Trademark, Design and Copyright Update For Fashion Brands - K&L Gates

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Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
Luxury & Fashion Webinar Series – Facing the Future
                                                          March 21, 2019

                                                          Trademark, Design and Copyright
                                                          Update For Fashion Brands
                                                          Susan Kayser, Friederike von Brühl, Serena Totino, Anaïs Ligot,
                                                          Simon Casinader, Savannah Hardingham

© Copyright 2019 by K&L Gates LLP. All rights reserved.
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
TODAY‘S PRESENTERS – A WARM WELCOME

    Washington DC                       Berlin                     London
  Susan Kayser, Partner     Friederike von Brühl, Partner   Serena Totino, Associate

           Paris                                                    Melbourne
                                    London
   Anaïs Ligot, Associate                                        VIA RECORDING:
                                Simon Casinader,
                                  Sr. Associate                Savannah Hardingham,
                                                                      Partner
                                    klgates.com                                        2
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
OVERVIEW OF TOPICS

 –   U.S. Issues and Cases
      Proving Irreparable Harm Continues To Evolve
      Blurring The Line In Using Celebrity Names Or Images
      Parody Or Infringement - How Funny Does It Need To Be?
      U.S. Supreme Court Weighs in on IP Issues
 –   EU Directive 2015/2436
 –   EU Issues and Cases
 –   Brexit
 –   Australia Issues and Cases
      Copyright protection for clothing
      Google Ads and trade mark infringement

                                    klgates.com                 3
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
OVERVIEW OF TOPICS

 –   U.S. Issues and Cases
      Proving Irreparable Harm Continues To Evolve
      Blurring The Line In Using Celebrity Names Or Images
      Parody Or Infringement - How Funny Does It Need To Be?
      U.S. Supreme Court Weighs in on IP Issues
 –   EU Directive 2015/2436
 –   EU Issues and Cases
 –   Brexit
 –   Australia Issues and Cases
      Copyright protection for clothing
      Google Ads and trade mark infringement

                                    klgates.com                 4
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
U.S. ISSUES AND CASES –
“PROVING” IRREPARABLE HARM

Irreparable Harm Needed for Injunctive Relief
 ‒   May 2006 – eBay v. MercExchange – U.S. Supreme Court rejects
     “presumption” in patent cases
 –   2014
      Ninth Circuit – Herb Reed Enterp. v. Florida Entertainment Mgmt. –
       plaintiffs in trademark actions must show irreparable harm (no
       presumption)
      Third Circuit – Groupe SEB USA Inc. v. Euro-Pro Operating LLC –
       “permissable inference” of irreparable harm
      Supreme Court did not accept cert in Herb Reed
 –   2014 – 2018
      Continued split requiring “proof” of irreparable harm, “inferences”, or
       middle ground – some “proof”

                                      klgates.com                                5
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
U.S. ISSUES AND CASES –
PROVING IRREPARABLE HARM CONTINUES TO EVOLVE
                                       adidas v. Skechers*
                                            9th Circuit

adidas asserted trade dress for Stan Smith design:
  –    three perforated stripes on the body of the shoe,
  –    prominent heel tab, and
  –    "a particularly flat sole," among other elements

 Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)

                                                 klgates.com             6
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
U.S. ISSUES AND CASES –
THE STAN SMITH v. THE SKECHERS ONIX

adidas* proved irreparable harm:
  1. Consumer surveys
  2. Extensive marketing efforts
  3. Controlled supply of Stan Smiths available for purchase

 Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)

                                                 klgates.com             7
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
U.S. ISSUES AND CASES –
THE STAN SMITH v. THE SKECHERS ONIX

adidas built a specific reputation around the Stan Smith with “intangible
benefits”
  –    Extensive and targeted advertising
  –    Unsolicited media
  –    Survey
  –    Controlling Supply

 Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)

                                                 klgates.com                8
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
U.S. ISSUES AND CASES –
THREE STRIPE MARK v. SKECHERS CROSS COURT

adidas failed to show irreparable harm

             Three-Strip Mark                                  The Skechers Cross Court

 Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)

                                                 klgates.com                              9
Trademark, Design and Copyright Update For Fashion Brands - K&L Gates
U.S. ISSUES AND CASES –
THREE STRIPE MARK v. SKECHERS CROSS COURT

Evidence of Loss of Control over Business Reputation and Damage to Goodwill
= Irreparable Harm

Provided “Concrete Evidence” in the Record

Post-sale confusion and “value” brand arguments not sufficient
 – Not sufficient evidence that Skechers had less favorable reputation
 – No evidence of consumer perception

