THE FASHION LAW EXCLUSIVE – G-Star Raw has won the latest round in its long standing feud with Swedish fast fashion giant, H&M. Late last month, the Hague Court of Appeals handed down a favorable ruling for Dutch fashion brand, G-Star Raw (“G-Star”) in connection with its “Raw” trademark. Since first filing to register the “Raw” mark with the European Union Intellectual Property Office in 2005, G-Star has amassed a number of registrations for the “Raw” mark, in an array of classes of goods (because trademarks are registered by class), including the one that covers clothing.
The Dutch fashion brand – which was founded in 1989 and which recently welcomed musician/fashion figure, Pharrell, as a co-owner – filed suit against H&M in 2011 on trademark infringement grounds, after H&M began selling graphic t-shirts and sweatshirts adorned with the slogan “Raw Beat Experience” on them, along with imagery of a boom box (pictured below). G-Star asserted that H&M’s usage of the word “Raw” was likely to mislead consumers into believing that it was somehow affiliated with or that it endorsed H&M’s designs. G-Star bolstered this assertion with a consumer survey it commissioned, which found that over 30% of the participants immediately thought of the G-Star brand upon seeing the word “Raw.”
In a filing of its own, H&M responded to G-Star’s allegations, arguing against that G-Star’s “Raw” mark lacked valid trademark protection. The Swedish fast fashion giant claimed that “Raw” is merely a descriptive word that may be used to define street culture and/or a certain music style, and as a result, it is ineligible for trademark protection in the first place. (Note: Trademarks that are merely descriptive in nature receive a very low level of trademark protection unless they achieve secondary meaning in the minds of consumers). H&M further alleged that the shirts and hoodies at issue were only sold in its stores, making it highly unlikely that consumers would be confused as to their source.
After the case made its rounds through the lower courts, the Hague Court of Appeals ruled in favor of G-Star, holding that just because the word “Raw” has plain meanings that do not relate to the G-Star brand does not mean it cannot serve as an identification of source of the G-Star brand (the core function of all trademarks). The court held that G-Star Raw’s continuous usage of the “Raw” trademark allows it to serve as an indicator of the G-Star brand in the minds of consumers and the fact that the “Raw” trademark is usually used in combination with the trademarks G-STAR or GS does not detract from its independent protection.
As for the shirts at issue, the court found that the word “Raw” enjoys prominent placement on the garments, particularly due to the fact that it is separated from the other words (“Beat Experience”) by the drawing of the boom box, making it a highly important element of the design. As a result, the court held that H&M’s usage of the word “Raw” in this manner creates a likelihood of confusion (the key inquiry in a trademark infringement action).
As for whether or not consumers could be confused as to the source of the H&M garments bearing the “Raw” trademark, the court held that it was entirely possible. The court stated that because H&M stores also regularly sell items from other brands and designers, such as Karl Lagerfeld and Viktor & Rolf, consumers might be led to believe that the garments at issue are the result of a collaboration of sorts between the two parties.
Considering that both parties have been actively fighting in this case (and others against one another, including one in which G-Star claimed that H&M copied a style of jeans) for several years now, we would not be surprised if this is not the last we hear of it. Stay tuned …