BIBA is back!

Times may be hard, but it's always nice to read a good news story for a change. Fashionista can't be the only person to notice that the legedary BIBA brand has been revived exclusively at House of Fraser. According to the Guardian, despite the current talk of spending custs and recession, the brand's relaunch has been a hit - with sales of more than £500,000 in the first fortnight.

The new range has been designed by Barbara Hulanicki, the founder of the original BIBA store in Kensington back in 1964. In fact the re-launch has gone so well, House of Fraser has suggested that they may launch stand alone stores. Let's hope the resurgence of the brand continues - it just goes to show that  certain brands can live on even without any trade, and be resuscitated with the right product. With the weather on the turn, Biba's faux-fur coats have caught Fashionista's eye!

Only CHANEL. Never Chanel-esque.

Fashionista has read negative commentary surrounding Chanel's publication in Womens Wear Daily of a notice of how its brand is to be used - and, in particular, not misused. But what about the benefits to brands of getting the message across as to how your brand should or should not be used?

Playing Devil's Advocate (no pun intended) to the negative commentary, Fashionista endorses Chanel's move.

Intellectual property rights are often a company's most valuable asset. For a fashion brand, its trade mark - its name - is everything. Fashion houses spend an immense amount of money, time and effort building up their brand, goodwill and reputation. Surely the last thing they want is for someone to rip it off or - worse - for their brand to become generic through misuse over time and so lose all value.

It happened to Sellotape, to Hoover; to Xerox. It is threatening to happen to Google. So it is surely a sensible move for any brand to stress that its name should not be considered generic. Coca-Cola did this a few years ago, running an advertising campaign which featured all the brands owns by the Coca-Cola Company. The purpose of a trade mark in the UK is to be able to distinguish the goods of one business from those of another. The brand name should not be used to refer to a particular "look" - even if the brand image is so strong that a particular look conveys the originating brand. This does not (or should not) make a brand generic. This makes it recognisable, powerful, iconic.


Rather than deriding Chanel for explaining its brand and seeking to protect it, Fashionista believes that this was a cautious, necessary step to take - if only to show the world that a brand is there and worth protecting. After all, if you don't police the use of your brand, you risk losing the rights you have to it. No doubt Chanel took the view that negative commentary now is less traumatic than lost or weakened rights. And the timing is great - with all the positive commentary surrounding the Coco Before Chanel film, how many are going to pay attention to gripes regarding brand use notices? Not this Fashionista.

Hobbs goes postal with new sub-brand

Word has reached Fashionista that womenswear retailer Hobbs is set to launch its new NW3 sub-brand this autumn with a view to attracting a younger and mother-and-daughter clientele. Her fashionable friends need no reminder that "NW3" is the old postal district for lovely, leafy, highly cultured Hampstead (the highest spot in north London) where Hobbs' first store opened. with 22 shops and an online presence, NW3 comes out with 90 pieces, rising to 120 pieces.

NW3 has not been officially used as a postal district since 1974, when the 15-year roll-out of United Kingdom postcodes was completed (how slowly things happened in the days before computers), so some Hobbs mums might recall its use but their daughters probably wouldn't.

The big issue troubling Fashionista is whether postal districts are registrable as trade marks. Hobbs (now of rather less fashionable NW1) has applied for registration of a series of two marks and its application has since been advertised. The company may have been advised to go for 'HOBBS NW3' and 'hobbs nw3' just in case NW3 by itself is regarded as descriptive (of goods coming from NW3), deceptive (for goods coming from elsewhere) or just plain lacking in distinctiveness. Either way, what's the betting that within no time the brand, if successful, will be shortened to 'NW3' to distinguish from Hobbs' non-NW3 range. This too has legal repercussions: a mark that is not used in the form in which it's registered might be vulnerable to revocation for non-use, but the constant use of 'NW3' by itself might earn it enough distinctiveness to be registrable in its own right. Strange things, trade marks!

Beverly Hills and the German shopping question

Is Beverly Hills known as a place to go shopping? This question recently troubled the Court of First Instance of the European Communities in Luxembourg in a decision, dated last December, that was published only last week.

Way back in January 1997 Giorgio Beverly Hills Inc (GBH) applied to register as a Community trade mark the words GIORGIO BEVERLY HILLS for, among other things, "clothing, footwear, headgear". In July 1998 WHG Westdeutsche Handelsgesellschaft mbH opposed this application, based on its existing registration for the word GIORGIO in Germany for "clothing (with the exception of hosiery)". The Opposition Division upheld the opposition since the similarity of the marks and goods was likely to confuse consumers.

GBH then appealed unsuccessfully to the Board of Appeal. Said the Board, since ‘Giorgio’ was the dominant element of each mark, they both looked and sounded similar and conveyed similar conceptual content. In particular, since designers and manufacturers of clothing and other accessories often opened stores in various locations, the words ‘Beverly Hills’ would be viewed by most consumers as an indication of the nature of the goods themselves, being

"a reference to the famous shopping quarter of Los Angeles, in the United States, one of the preferred places of famous designers and manufacturers",

rather than as helping to designate clothing as originating from GBH.

