Designer masks? Yes, but only if original
What do Myss Keta, Junior Cally, and Billie Eilish have in common? The fact of being artists and, in particular, singers.
True, but there is something else.
Even with completely different messages and styles, they have triggered – in unsuspected times – curiosity about what in 2020 would have become the accessory par excellence, the must-have (alas, in the literal sense of the term): the mask.
It was, in fact, January 26th, 2020, when, at the celebration of the Grammy Awards, the Los Angeles singer showed off one signed by Gucci, in black tulle and double “G” crystals. But fashion, as we know, is often the forerunner of trends, and today the pandemic has created a new need: the mask. If branded, all the better. So much that Fendi’s, among the first ones, on sale for € 190.00, went sold out immediately. Those with the “black wings” of Marcelo Burlon or those with the famous “monogram” by Louis Vuitton are also in great demand, made even more desirable thanks to the photos posted by Chiara Ferragni on her Instagram profile.
As it often happens, the phenomenon has not escaped counterfeiters who – thanks to the pandemic – have decided to invent a new business. In the early days of last month, following some checks aimed at ascertaining the existence of the requirements of various companies which, to remain open, declared that they had converted production into goods of necessity, the Financial Police of Rimini discovered a local screen printing studio dedicated to the printing of stencils with the logos of the most famous stylistic houses, to be applied on the fabric of the masks “so as to transform them into refined fashion accessories“.
Criminal charges have been made but no doubt that what was found represents just the tip of the iceberg only.
So, how to protect distinctive signs in the fashion sector?
The question may appear unnecessary since the related trademarks are – almost always – registered by the legitimate owners. Indeed, the answer is not as obvious as is not the connected protection that follows. In any case, to answer the question, some preliminary remarks may be useful.
When filing a trademark application, the applicant is required to indicate the classes of products and/or services for which he wishes to obtain protection, among those present in the Nice Classification, referred to in the relevant agreement of 1957 (today at the eleventh edition with the last update in force from January 1st 2020). It consists of an international Convention, divided into 45 classes, including 34 of products and 11 of services, where it is possible to find any sectors of interest. The system offers the undeniable advantage of having a single valid parameter, almost worldwide, to outline what goods or services the trademark can be used exclusively for, to prevent third parties from using it (or better, from counterfeiting it).
But why all this, one might ask; wouldn’t it be much easier if, to each interested party, the possibility of registering a trademark was granted for any products or services? The reason is simple: no matter how much human imagination may be creative, the rationale behind the system is to prevent the use of a certain sign – often not too far visually, phonetically and conceptually from the product or service for which it is used – to be an exclusive prerogative of those who registered it and who perhaps do not even need to use it in sectors other than those in which they operate.
Not surprisingly, after a five-year period from the filing date, the trademark owner may be called upon to prove the so-called “genuine” use (thereby indicating the need for an effective use, not only formal) under penalty of suffering, if the test fails, the loss of the sign’s ownership, on grounds of lack of use (according to Art. 24 of the Italian Intellectual Property Code and Art. 58 of the E.U.T.M.R. as regards the European Union).
In addition, the cost of registering the trademark (and, therefore, renewal) increases with the extension of the protection classes and such a circumstance, especially for those who are supposed to protect their trademarks in different parts of the world, represents a parameter to be considered.
The pursuit of the aforementioned interest (avoiding a monopoly of the sign on each sector) brings with it the further advantage of limiting, as far as possible, the spread, in the registers of the whole world, of the phenomenon of the so-called “trademark cemetery”: signs registered and never used – if not for a few classes – which, as registered by the owner, cannot be used by third parties, even if, in fact, the owner does not need them.
Given the above, to determine the scope of protection of the trademark, it is essential that the indication of the classes be extremely correct when filing the registration application, keeping in mind that after having specified it during the filing phase, it is not possible to change it or add a new one.
But there is more: following the leading case “IP Translator” (EU Court of Justice Judgment of June 19th, 2012, C-307/10), the applicant is required to identify, within each class, the individual goods or services for which it invokes protection, to correctly delimit the protection of the brand. And, as noted above, it would make little sense to include all the goods or services present in each class, given that the protection, after five years, is granted only for the goods or services for which the trademark is actually used.
The identification of protection classes is also used to outline the perimeter of protection for most brands. Pursuant to Art. 20 of the Italian Intellectual Property Code, in fact, the owner of the trademark has the right to prohibit third parties, except with his consent, from the use of a sign:
a) identical to the trademark for goods or services which are identical to those for which the trademark is registered;
b) identical or similar to the registered trademark, for goods or services that are identical or similar where, due to the identity or similarity between the goods or services, there exists the likelihood of confusion for the public, that can also consist of a likelihood of association between the two signs;
Similar provisions can be found in Art. 9, no. 2 letters a) and b) in Regulation (EU) 2017/1001 on the European Union Trademark.
The aforementioned hypotheses concern the conflict between two signs that are identical for identical products or services (sub a) – so-called double identity – or between two brands that are identical or similar for identical or similar products or services, if due to the identity or similarity between the signs and of the identity or affinity between the products or services, may cause a risk of confusion for the public (sub b).
Given that by “affinity” we mean a commodity similarity between the products or services or a link between the needs that the products or services are meant to satisfy, the first parameter that is taken into consideration is precisely the registration class (although, technically, it is a purely administrative parameter).
However, it seems unlikely that the fashion houses may have hypothesized to include class 10, normally referred to, among other things, to identify “masks used by medical personnel” in the trademark filing.
What can we do?
Precious will be letter c) of Art. 20 of the Italian IP Code (and of Art. 9, n. 2 of the E.U.T.M.R.) according to which the trademark owner can prevent third parties from using any identical or similar sign to the registered trademark for products or services even if not similar, “if the registered trademark has a reputation in the Country and where the use of that sign without due cause allows unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark”.
Basically, thanks to such a provision, there is a protection extension for products not related to those subjects to registration and, therefore, to goods or services that are outside the main reference sectors of the registration holder. Of course, the greater the reputation of the brand, the greater the extension of protection, so much to include less and less related product areas.
Such a case is called “cross-field” protection – regardless of the risk of confusion referred to in sub-letter b) – invocable when the owner is able to prove that his sign has a reputation, both at a territorial level and with reference to the interested public.
Parameters to determine a trademark reputation degree include market share, intensity, geographic scope, and duration of its use, as well as the investments made by the company to promote it.
Therefore, it will be necessary to provide useful material to demonstrate both the high degree of diffusion, starting from the registration applications obtained in the various countries, and the level of prestige consolidated by the brand on the market. Extremely useful, not to say essential, is providing an opinion survey aimed at confirming the high degree of knowledge of the trademark in the public.
Nevertheless, as referred to in the aforementioned regulation, protection is granted if the use of the sign allows to obtain an undue advantage deriving from the distinctive character or the trademark reputation, or if such use affects the distinctive character or the reputation of the trademark itself.
And here the undue advantage occurs, as in the case of the sale of fashion masks, when the third-party parasitically takes advantage of the reputation or distinctiveness of the renowned trademark, gaining various benefits.