                                   klgates.com                                10
U.S. ISSUES AND CASES –
THREE STRIPE MARK v. SKECHERS CROSS COURT

Judge Clifton’s Dissent:
  Lesser quality imitator could harm value of prestige brand

Record evidence to support irreparable injury
 – Employee testimony: adidas is “premium sports brand” and Skechers is
    “value brand”
 – Value of adidas’ mark
 – Investment
 – Quality control

                                   klgates.com                            11
U.S. ISSUES AND CASES –
TAKEAWAYS ON PROVING IRREPARABLE HARM

 –   Venue matters
 –   “Prestige” v. “Lower Quality”
 –   Employees ≠ Consumer Perception
 –   Advertising
 –   Unsolicited media
 –   Controlling Supply
 –   Surveys

                                     klgates.com   12
U.S. ISSUES AND CASES –
BLURRING THE LINE IN USING CELEBRITY NAMES OR
IMAGES
Use of celebrity’s name might be legal even
when clearly chosen to capitalize off
famous singer’s name

  –    Feyoncé Inc. selling T-shirts and other
       goods featuring “Feyoncé”
  –    References Beyoncé’s 2008 “Single
       Ladies” track

 Knowles-Carter et al. v. Maurice et al., 1:16-cv-02532 (S.D.N.Y.)

                                                  klgates.com         13
U.S. ISSUES AND CASES –
BEYONCÉ v. FEYONCÉ

  –    Use of letter “F” in “FEYONCÉ” was a
       play on words to sound like “fiancé”
  –    A pun the court found could dispel
       consumer confusion
  –    SJ and a permanent injunction denied
  –    Case dismissed
  –    Number of FEYONCÉ items currently for
       sale by third parties

 Knowles-Carter et al. v. Maurice et al., 1:16-cv-02532 (S.D.N.Y.)

                                                  klgates.com         14
U.S. ISSUES AND CASES –
PARODY OR INFRINGEMENT - HOW FUNNY DOES IT
NEED TO BE?

 Louis Vuitton Malletier SA v. My Other Bag Inc., 1:14-cv-03419 (S.D.N.Y.)

                                                 klgates.com                  15
U.S. ISSUES AND CASES –
PARODY OR INFRINGEMENT - HOW FUNNY DOES IT
NEED TO BE?

                    klgates.com              16
U.S. ISSUES AND CASES –
LOUIS VUITTON v. MY OTHER BAG

A parody must convey two simultaneous and contradictory messages:
   –   that it is original
   –   but also that it is not the original and is instead a parody
   –   MOB met this standard

 Louis Vuitton Malletier SA v. My Other Bag Inc., 1:14-cv-03419 (S.D.N.Y.)

                                                 klgates.com                  17
U.S. ISSUES AND CASES –
LOUIS VUITTON v. MY OTHER BAG

 –   “My Other Bag is a…” = a designation of source
        Makes clear that MOB’s tote bag is not a LV-branded bag but merely
         a parody
 –   LOC = extremely low
 –   MOB's parodic use of LV's designs:
        produces a “new expression [and] message”
        constitutes transformative use

                                    klgates.com                               18
U.S. ISSUES AND CASES –
TAKEAWAYS

 –   Parody part of initial confusion assessment
 –   Play on Words
 –   Merely co-opted the mark? Or repurposed it?
 –   Third Party Use
 –   Negative Press / “Bullying” Charges Against Big Brands

                                    klgates.com               19
U.S. ISSUES AND CASES –
U.S. SUPREME COURT RESOLVES CIRCUIT SPLIT ON
COPYRIGHT REGISTRATION REQUIREMENT
  –    Supreme Court unanimously held: copyright
       owners must obtain a registration from the
       U.S. Copyright Office prior to filing an
       infringement action
  –    Impact: likely to be a flood of copyright
       applications at the U.S. Copyright Office
          low cost to file
          average seven-month wait time to receive
           registration

 Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (slip op., March 4, 2019).

                                                  klgates.com                                          20
U.S. ISSUES AND CASES –
FOURTH ESTATE PUBLIC BENEFIT CORPORATION v.
WALL-STREET.COM
Brands in the luxury goods and fashion industries should routinely file
copyright applications
  –    Fashion companies regularly create seasonal designs used on handbags
       or clothing (floral prints, animal designs, and other pictorial
       features/arrangements)
  –    Packaging designs may be protectable through copyright
  –    Notorious infringers frequently create replicas of designs, and brands
       need to be armed and ready with copyright registrations for immediate
       action upon learning that the brand’s design has been copied
  –    Registration = prerequisite for statutory damages and attorneys’ fee

 Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (slip op., March 4, 2019).