GBH next tried its luck with the Court of First Instance -- and this time it won. The Court held that since the earlier mark was registered in Germany, the key question was whether a reasonable well informed, observant and circumspect German shopping for clothing, footwear and headgear would be confused between the two Giorgios.

A German shopper confused?, certainly not! The Court decided that the words "Beverly Hills" were not, as the Board had suggested, of only weak distinctive force. Had not the Court already said so as long ago as 2003? Evidence submitted by the WHG that Beverly Hills was known as a shopping district was rejected, not because it was irrelevant but because it had been submitted for the first time at the appeal, depriving the Board of Appeal of the opportunity to review it.

The lesson from all of this? Fashionista suggests that brands take care when choosing their trading name and conduct full trade mark clearance searches before they commence use to avoid any confusion (actual or perceived) occurring. And if you are unfortunate enough to find yourself embroiled in a dispute, seek a early resolution. If your opponent as persistent as WHG, it could be a long haul - in this case over 10 years' worth of legal fees!

Gracefully she slips out of her own name ...

Drapers reports today that Amanda Wakeley has stepped down from the label which will continue to trade under her own name. This story reminded Fashionista of the saga following the sale of another wedding dress designer's label: Elizabeth Emanuel.

Readers may recall that the designer famous for creating Princess Diana's wedding gown sold her business, together with a trade mark application for her name ELIZABETH EMANUEL. After falling out with the purchaser of her business, Ms Emanuel tried to oppose the registration for the ELIZABETH EMANUEL trade mark on the basis that it would deceive the public. The six year legal battle culminated in a referral to the ECJ which held that Ms Emanuel could not deprive the purchaser of a right it had legally acquired from her:

"A trade mark corresponding to the name of a designer and first manufacturer of the goods bearing that mark, may not , by reason of that particular feature alone, be refused registration on the ground that it would deceive the public..., in particular where the goodwill associated with that trade mark... has been assigned together with the business making the goods to which the mark relates".

Accordingly Ms Emanuel now trades under the brand "Art of Being" although her business' URL retains her name: http://www.elizabethemanuel.co.uk/. Fashionista hopes that as part of the sale, Ms Wakeley and investor-owner Jason Granite agreed the extent to which she can use her name for any future projects to avoid customer confusion and, most importantly, expensive legal bills.

Keywords v Trade Marks -- let the battle commence.....

Given the growth of the online channel, all fashion retailers have been forced to learn all about SEO (search engine optimisation). One way to drive traffic to your website is through the purchase of keywords using Google's Adwords programme. In May this year Google changed its policy to allow advertisers to buy their competitor's trade marks as keywords. Yesterday Interflora issued proceedings against Marks & Spencers and Flowers Direct Online over their purchase of the "Interflora" mark (and various misspellings of the mark) as Google keywords.

Although brand-owners complain that competitors are trading off their goodwill and reputation by buying their trade marks as Google keywords, others argue that Google is promoting competition and consumers are not confused - they know the difference between a natural search result and a sponsored link. While that may be the case, Fashionista sees keywords as virtual signposts, and can't imagine the Courts allowing M&S to put an Interflora sign in their shop window, so why should the rules be different online?


Brands including Louis Vuitton have taken action against Google in France for selling keywords that were identical to their trade marks. While, in most of these cases, Google lost the first round, it has appealed the French decisions and three references to the European Court of Justice are currently pending. These references give M&S and Flowers Direct the basis to request a stay of Interflora's claim until the ECJ delivers its ruling.



While we are unlikely to get clear guidance from the Courts on this issue in the near future, now that Interflora has decided to take legal action, businesses may think twice before bidding on a competitor's trade mark as a Google keyword.

New look, no mark

Weymouth (UK) based fashion house New Look has made quite a name for itself, but it's not an easy name to keep to itself. Last week the Court of First Instance dismissed its appeal against the failure of its application to register the words NEW LOOK for a whole raft of fashion items and accessories as well as a store name for its retail trade. Said the court, the words were

"a banal expression which is part of everyday English and does not present any linguistic difficulty. That expression will thus be understood to mean ‘new appearance’ by a public who are native English speakers, but also by people with a basic knowledge of English as such a level of knowledge is sufficient, in the present case, to understand the sign applied for".

What's more, New Look couldn't show that its name had become distinctive of its business throughout the territory of the European Union, the trading zone that the Community trade mark covers. This decision only covers the words NEW LOOK: it doesn't affect the eye-catching logo at the top of this post.

Fashionista says, choosing the right name for a label is a tough call. Names that send out a strong and attractive message are often those easiest to market, but their very strength as a message to shoppers is a weakness because messages like "new look" are kept free for all traders to use.