THE FASHION LAW EXCLUSIVE - Alexander Wang is the latest designer to recover the right use his name after the trademark was secured in 2011 by another party in bad faith. According to the New York-based brand’s motion, an unrelated party named Etincelle Paris registered the Alexander Wang mark in Class 3 (the class of goods that extends to perfumes and cosmetics), thereby preventing Wang from doing so. As of this week, the European Union Intellectual Property Office’s Board of Appeals ruled in favor of Alexander Wang, in an action to invalidate Etincelle’s registered trademark, in what Anthony Van der Planke, an attorney involved in the matter calls a "textbook case of trademark squatting."According to Thierry van Innis and Anthony Van der Planken of the law firm of VAN INNIS & DELARUE in Antwerp, who represented Wang in this matter, "The Board examined the validity of the EU trademark registration ‘Alexander Wang’ for perfumeries and cosmetics in Class 3, not by the famous American fashion designer himself, but by Etincelle Paris, an obscure entity from the British Virgin Islands." As a result of such examination, the mark, which was scheduled to expire in 2021, is pending immediate cancellation.
Van der Planken elaborated, saying: "The actual Alexander Wang filed a request for a declaration of invalidity with the OHIM, alleging Etincelle’s bad faith at the moment of filing the application within the meaning of Article 52(1)(b) CTMR. Both the Cancellation Division and the Boards upheld the request. The Board essentially inferred bad faith from (i) the fact that Alexander Wang was widely known in the European Union at the time of filing, and that, consequently, it may be presumed that Etincelle was aware of the use of this sign, (ii) the fact that the name concerned is quite unique due to its multicultural combination and (iii) the fact that Etincelle also filed other trademark applications for names of contemporary well-known fashion designers, such as Pierre Hardy, Philippe Plein and Isabel Marant, both in Europe and in China. Consequently, the Boards declared Etincelle’s trade mark invalid in its entirety."
Wang, who moonlighted as the creative director of Paris-based design house Balenciaga until last year, initially registered his brand name (which is also his personal name) in two classes of goods in the EU, for clothing and leather goods, in 2007. Several years later, in 2012, Wang attempted to register the name in a number of other classes, including those that extend to jewelry, cosmetics/fragrances, and advertising/business functions. The brand was prevented from registering its name in Class 3 at that point in time because of Etincelle’s existing registration.
And it is likely not much of a chance happening that Wang’s legal team has been fighting hard to regain the brand’s rights in connection with cosmetics and fragrance. On the heels of his departure from Balenciaga last year and his eponymous label's increasing of production in Europe, Wang released his first jewelry collection for his eponymous label (on the heels of a new denim collection the year prior) and considering that he reportedly left the Paris-based brand to focus on building out his own label, the next reasonable step would be fragrances (either in house or by way of a licensing deal). Stay tuned for more on the development of Wang's eponymous label. There certainly will be much more to report.