Good morning everyone. Hope you had a good week. For today’s IP news:
Ralph Lauren’s horse wins the race
Everybody knows about the iconic polo horse from the brand Ralph Lauren. Now the company was recently involved in a legal squabble with a Spanish company (Style & Taste SL) over who registered the polo horse as a trademark first.
The controversy started 5 years ago when this Spanish company, dedicated mostly to men’s fashion, filed an annulment action against Ralph Lauren arguing that they were the first company to register the polo horse trademark. According to the Spanish company, their trademark has been registered since 1997, 8 years before the US one, even though this last one is way more famous. Hence, the coexistence of both creates a risk of confusion for consumers.
In 2018, the EUIPO dismissed the request. The Spanish company tried to appeal in 2019, but the EUIPO’s decision was the same. The Board of Appeal pointed out that the trademark registration had expired in 2017. The 3rd time was not a charm in this case as the General Tribunal of the EU dismissed once again the claims. Before this Court, the Spanish company tried to argue that even though Spanish laws did not allow it to renew registration, it remained its property because it registered it much earlier, regardless of whether or not the trademark had expired.
These arguments did not convince the EU court, which concluded in its judgment that Style & Taste did not demonstrate that the use of a trademark can be prohibited on the basis of a drawing whose registration has already expired. Hence, once a trademark expires, anyone can apply for registration.
Copyright infringement in the fashion world: the Philipp Plein case
A few pieces from designer Philipp Plein’s Spring/Summer 2020 collection (https://www.plein.com/es/home/), that included skull-adorned face masks, studded and/or spiked leather jackets and over-the-knee boots are at the center of a copyright lawsuit. Indeed, Resurrect By Night (“RBN”), a streetwear art clothing brand based in New York, claims that Philipp Plein allegedly took its artwork and slapped it on expensive garments, and began selling them under the Philipp Plein brand name despite having never been authorised to do so.
RBN defines itself as a company where the owner “re-purposes and hand paints every unique piece, inspired by music, art and culture. The artist expresses his dream story on clothing. This process takes a garment from his vintage sourced collections and brings it back to life with something rare, fresh and new.” The company has become famous for its use of an unusual mix of media and techniques to create two and three-dimensional pieces. Unique pieces and unique drawings that have become, according to RBN, recognisable by the public, and have acquired a valuable reputation and goodwill.
Now, RBN argues that its unique artistic style and approach has been misappropriated by Plein, fully infringing U.S. copyright law. Specifically, RBN points to two designs that Plein allegedly misappropriated:
- A design featuring a muscular, skull-faced character raising clenched fists; and
- A design that features a blonde, skull-faced character in a short dress, above flames.
RBN claims that Plein engaged in the “unauthorized and unlawful” use of these two designs by reproducing them on apparel under the ‘Philipp Plein’ name and displaying and selling them. After noticing the infringement, RBN tried to send a cease-and-desist letter, to which no response was received.
This is all for this week. Have a nice day!
- Publication date
- 29 June 2021
- European Innovation Council and SMEs Executive Agency