The Importance of Branding in Fashion

Success in the fashion industry is more than just crafting beautiful designs, it's about selling. And the easiest way to sell clothing designs is with a good brand. Chanel, Gucci, Dior and Prada are iconic brands that immediately convey a message about the style and quality of the products.

Closer to home, to pick a few, Helen Cherry, Trelise Cooper, Zambesi (pictured left), World and Karen Walker have all worked hard to establish a distinctive brand identity These brands have been carefully nurtured to ensure that whenever they are used, they deliver a powerful message to consumers. It's easy to see why a "brand" is perhaps the single most valuable asset of a fashion firm - and one that successful firms are quick to protect!

Earlier this year, the media reported on shoe designer Jimmy Choo's - perhaps overkill - attempt to stop a New Zealand gift seller from using the brand "Kuchychoo" because of the perceived similarity between the brands. This action is a timely reminder that all fashion designers need to know how to protect the value of their brand and ensure that they avoid infringing another's intellectual property.

A registered trade mark provides the best form of protection for a brand. Once registered a trade mark gives the owner the exclusive right to use that trade mark for their goods. A trade mark will be registered if it is able to uniquely identify and distinguish one company's products from those of other traders. If the trade mark is descriptive or closely similar to another trade mark, registration will be refused. In New Zealand, trade mark law is like calling 'shotgun' – the first to apply generally has the first right to the trade mark.

Australian designer jeans label Tsubi learned this lesson the hard way. In 2006, Tsubi was named Australia’s hottest brand by the US glossy magazine W. Later that year, Tsubi found itself on the back foot, defending its brand against Tsubo in proceedings for trade mark infringement. Tsubo, a US shoe brand, registered the TSUBO trade mark in Australia in 2000, and more importantly, before Tsubi sought trade mark protection. The parties settled the dispute out of court, agreeing that Tsubi could keep its name in Australia, but would rebrand as Ksubi for the rest of the world.

Trelise Cooper also hit the media spotlight in 2005 during her lengthy legal battle with Arrowtown designer, Tamsin Cooper. In 2005, Trelise opposed the registration of the trade mark TAMSIN COOPER, filed by Tamsin, because Tamsin Coopers’s name, brand and logos were too close to her own label and would result in confusion. In 2007, Trelise increased the pressure, filing proceedings in the High Court on the basis of copyright, passing off and trade mark infringement.

 
The parties finally settled out of court in mid-2007, agreeing that both parties could continue to use their own name and each would refocus their energies on building their own individual brands. Ironically, because of the intense media substantial exposure given to the case, consumers are unlikely to ever confuse the two brands in the future.

As these examples show, a company should ensure that their proposed brand is free for use in the very early stages of developing a brand. They should also undertake searches of the trade marks register and the marketplace to check that they are free to use their proposed brand without infringing other’s rights. Given that the fashion industry in New Zealand is relatively small, infringement of another’s brand is not likely to go unnoticed. It can undo a lot of good work to have to re-brand a new clothing line just as you are starting to gain some brand recognition. If a chosen mark is free to use, you should seek to register the brand as soon as possible. For a relatively low cost, a trade mark registration can give you the confidence to invest in building a valuable reputation around your trade mark.

Like many other high-fashion companies, Gucci began as a small, family-owned company. The development of the Gucci empire was accompanied by significant investment in, and the protection of, the GUCCI brand. All fashion designers should be wary of losing the investment made in their brand, by delaying a trade mark application and losing out to another business who claims prior or greater rights. While it is always a balancing exercise for any business, and especially start-up businesses, a relatively small initial spend on trade mark protection can be a valuable investment in protecting against free riders and in enhancing future recognition and value in a brand.

By Rob Batty, Associate (rob.batty@simpsongrierson.com) and Nicola McCarthy, Solicitor Yr 2 (nicola.mccarthy@simpsongrierson.com), Simpson Grierson intellectual property team, March 2009.