

He said the company received only three cease and desist letters in FY2017, but suffered more than 300 “copycat issues” during the same period.

Hinds-Payne agreed that copycat issues are a major issue for brands whose look centres on design.

“The prints have a life of their own” she said, discussing Cath Kidston’s quirky products. The main element of Cath Kidston’s brand “obviously centres around the prints; the prints are everything”, Hinds-Payne continued, explaining that “that’s where we spend our budget”.

But Hinds-Payne has to “cherry pick” where to register designs and relies on unregistered designs for a wide variety of things, she explained.

Given that the quirky prints are “central” to the brand, it’s incredibly damaging when a third party uses them. Hinds-Payne said you can currently buy tea towels featuring counterfeit Cath Kidston prints in Chile, but the brand itself hasn’t yet reached the country.

Hinds-Payne suggested it is often sensible to “file more broadly” than in the territories you intend to sell in within the near future, a position which was echoed by Weiner of handbag designer Michael Kors.

Weiner said the biggest difficulty can be “knowing what to apply for”, particularly given Michael Kors’ production of around 1,600 handbag designs per year. She said it’s a “difficult thing to assess” but often starts by looking for which products are popular and most likely to be counterfeited.

She said the brand has recently started to register more for “counterfeit and enforcement purposes”, and Michael Kors has found the ability to seize infringing goods as they go through customs a particularly useful tool.

“Counterfeiters are getting smarter and smarter every day,” according to Weiner. She said manufacturers ship plain handbags separately to metal badges bearing the famous ‘MK’ mark, or import products that look identical to that of Michael Kors but don’t actually contain the mark.

INTA’s Power of Design conference finished yesterday, February 27.

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27 February 2018   Steve Rowan, divisional director of trademarks, tribunals and designs at the UK Intellectual Property Office, explained yesterday at INTA’s Power of Design conference in London that the IPO had received 1,000 design filings in just one week.
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