                                                  klgates.com                                          21
U.S. ISSUES AND CASES –
DEFINING RECOVERABLE COSTS IN COPYRIGHT
LITIGATION
The Supreme Court recently determined that “full costs” under § 505 of the
Copyright Act did not authorize the appellate court to award litigation expenses
beyond those specified by Congress in the general costs statute
  –   Not included: expert fees, consultant fees, and electronic discovery costs
  –   Included:
      1. clerk and marshal fees
      2. transcript fees
      3. printing and witness fees and costs
      4. exemplification and copying fees
      5. docket fees
      6. compensation of court-appointed experts and interpreters

 Rimini Street, Inc. v. Oracle USA, Inc. 586 U.S. ___ (slip op., March 4, 2019).

                                                  klgates.com                       22
OVERVIEW OF TOPICS

 –   U.S. Issues and Cases
      Proving Irreparable Harm Continues To Evolve
      Blurring The Line In Using Celebrity Names Or Images
      Parody Or Infringement - How Funny Does It Need To Be?
      U.S. Supreme Court Weighs in on IP Issues
 –   EU Directive 2015/2436
 –   EU Issues and Cases
 –   Brexit
 –   Australia Issues and Cases
      Copyright protection for clothing
      Google Ads and trade mark infringement

                                    klgates.com                 23
EU DIRECTIVE 2015/2436 –
HARMONIZATION OF EU TRADEMARK REGISTRATION
PRACTICE
EU Directive 2015/2436

Aims
    Strengthening TM owners’ rights
    Harmonization of EU TM systems

Timing
     Implementation deadline: January 14, 2019
     Almost half of the member states have not implemented yet!

                                  klgates.com                      24
EU DIRECTIVE 2015/2436 –
HARMONIZATION OF EU TRADEMARK REGISTRATION
PRACTICE
German Trademark Modernization Act (14 January 2019)

New registration options
    Before: only graphic display; now: any form of display!
    Licenses

New technical framework
    QR-Code on TM certificate
    Use of key words for TM research

New TM types
    Sounds, animations, holograms
    Certification marks

                                    klgates.com                25
EU DIRECTIVE 2015/2436 –
HARMONIZATION OF EU TRADEMARK REGISTRATION
PRACTICE
Certification Mark

Guarantee for certain characteristics of the goods/services
    Applicants provide a statute
    Reliability

Relevance for fashion industry
     Guarantee for standards of material, fabrication, quality
     e.g. Fair Trade Rules and Environmental Protection

                                    klgates.com                   26
OVERVIEW OF TOPICS

 –   U.S. Issues and Cases
      Proving Irreparable Harm Continues To Evolve
      Blurring The Line In Using Celebrity Names Or Images
      Parody Or Infringement - How Funny Does It Need To Be?
      U.S. Supreme Court Weighs in on IP Issues
 –   EU Directive 2015/2436
 –   EU Issues and Cases
 –   Brexit
 –   Australia Issues and Cases
      Copyright protection for clothing
      Google Ads and trade mark infringement

                                    klgates.com                 27
EU ISSUES AND CASES –
CJEU – JUDGMENT C-163/16 LOUBOUTIN

Description of Trademark Registration EU
008845539:

“The trademark consists of the color red
(Pantone 18.1663TP) applied to the sole of a
shoe as shown (the outline of the shoe is
therefore not part of the trademark but serves
to show the positioning of the trademark).”

Notion of “shape”, Article 3(1)(e)(iii)
Directive 2008/95:

”A set of lines or contours that outline the
product concerned.”

                                       klgates.com   28
EU ISSUES AND CASES –
FERRAGAMO v. RIPANI & VAL VIBRATA

    FERRAGAMO’S TRADEMARK                       RIPANI & VAL VIBRATA

 Italian Supreme Court – 2018

                                 –klgates.com                          –29
EU ISSUES AND CASES –
COURT OF MILAN

Ferragamo filed a lawsuit agaist Ripani and Val
Vibrata claiming:
 –   Infringement of its iconic «omega» trade
     marks
 –   Unfair competition

The Court of Milan decided in Ferragamo’s favour

                                    klgates.com    30
EU ISSUES AND CASES –
COURT OF APPEAL

2013 – The first instance decision was overturned:

