This article is authored by Md. Sami Rahman and Aparajita Banerjee, both pursuing their B.A. LL.B (Hons.) degree.
- Introduction
Luxury brands are associated with the quality, exclusivity and status provided in society. The brand which made the product can be identified by the trademark of the brand. Ensuring the protection of the trademark is necessary to protect their reputation and brand value. A trademark includes logos, slogans and a unique sign, which is an important asset that helps the customer distinguish from a counterfeit product. In the fashion industry, brand perception is everything; protecting a trademark is not just legal. It is important for business imperatives. This blog sheds light on how luxury brands protect their trademarks, highlights the high-profile legal battle all over the world and examines the ongoing threat of brand dilution due to counterfeit products.
2. The way luxury brands protect their trademark.
Trademark gives the luxury brand the exclusive right to use their distinctive marks in commerce; it helps the other company prevent other companies from selling the goods under the same or making some changes in the sign to confuse the customer. To protect the trademark of luxury brands and utilise trademark protection.
2.1 Registration of trademark
Many luxury brands prefer the registration of their trademarks in multiple jurisdictions to ensure that there is no counterfeiting. Brands prefer to register outside their home country but also in the countries where counterfeiting prevails. Registration ensures that their exclusive right to sell remains with the company and counterfeiting can be minimised. The scope of trademark registration is very broad and covers a range of asset brand names (e.g. Adidas), and logos (e.g. Nike). Even some luxury brand has specific trademark colors like Tiffany’s blue.
2.2 Giving trademark on licensing and monitoring.
Luxury brands can give their products to expand in the market. The licensing agreement allows luxury brands to expand their products which may include perfume and eye wear while maintaining control of the trademark and how to use it. By licensing to the selected partners brands can leverage their trademark for the new revenue sources without compromising on the quality of the product. Monitoring the trademark is necessary for the protection of the unauthorized use of the trademark. Many luxury brands spend heavenly in terms of tracking the unauthorized use of the trademark. This includes monitoring e-commerce platforms. To address counterfeiting on social media and in retail, advanced tools like AI algorithms are being deployed to track and report unauthorized uses swiftly, enhancing enforcement of intellectual property rights.
2.3 Quick action against the infringement.
Luxury brands have robust systems to track the infringements as luxury brands spend on tracking the infringement. The luxury brand, upon detecting any infringement, quickly pursued legal action to defend its trademark. Unauthorized users tried to halt the production and sale of the counterfeit goods. They demanded immediate injunction from the court to use the trademark and prevent harm to the reputation of the brand. Moreover, the brand demands compensation for the infringing loss of sale and reputation harm due to the infringement.
The luxury brand not only sues the small companies but goes deep into the matter and persuades legal action against the large companies if they find they are trying to confuse customers or brand dilution. It generally happens when the competition company try to resemble the product to the luxury brand product trademark, logos and design elements, potentially misleading consumers and diminishing the brand’s exclusiveness and distinctiveness in the marketplace.
3. Disputes regarding trademark disputes in luxury brands
The disputes regarding trademark disputes are not uncommon in luxury fashion brands as brands fiercely defend their trademarks to maintain the integrity and exclusivity of the brand integrity. High-profile cases mainly revolve around logo similarities, design imitation and unauthorised use of iconic brand elements. Some of the major high-profile cases.
3.1 Louis Vuitton (LV) vs Warner Brother (2011)
In this case, LV filled the case against the Warner brothers because of featuring the fake LV bag in the popular film named in (The Hangover II) the brand argued that the depiction of the counterfeit bag may confuse the buyer and lead to confusion in the mind of that it was genuine LV product this tarnished the image of the brand. The court dismissed the case. This case shows that artistic references are permitted in the film.
3.2 Christian Louboutin vs Yves Saint Laurent (2011)
In this case, Christian Louboutin is well known for the nature of red-soled shoes all over the world. The company sued the Yves company for the selling of the same red sole. Louboutin argued that red sole is the exclusive trademark of the brand that distinguishes it from others and makes it an exclusive brand. The court ruled that the Louboutin red sole can be protected as the trademark, but YSL can sell the shoes entirely red, including the sole. The case highlights the importance of distinctive design elements as a protect-able trademark in the fashion world.
3.3 Burberry vs Target (2018)
In this case, Burberry sued the target, alleging that the retailer had copied the iconic check pattern in many products, including the scarves and luggage. Burberry argued before the court that the target use of the distinctive plaid design, which is strongly associated with the luxury brand trademark infringement, could lead to the confusion of the customer. The case, although settled outside the court target, agreed to cease selling the contested product, the case shows how luxury brands take preventive measures to protect their trademark and exclusive to the brand.
4. Brand dilution and its threat
Brand dilution occurs at a time when unauthorized use weakens a trademark distinctiveness harming the luxury brand industry economy and reputation also. The counterfeiting industry has become a billion-dollar industry and has introduced fake products into the market successfully, like handbags and shoes. Counterfeit products of inferior quality can damage the reputation of the luxury brand. The rise of the super fakes further exacerbates trademark enforcement by closely assigning authentic products. To combat counterfeiting, luxury brands pursue litigation, collaborate with authorities, and adopt technology like RFID and blockchain. Moreover, giving awareness to the people to identify the fake product and its risk associated with it.
5. Conclusion
The Trademarks Act plays a crucial role in safeguarding luxury brands by protecting their intellectual property, ensuring their distinctiveness, and preserving their reputation in a competitive market. The threat of counterfeit products and brand dilution is on the rise; luxury brand activity registers trademark, monitors unauthorized use and pursues legal action to protect their identity. By using technology and awareness of the people, brands can combat counterfeit products, maintain brand value and reinforce the prestige of the product owing with a luxury brand.
References:
(1)https://www.linkedin.com/pulse/registering-trademark-discretionary-luxury-vivek-dahiya
(2)https://trademarkfactory.com/the-role-of-trademarks-in-building-a-competitive-advantage
(3)https://sagaciousresearch.com/blog/a-guide-to-trademark-monitoring
(4)https://www.uspto.gov/page/about-trademark-infringement
(7)https://cdas.com/louboutin-v-yves-saint-laurent-the-high-stakes-high-heels/
(8)https://www.retaildive.com/news/burberry-target-settle-trademark-dispute/540447/
FASHION LAW 
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