Forget tech-infused fashion or concert merch or Margiela “inspired” garments for a moment. A looming trend in fashion has nothing to do with the clothing and accessories themselves but concerns the names that adorn their labels. This past week, we saw Italian design house Salvatore Ferragamo file suit against Vince Ferragamo, claiming that the former football star is infringing its trademarks by using the Ferragamo name in connection with his Southern California winery. This is just one of a growing number of similar name-based actions.
Not too long ago, Spanish fast fashion giant, Zara, threatened to sue the owner of a small, United Kingdom-based business, called Zara’s Countywear. Zara threatened legal action unless the owner, who named the business her newborn daughter, Zara, rebranded immediately. Before that, Christian Dior threatened to file suit against Australian photographer, Sirous Dior (yes, that’s his name) if he kept using his name in connection with his business.
Then there is Chanel. You may recall that the notoriously protective Paris-based design house has periodically run full page “ads” in trade publication, Women’s Wear Daily, asking industry insiders to stop describing non-Chanel items as “Chanel-esque” or “Chanel-like” for trademark reasons. More recently, Chanel filed and won a trademark action against Merrillville, Indiana salon owner, Chanel Jones. In its suit, Chanel alleged that Chanel’s Salon, a spa and beauty salon, infringes at least nine of its federally registered trademarks and is benefiting from the established reputation of the fashion company’s name, which is derived from the founding designer's name, Gabrielle Bonheur Chanel.
Ever the vigilant defender of its name, Chanel also initiated intellectual property proceedings earlier this year against Chanel Bonin, a 20-year old woman from Vancouver, Canada, who has the “@Chanel” Instagram account. In that instance, Chanel did not have much luck. While it was able to get Instagram to remove images from Bonin’s account that included its logos, it was unable to claim the account itself.
And do not forget the intra-family trademark battles, the most notorious of which come from Gucci. There was the 1988 case, Gucci v. Gucci Shops, Inc., which involved Paolo Gucci, the grandson of house’s founder, who attempted to launch his own business using his last name only to face significant pushback from the family company. The court ultimately prohibited Paolo Gucci from using his last name as a brand name because of the likelihood of consumer confusion, but permitted him to use his name to identify himself as the designer of products sold under another brand name (and provided that a disclaimer notified consumers that he was no longer affiliated with any of the Gucci entities).
A similar case came about in 2009 with Paolo Gucci’s ex-wife, Jennifer, who the house accused of hawking "Gucci" skin care products, bedding and linens. There was another in 2010, in which the house successfully halted Elisabetta Gucci’s plans to open a global chain of hotels under her name. The daughter of Paolo Gucci planned to open a global chain of hotels under her name. More recently, in 2012, the Italian design house was able to block the business plan of two great-grandsons of Gucci's original founder, Guccio Gucci, one of whom is also named Guccio. They were prevented from using the name "Guccio Gucci" when marketing their own handbags and accessories firm ToBeG Srl.
BUT THAT’S HIS NAME
The most common reaction to such lawsuits? An angry, “But that’s his (or her) name!” We saw some of the strongest responses in connection with Chanel’s bid to takeover Chanel Bonin’s Instagram account, whose photos were littered with comments that read: “Go girl!!! I stand behind you for all the girls around the world named Chanel!!!!”; “Shady corporate assholes feeling entitled to an Instagram username that's already taken”; and “Fuck the big guys, they can't always win.” The big guy (Chanel) vs. little guy (Chanel Bonin) theme runs quite strongly along with fashion brands’ legal right/duty to protect against unauthorized uses of their trademarks.
Unfortunately for the people who share a name with a famous brand and those that favor the little guys, these instances are a reminder of the well-settled legal fact that an individual does not have an unfettered right to use their personal name for commercial purposes. There have been a number of cases on this issue over the years involving well-known trademarks.
As Chanel stated in its lawsuit against Chanel Jones and Chanel’s Salon, there is “no absolute right to exploit one’s given name commercially if such use is inconsistent with Chanel’s rights.” To this, the court held: “Nothing herein may be read to prohibit Jones from using her personal name solely in a personal, non-commercial capacity, or to otherwise identify herself, provided that Ms. Jones does not use her name in any manner that suggests an affiliation or relationship with Chanel."
THE DANGER OF GENERICIZATION
But why do these design houses care, you ask? Well, this answer is simple. Because their trademark rights – which are some of their most valuable assets – depend on it. Unlike the legal protection afforded by copyright and patent law, which lasts for a fixed duration, trademark protection can potentially last forever, but only if the trademark does not become generic – the instance when the public begins using the trademark as the name of a product itself as opposed to identifying an exclusive source of a product. Examples: Using the word "Band-aid" to describe a generic adhesive bandage; using "Kleenex" interchangeably with tissues, "ChapStick" as synonymous with lip balm, and "Photoshop" to describe the general digital manipulation of photos. Hypothetical: using “Chanel” to explain a tweed jacket or quilted leather purse.
With this in mind, there is a very real reason why brands do not like it when others take advantage of their trademarks. Luxury fashion brands, in particular, have spent many, many decades, and in some cases, even centuries, building esteem and goodwill around their names (and thus, their trademarks). High fashion brands, for example, are not just selling garments and accessories; they are selling a luxury lifestyles based on quality, exclusivity and allure. If their names become commonplace, that appeal is gone. In order for brand names and corresponding intellectual property to remain as valuable assets (because you’re not going to be buying a bag with the Gucci interlocking “G” print all over it if you perceive it to be a brand of poor quality or low esteem or widespread accessibility), they must be policed.
The use of such marks – whether it be in the form of Louis Vuitton’s Toile Monogram or Céline’s trademarked name – by unauthorized third parties often results in consumer confusion and/or use that may impair the strength of the famous marks by diluting them. We also know that this is most commonly done for the benefit of positive association with a well-known mark and its prestige, and thus, for the financial benefit of the unauthorized third party.
So, when houses are seemingly unnecessarily bullying smaller similarly-named businesses, it is almost always for the purpose of maintaining their own names. That is the trademark owner’s duty, after all.