 –   Similarity does NOT imply likelihood of confusion in the market
 –   Ripani & Val Vibrata’s signs held an instrumental function, while
     the Ferragamo trade mark has an ornamental function

                                    klgates.com                          31
EU ISSUES AND CASES –
THE ITALIAN SUPREME COURT

Marks with reputations should be protected:
 ‒ Independently from the likelihood of confusion
     of the relevant public
 ‒ If the infringing mark takes unfair advantage of,
     or is detrimental to, the distinctive character or
     repute of the earlier mark

                    STAY TUNED…
       Court of Appeal will have to decide the case
     taking into account the reputation of the earlier
                           mark

                                      klgates.com         32
EU ISSUES AND CASES –
LANDOLL v. MECS SRL

   LANDOLL’S TRADE MARK                           MECS SRL

                                          Unauthorised reseller of NASHI
   SELECTIVE DISTRIBUTION                 products on its website and on a
        AGREEMENT                          third party online marketplace

                                                   PRINCIPLE OF
                                                   EXHAUSTION

 Court of Milan – 2019

                            klgates.com                                      33
EU ISSUES AND CASES –
PRINCIPLE OF EXAUSTION

  A trade mark owner may not oppose the further commercialization of its
       branded goods that are distributed in the EEA with its consent

                unless there are LEGITIMATE REASONS:

      –   Conditions of the goods are changed or impaired
      –   Legitimate selective distribution agreement in place

                                  klgates.com                              34
EU ISSUES AND CASES –
COURT OF MILAN

PRELIMINARY INJUCTION:

 ‒   Principle of exahustion does not apply
 ‒   Selective distribution agreement may be a
     «legitimate reason»
 –   Infringement of Nashi Trade mark
 –   Withdrawal of Nashi’s products from the
     market within 3 days + legal costs
 –   Publication of the preliminary injuction on
     the the reseller’s homepage for 30 days

                    Will the Court of Milan uphold this decision?
               Will this decision be persuasive for other EU Courts?

                                      klgates.com                      35
EU ISSUES AND CASES –
WHAT IS A SELECTIVE DISTRIBUTION SYSTEM?

“A distribution system where the supplier undertakes to sell the contract goods
…, either directly or indirectly, only to resellers selected on the basis of
specified criteria

and

where these resellers undertake not to sell such goods …to unauthorized
resellers within the territory reserved by the supplier to operate that system…”

                                                   Article 1(e), EC Regulation No. 330/2010
                                                    (“Vertical Block Exemption Regulation”)

                                     klgates.com                                              36
EU ISSUES AND CASES –
HOWEVER…

Many luxury brands already operate a
“DE FACTO” selective distribution system
BUT unless structured in accordance with EU laws:
  –   May not be legally enforceable – so of little/no protective value to brand
  –   May include terms or practices which expose the company to significant
      legal risk (see Guess case)
         Cross-sale restrictions?
         Territory restrictions?
         Online sales restrictions?
         Resale pricing pressures?

                                       klgates.com                                 37
EU ISSUES AND CASES –
LIONEL MESSI v. EUIPO & J.M.-E.V. E HIJOS SRL

                               Are these trademarks similar?

                           Trademark
        Action                                                     Opposed by
                       registration filed by

         Party                   Messi                 J.M.-E.V. e hijos SRL’s prior trademark

                                                        Word trademark      Word trademark
      Trademark                                          “MASSI” No          “MASSI” No
                                                          3436607              414086

                                    9
                                                                                    9
       Classes                     25                         25
                                                                                   28
                                   28

 Court of the EU – 26 April 2018 No T-554/14

                                                klgates.com                                      38
EU ISSUES AND CASES –
LIONEL MESSI v. EUIPO & J.M.-E.V. E HIJOS SRL

                               Are these trademarks similar?
    –    According to the Court of the EU:
          Visually: Average degree of similarity
          Phonetically: Strong degree of similarity
          Conceptually: Different since Lionel Messi is famous for any average
            consumer of sports goods

    –    Decision of the Court of the EU:
          No likelihood of confusion
          The relevant public will associate the term “Messi” with the name of
            the football player, not with the trademark “Massi”

 Court of the EU – 26 April 2018 No T-554/14

                                                klgates.com                       39
EU ISSUES AND CASES –
CROCS v. EUIPO AND GIFI DIFFUSION

                               “Unluxury” shoes – Take 1

                                  Design registration         Declaration of
                  Action
                                       filed by                invalidity by

