Fashion brands Ports 1961 and Max Mara were both handed favorable rulings in connection with their intellectual property recently. Ports 1961 was victorious in an Italian court in connection with its street style-favored “bow” sneakers, while Max Mara managed to secure a trademark victory in China, after falling prey to the latest in a long string of fashion-focused bad faith failings in the Far East.
Meanwhile, in his first week in office, President Trump pulled the U.S. out of the Trans-Pacific Partnership, a proposed trade pact, which stands to make waves in the fashion industry. He has also promised to begin work to renegotiate a fellow trade deal, the North American Free Trade Agreement.
Ports 1961 Lands Favorable Ruling in Italian Copying Case
An Italian court has sided with Ports 1961 in a trademark and unfair competition case brought by the Italian brand in connection with the copying of its popular bow sneakers. In issuing an injunction against the defendant — an unnamed online retailer — for marketing footwear constituting “the slavish imitation” of the Ports’ design, Milan Intellectual Property Court Judge Ms. Dal Moro held that the Ports design met the requisite standard of maintaining “capricious” elements that distinguish it from the designs of others and that enable consumers to associate it with the company from which it originates.
The court held that the Ports’ design — namely the ornamental “bow” design that adorns the upper portion of the shoe — meets this standard as it “is an outward and original characteristic, not conditioned by its function, and therefore destined to have a distinctive capacity.” Dal Moro further held that the commercial success of the shoe and the various attempts by a number of brands to copy the design is indicative of its distinctive character.
Given its finding, the court ordered the defendant to immediately cease all sales and marketing of the shoes and to pay 1,000 euros, or about $1,070 at current exchange, for each day it fails to implement the court order and 250 euros for any subsequent violations. Still yet, the court ordered that the defendant pay Ports’ legal fees of nearly 10,000 euros.
This case is the latest win for designers who can establish that their traditional trademarks — such as names, logos or packaging — and/or their designs, themselves, are distinctive, either inherently or by way of secondary meaning amongst consumers.
Max Mara Victorious in China, as Nation Begins to Foster Its Own IP Rights
In another foreign IP matter, Max Mara has successfully overthrown a native-Chinese entity’s attempt to register the trademark, “MaxIMazo 玛克斯玛佐,” in the class of goods that covers garments and accessories. In siding with Max Mara, which maintains a network of about 400 stores in China, the Chinese Trademark Office held that the beginning of Hangzhou Ku Ku Jie Trading Co.’s trademark is the same as Max Mara’s already-registered marks, that pronunciation and overall appearance of the two marks are very similar, and thus, the two marks are “confusingly similar.”
The Trademark Office’s decision thereby grants “a reasonable scope of protection to the trademark ‘MaxMara’ against a trademark that is not identical and, therefore, enlarges the scope of protection,” according to Shanghai-based HFG Law, Max Mara’s counsel in the matter.
The decision comes just after the Chinese government issued a guideline on a one-year pilot reform of intellectual property rights protection, which will include a comprehensive and effective management system of intellectual property rights aimed at better serving the public and promoting innovation-driven development.
It is unclear as of now just how beneficial those developments will be for non-native entities, as much as they will serve to boost the recent influx of reliance on IP protections by Chinese entities, which are becoming increasingly noteworthy rivals of their Western peers as Asian consumers continue to take pride in buying home-grown labels.
Julie Zerbo is the founder of The Fashion Law.