It was interesting to read in the Financial Times Material World blog - @ftmaterialworld - about fashion designer Phillip Lim dealing with the problem of someone in China having already registered his name as a trade mark.
His solution was to invent a new brand, thus side-stepping the issue.
Shoosmiths' IP specialists have been involved in this sort of problem for the past five years or so, helping designers who find themselves in this predicament.
The problem stems from the moment the designer becomes 'known', which can result from sponsorship, collaboration with a well known retailer or brand, or someone famous wearing their designs.
Once the designer's name hits the press or - more likely nowadays - the internet, it is ripe for acquisition by someone else applying to register that name as a trade mark. This is rife in China.
Once the application for the 'designer name' is made, assuming it is in China, the only ways to stop it being registered and to get it back are:
- Oppose the application - this can take some time and cost quite a lot of money and, in order to have any chance of success, needs to be supported by evidence that your name is known in China. Such evidence usually consists of marketing material in magazines or online (but only available in China) and actual sales of your designs in China. Without quite a lot of this type of evidence, your argument that the 'applicant' has no right to your name, and has applied in bad faith, is likely to fail.
- Attempt to negotiate with the 'applicant' to withdraw the application - this rarely succeeds unless the designer is capable of paying a six figure sum. The 'applicants' generally own hundreds of 'designer names' and are in no hurry to sell them for a few thousand pounds. The small number of designers who do pay, are simply keeping the 'applicants' in the luxury that they have become accustomed to.
- The Phillip Lim method.
The best solution - the Phillip Lim method - is for the designer to apply to register his/her own name before anyone else does. This is easier said than done, and designers generally do not do it, usually due to lack of funds.
However, if an application to register the designer's name has been made by someone else, then it is imperative that it does not progress to registration. If it does, someone else owns the designer's name and can prevent the designer from selling, marketing, distributing or in any way dealing with goods bearing the designer's name in China. This could include manufacturing in China only for export - the designer's own goods effectively become 'counterfeit' in China.
Over the years, large Chinese department stores such as Lane Crawford have been asking designers to confirm that they own their own name in China otherwise they will not deal with them. It is when faced with someone else owning the registration for a designer's name in China that you have to consider the Phillip Lim solution.
Shoosmiths has been discussing this very solution with designers for the past five years in order to allow them to sell their goods in China and, at the same time, to devalue the registration that the third party has for their name.
Most fashion designers will focus on one type of fashion - clothing, footwear or jewellery - and most move into other types of fashion or accessories at a later stage.
In this way, we have suggested that designers consider creating a sub-brand for their accessories, since it keeps their main brand (usually their name) for their main, original focus, designs. It is the sub-brand we then suggest they use in China - and only China - for their main designs.
This gets around the registration in China of the designer's name, but also presents them with a chance to assess how the sub-brand is received and its marketability. If successful, the designer has some comfort that the sub-brand works, and can more easily start to use it for its intended purpose - accessories - elsewhere in the world.
This is a win-win situation for the designer, as it:
- enables them to test a sub-brand they were thinking of using anyway;
- allows them to sell their goods in China;
- devalues the registration of the designer's name (in China only); and
- might enable them to get back their name for a more reasonable sum in future.
Obviously, there is a lot of thought that must go into creating such a strategy, and there are many precautionary steps to follow before you can enter into it.
The message to designers, though, is: Do not despair. There is light at the end of the tunnel.