Manuela Macchi and Emily Weal

On 19 April 2016, two members of Keltie’s Design and Trade Mark Team, Emily Weal and Manuela Macchi, hosted a panel at the Managing Intellectual Property (MIP) Luxury Brand & Retail Forum in New York. Please see here for the conference programme.

The conference was attended mostly by New York based attorneys representing both US and European luxury and retail brand owners as well as by a good number of US private practitioners and a few European attorneys.

The Keltie-hosted panel included also Lynn Schreier, Senior Intellectual Property Counsel of the crystals, jewellery and accessory manufacturer Swarovski and brought to the delegates a European perspective on design protection, pre-product launch design clearance and 3D trade marks as a complement to design protection.

Emily Weal explained to the audience the forms of design protection (registered and unregistered) available in the EU and drew the attention of delegates towards things to bear in mind when a US-originating design fling strategy includes plans for design protection in Europe. In particular, US design owners should bear in mind that to acquire EU unregistered design rights, the first disclosure of the design must take place in the EU. This means that a first public disclosure of a design in the US is likely to preclude that design from unregistered design protection in Europe. She also highlighted some differences in US and European registered design practice using several examples from the Luxury Goods sector. Finally, she discussed the recent ‘Trunki‘ case and summarised that US design owners should try to use line drawings for EU filings where colour and ornamentation is not intended to be a part of a design.

Manuela Macchi advocated the case for 3D trade mark registration as a complement to design protection because of the obvious advantage of unlimited renewal (as opposed to the max. 25 years of EU registered designs). This is particularly applicable to luxury brands that bring to the market iconic items whose desirability lasts down the decades.  Also, the test for trade mark infringement can at times be easier to meet than registered design infringement as the ‘test customer’ for trade mark infringement is the average consumer as opposed to the more discerning informed user of registered design infringement. The 2013 ‘Bottega Veneta’ cases in relation to EUTM Appl. Nos. 6632608 (Hobo Bag – refused), 6632566 (Cabat Bag – refused – see decision here, available only in French or Italian) and 6632624 (Knot Clutch Bag – accepted), show that good quality imaged of the 3D mark (in this case a representation of the handbag itself) and a description of the key features for which protection is sought might narrow the scope of trade mark protection, but get the 3D mark over the EUIPO absolute grounds examination hurdle.

Lynn Schreier gave an overview of how Swarovski approaches the pre-launch design clearance of products for watches and jewellery in particular – a process that is close to the hearts of Keltie’s design team! Worthy of particular note were the discussions around the time frame to which the in-house legal team needs to work to meet the deadlines of the designers and of the way in which Swarovski has effectively integrated the clearance work into its business processes. Lynn also discussed the criteria adopted in selecting which designs to clear and which not in the context of a company that launches hundreds of products a year.

The programme of the conference in general was excellent and so was the caliber of the speakers. The Keltie team found particularly interesting some of the points discussed:

• In the panel ‘Protecting Your Brand in the 21st Century’, Wendy Kaplowitz, assistant general counsel at Elizabeth Arden, discussed the challenges of backing current market trends, in particular celebrity fragrances with IP protection and key licence provisions that are celebrity specific, such as morality clauses and approval rights. From our UK perspective we found interesting her comments on the Rhianna v Topshop case, which she referred to as an example of how sometimes the law is not adequate to enforce celebrities’ rights. [The UK legal system does not recognise image rights and celebrities try to resort to the law of passing off, amongst other remedies, to protect their image. Read more here.]

• Aaron Weiss, Legal Counsel at Fast Retailing, and Diana Arredondo Ramirez, Senior IP Counsel at Televisa, gave very useful practical tips on how to navigate the pitfalls of social media and how to handle things when a campaign backfires. Diana gave a particularly interesting example of a situation in which Televisa dealt with a viral campaign about its streaming service ‘Blim’. The original ‘meme’ had compared Blim’s offering with that of Netflix, intending to show Blim in a less positive light than its competitor. Televisa cleverly turned the meme on its head, using it to demonstrate instead the racial diversity of Blim’s offering compared to that of Netflix. Aaron had some interesting practical insights into ensuring that social media campaigns and celebrity endorsements stay the right side of advertising laws, and in particular how to approach agreements with celebrities and brand ambassadors.

• On a China-focussed panel, Ainlsee Schreiber, Vice-president and Trademark Counsel at Starwood Hotels brought several case studies of how her company dealt with counterfeit hotels in China. We were treated to some entertaining examples of ‘dodgy dives’ attempting to masquerade as high-class hotels, and insightful tips for dealing with counterfeiting in China, in particular the need to engage with officials in China on a highly localised level. Talin Haroutunian gave several interesting examples of dealing with trade mark squatters, including the famous Jordan/Qiaodan dispute.

• Finally,  Alexandra Brodie, Partner at Gowling WLG, discussed the fluidity of the concept of wearable technology (it is not just  the increasingly ubiquitous activity monitors and smart watches, but it gets as sophisticated as smart fabrics used by fashion brands) and the how brand owners should ‘get their ducks in a row’ from the outset, in particular when partnering a technology company, starting from whether the join venture is a joint development agreement of a licence of technology. Alexandra also highlighted several fields of law that could be relevant to wearable tech that luxury brands might not be used to encountering: in particular, patent protection for technical aspects and data protection in respect of data stored, processed and potentially sold by smart devices. The Keltie team is very interested to see what the luxury goods sector has in store for wearable tech, and how it will use technology to enhance the aura of luxury in the future.

Manuela Macchi & Emily Weal  3 May 2016