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Fashionably Newsworthy

August 23, 2019

Contacts

Partners Richard Watts
Special Advisors Sarah Chapman
Senior Associates Sarah Lee, Raymond Scott

Intellectual property

With New Zealand Fashion Week just around the corner, we look back on a few IP controversies that arose in the fashion world this year.

Kim, oh no

Kim Kardashian West sparked claims of cultural misuse after announcing her new “Kimono” branded line of shapewear. This followed her company’s US trade mark applications for KIMONO and KIMONO INTIMATES, covering goods such as underwear, lingerie, bags, perfume, and related retail services.

Kimono is a form of traditional Japanese dress dating back hundreds of years. The significance of kimono to Japanese culture was emphasised by Japan’s trade minister, who reacted to Kardashian West’s plans by urging US trade mark officials to examine the case appropriately. The mayor of Kyoto also reportedly sent an open letter to Kardashian West, asking her to re-consider using the kimono word.

Kardashian West’s announcement also received mixed responses online. Over 100,000 people signed an online petition requesting that Kardashian West use a different name, with the hashtag #KimOhNo appearing on social media.

Kardashian West has reportedly now decided to launch her line under another name.

FUCT Fashion

American clothing designer Erik Brunetti recently succeeded in a case to protect his FUCT brand. The brand is an abbreviation of “Friends U Can’t Trust” and a cheeky allusion to a certain expletive.

The US Patent & Trademark Office raised objections against Brunetti’s trade mark application for FUCT, on the basis that it contravened the Lanham Act’s provisions relating to “immoral” and “scandalous” marks, and was therefore not registrable.

Brunetti appealed all the way up to the US Supreme Court, which sided with him in a majority decision. The Court held that the legislation preventing registration of “immoral” and “scandalous” marks was unconstitutional because it was a form of “viewpoint discrimination”, contrary to the First Amendment.

Brunetti’s case follows an earlier decision by the US Supreme Court relating to a trade mark application for The Slants, a name used by an Asian-American rock band. The Court in that case had similarly found that the Lanham Act’s provision preventing registration of “disparaging” trade marks was unconstitutional.

Made where?

In local fashion news, designer Adrienne Winkelmann came under double scrutiny earlier this year.

The Commerce Commission got involved over the country of origin labelling of Winkelmann’s garments. One such garment was reportedly labelled as “Styled by Adrienne Winkelmann, Made in Italy” but it also attached a price tag marked “Made in New Zealand”. The Commission advised Winkelmann’s company about its legal obligations, but decided not to investigate further.

A National Business Review investigation also revealed similarities between Winkelmann’s designs and those of European designers, including Edward Achour. Achour was reportedly considering what legal action might be available.

Grunge War

A court room stoush is set to develop between Marc Jacobs, the well-known US fashion designer, and Nirvana, LLC, which owns intellectual property relating to the rock band Nirvana.

A lawsuit filed by Nirvana, LLC alleges that garments from Jacobs’ 2018 Redux Grunge Collection infringes rights in Nirvana’s iconic yellow and black smiley face design. Nirvana, LLC has a US copyright registration for the smiley design t-shirt dating from the early 90’s, and the design was popularised through its use on merchandise.

The Nirvana t-shirt A t-shirt from Jacobs' Redux Grunge Collection

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Jacobs, having reportedly filed a motion to dismiss the lawsuit earlier this year, denies infringing. The motion asserts that while Jacobs was “inspired” by vintage Nirvana concert t-shirts, Jacobs’ design is a reinterpretation and is not similar. Jacobs also contends, amongst other things, that Nirvana, LLC is not the legitimate owner of the smiley face copyright registration, and that the copyright registration is invalid.

We look forward to seeing which party is still smiling at the conclusion of the proceedings.

Contributors olivia.coughlan@simpsongrierson.com