                   Party                    Crocs              Gifi Diffusion

                  Design                                            

 Court of the EU – 14 March 2018 No T-651/16

                                                klgates.com                     40
EU ISSUES AND CASES –
CROCS v. EUIPO AND GIFI DIFFUSION

                               “Unluxury” shoes – Take 1

   –    Considering the three disclosure events: The Crocs’ design had been
        made available to the public prior to the 12-month period preceding the
        date of priority claimed
   –    No demonstration by Crocs that three disclosure events could not:
           reasonably have become known
           in the normal course of business
           to the circles specialized
           in the sector concerned
           operating within the EU
   –    Decision: Lack of novelty

 Court of the EU – 14 March 2018 No T-651/16

                                                klgates.com                       41
EU ISSUES AND CASES –
BIRKENSTOCK v. EUIPO

                                “Unluxury” shoes – Take 2

                                      Trademark
                  Action                                     Refused by
                                  registration filed by

                   Party                 Birkenstock           EUIPO

                Trademark                                        

 Court of the EU – 13 Sept. 2018 No C-26/17

                                               klgates.com                42
EU ISSUES AND CASES –
BIRKENSTOCK v. EUIPO

                                “Unluxury” shoes – Take 2

Criteria for distinctive character for surface patterns
   –   Criteria for trademarks that coincide with the appearance of the goods is
       applicable to surface patterns trademarks.
           When the use of a pattern is unlikely in the light of the nature of the
            products at issue -> no coincidence with the goods and services =
            distinctive trademark
           When the use of a surface pattern for fashion items is made up of
            elements which are repeated regularly and can be extended ad
            infinitum, it lends well to being used as a surface pattern -> it
            coincides with the goods and services = no distinctive trademark

 Court of the EU – 13 Sept. 2018 No C-26/17

                                               klgates.com                            43
OVERVIEW OF TOPICS

 –   U.S. Issues and Cases
      Proving Irreparable Harm Continues To Evolve
      Blurring The Line In Using Celebrity Names Or Images
      Parody Or Infringement - How Funny Does It Need To Be?
      U.S. Supreme Court Weighs in on IP Issues
 –   EU Directive 2015/2436
 –   EU Issues and Cases
 –   Brexit
 –   Australia Issues and Cases
      Copyright protection for clothing
      Google Ads and trade mark infringement

                                    klgates.com                 44
BREXIT –
WHAT DOES IT MEAN FOR IP?
– …
   …

                     klgates.com   45
BREXIT –
WHEN?

           klgates.com   46
BREXIT –
DESIGNS

 –   No loss of rights in UK due to Brexit
        UK registered and unregistered designs
          Unchanged
        EU registered designs
          Equivalent rights to be created in UK
        Pending EU design applications
          Priority for UK applications
        Continuing Unregistered Designs
        Supplementary Unregistered Designs
 –   Inability to rely on UK rights in the EU post Brexit

                                   klgates.com              47
BREXIT –
DISCLOSURE OF DESIGNS

                   klgates.com   48
BREXIT –
TRADE MARKS

 –   No loss of rights in UK due to Brexit
        UK registered and unregistered trade marks
          Unchanged
        EU registered trade marks
          Equivalent rights to be created in UK
        Pending EU trade mark applications
          Priority for UK applications
 –   Inability to rely on UK rights in the EU post Brexit

                                     klgates.com            49
BREXIT –
ENFORCEMENT/OPPOSITIONS

 –   UK proceedings based on UK rights
      Unchanged
 –   EU proceedings based on EU rights
      Unchanged
 –   UK proceedings based on EU rights
      Will proceed on basis of newly created rights
 –   EU proceedings based on UK rights
      Terminated
      Possibility for new UK proceedings if relevant
 –   Existing EU wide injunctions will still apply in UK
 –   New EU wide injunctions from UK Courts or including UK not possible

                                     klgates.com                           50
BREXIT –
IP AGREEMENTS

 –   “Future proofing” required
 –   License Territory – EU, Europe, country list
 –   Governing law and dispute mechanism
 –   Diligence existing material settlement and co-
     existence agreements before Brexit day
 –   Have Brexit as a live issue for all new agreements and term
     sheet discussions

                                   klgates.com                     51
OVERVIEW OF TOPICS

 –   U.S. Issues and Cases
      Proving Irreparable Harm Continues To Evolve
      Blurring The Line In Using Celebrity Names Or Images
      Parody Or Infringement - How Funny Does It Need To Be?
      U.S. Supreme Court Weighs in on IP Issues
 –   EU Directive 2015/2436
 –   EU Issues and Cases
 –   Brexit
 –   Australia Issues and Cases
      Copyright protection for clothing
      Google Ads and trade mark infringement

