IP and the Fashion Industry Conference 2013: Part II

Innocent infringer?

Next to speak in today's IP and the Fashion Industry Conference 2013 was Robert Cumming (Appleyard Lees), who asked whether the "innocent infringer" in the retail sector was a mythical beast or the beneficiary of a good legal defence. So can sellers of infringing goods really avoid legal liability? By "innocent infringer" Robert meant a business found with infringing goods but which did not know they were infringing.

Does trade mark law furnish a defence? After a review of the relevant EU and British case law, Robert observed that there is no specific provision that exempts a trader for liability for an innocent seller, and the offering or stocking of goods for sale is clearly a "use" for the purposes Article 5(3) of the EU| Trade Mark Directive.  Under the common law, passing off -- which protects an economic right -- equally provides no defence of innocent sale.  What matters is whether the consumer is likely to be deceived.  Copyright likewise offers no protection for an innocent seller of protected works, where the infringement is a primary infringing act. However, secondary, indirect infringement through dealing with infringing goods might be subject to such a defence, if he has behaved responsibly and has not acted with wilful blindness in ignoring circumstances in which he should have been aware that reasonable inquiries should be made -- or is on notice that infringing goods are being sold (on which see Nouveau Fabrics v Voyage Decorations and Dunelm, here).

Then there's design law. Under UK registered and unregistered design right, innocence may be a good defence when it comes to an award of damages.  For retailers,specifically, there is the possibility of ordering the payment of a reasonable royalty.  Regarding Community registered and unregistered designs, there is no provision for a defence of innocent infringement, nor is there likely to be one: see J.Choo v Towerstone Ltd, here. Robert then addressed the possibility of an innocent infringement defence for patents.  Following Schutz v Werit and Nestec v Dualit, it is now determined that the answer is that there is not, where there is an indirect infringement through the supply of spare or compatible parts -- though consumers of such parts will not be infringing.

Finally Robert looked at the question of liability and innocent infringement by retailers on the internet, in the light of EU policy of balancing the need to protect brand owners, the imperative of competition and the consumer's requirement of information needed the exercise of consumer choice in the marketplace, making particular reference to Articles 14 and 15 of the E-Commerce Directive.

Last up before lunch was Laetitia Lagarde (Jacobacci Avvocati), looking at some of the IPKat's favourite recent fashion trade mark cases. These included Case C‑655/11 P, Seven for all mankind LLC v Office for Harmonisation in the Internal Market, Seven SpA. (criticised on this weblog here), in which the "7 for all mankind" mark was blocked by an earlier mark "Seven" as well as the contrasting French and |US treatments of the famous red soles of Louboutin shoes (on which see Katposts here and here).

Laetitia then took the audience on a canter through the mixed fortune of checks and plaids, together with handbag shapes, before giving an account of the battle between Gucci and Guess, where the parties have clashed vigorously over the latter's 'knock-off', dilutionary and blurring use of marks said to be similar to those of the Italian company.  While Gucci has had success in a number of actions, it has so far failed to enforce its right on its home turf -- where Italian courts have again shown themselves generous to foreign parties in litigation against local businesses.

Laetitia next considered watches. First she examined the HENLEY/HENLEY's dispute in Woolley and Timesource v Ultimate Products Ltd and Henley's Clothing Ltd [2012] EWHC 339 (Ch) (noted here by the IPKat), looking at issues of evidence and market context in passing off actions to protect an accessory brand. She then reviewed the celebrated OMEGA litigation in England and Wales (noted by the IPKat here, among other places), in which one party apparently did not understand the concept of a coexistence agreement.

Finally before lunch, Laetitia looked at the protection of surnames within the fashion industry, particularly names that also have meanings as ordinary names -- for example 'Berg' (on which see Laetitia's note on the Class 46 weblog, here) -- the Mayer dispute and the Tucci/Pucci/Tuzzi litigation (noted by Laetitia on the Class 46 weblog, here and here).