                                    klgates.com                 52
AUSTRALIA ISSUES AND CASES –
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA

 –   No unregistered design right in Australia
 –   Copyright cannot generally be relied
     upon to protect garment cut
 –   Copyright can be relied on to protect
     fabric prints & other 2D designs applied
     to garments

                                   klgates.com   53
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –
INFRINGEMENT OF COPYRIGHT

– Works that reproduce the whole or a “substantial part” of a copyright work,
  without authority, will infringe
– Two elements:
    Reference/ copying
       – Established by evidence of direct copying or inferred if access to the
          copyright work was possible and designs are similar
    Substantial part
        – Quality rather than the quantity of the part taken – no “safe” amount
          to copy
        – Is the part taken an ‘essential’, ‘material’ or ‘recognisable’ part of the
          copyright work?

                                     klgates.com                                       54
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –
SEAFOLLY v. FEWSTONE (CITY BEACH)

  City Beach found to have infringed copyright in two original Seafolly
                 fabric prints and an embroidery design

                                  klgates.com                              55
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –
PRINTS

   Seafolly’s English Rose                 City Beach’s Rosette/ Rosario

                             klgates.com                                   56
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –
PRINTS

   Seafolly’s Covent Garden                 City Beach’s Sienna

                              klgates.com                         57
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –
EMBROIDERIES

     Seafolly’s Senorita                 City Beach’s Richelle

                           klgates.com                           58
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –
FINDINGS

 –   City Beach infringed copyright in all 3 works

 –   Ordered to pay damages – AU$250,000
 – Injunctions – cease making/selling the garments

                                    klgates.com      59
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –
WHY WAS SEAFOLLY SUCCESSFUL?

 –   Seafolly kept design files
 –   Evidence of direct copying by City Beach
 –   Generous approach to “substantial part” (although many differences)
 –   Once copying proven, difficult to avoid “substantial part” and infringement

                                    klgates.com                                    60
AUSTRALIA ISSUES AND CASES –
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT
Keyword search

Sourced from: https://www.sharetribe.com/academy/get‐started‐google‐adwords‐marketplace/

                                        klgates.com                                        61
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –
VEDA ADVANTAGE LTD v. MALOUF GROUP
ENTERPRISES (2016)

TM Infringement                               Not TM Infringement

Use of the trade mark in the text of a        Merely selecting and bidding on a trade
sponsored link as a badge of origin and       mark in Google Ads on its own, or in
in relation to the same or similar            combination with another word or in any
goods/services for which the trade mark       format
is registered
                                              Descriptive search terms or descriptive
                                              use of a TM

                                          klgates.com                                   62
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –
ACCC v. TRADING POST AUSTRALIA (2011)

Use of a competitors’ business name as an Adword can constitute misleading
and deceptive conduct

– When Internet users conducted a search for “Kloster Ford”, the following
  sponsored link appeared:

   Kloster Ford

   www.tradingpost.com.au New/Used Fords – Search 90,000 + auto ads online.
   Great finds daily!

                                             klgates.com                      63
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –
GOOGLE v. ACCC (2013)

 –   Google itself is not liable
 –   Liability rests with AdWords subscriber
     (need to sue subscriber)
 –   Google will no longer remove keywords at trade mark owner’s request

                                   klgates.com                             64
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –
KEY TAKEAWAYS

 –   Conduct regular Google searches of your trade marks
 –   You may use descriptive terms or use a trade mark in a way that is
     descriptive
 –   Do not use another’s trade mark (or similar mark) in the Google Ad or
     sponsored link of a Google Ad

                                  klgates.com                                65
PLEASE DO NOT HESITATE TO BE IN TOUCH!

     Susan Kayser                            Friederike von Brühl
     Washington DC                           Berlin
     T +1.202.778.9421                       T +49.(0)30.220.029.415
     susan.kayser@klgates.com                friederike.bruehl@klgates.com

     Serena Totino                           Anaïs Ligot
     London                                  Paris
     T +44.(0)20.7360.8145                   T +33.(0)1.58.44.1529
     serena.totino@klgates.com               anais.ligot@klgates.com

     Simon Casinader                             Savannah Hardingham
     London                                      Melbourne
     T +44.(0)20.7360.8256                       T +61.3.9205.2043
     simon.casinader@klgates.com                 savannah.hardingham@klgates.com

                                   klgates.com                                     66
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