As many FBC Members have probably experienced, finding the perfect pair of jeans can prove to be an elusive and time consuming experience. The jeans market is highly competitive and using a stitched pattern on the back pockets is a common way for jeans manufacturers to increase brand awareness and distinguish themselves from their rivals.
The oldest jean manufacturer Levi Strauss registered its stitched arch pattern called “Arcuate” (see below) as a US trade mark during the Second World War.
Levi Strauss’s “Arcuate” design
Since then it has gone on to register many other trade marks for its stitched pocket design, both in the US and around the world.
In 2006, Abercrombie & Fitch started adding a stitched design called “Ruehl” to the back pockets of its jeans. The Ruehl design sits lower on the pocket than Levi Strauss’s Arcuate design:
Abercrombie & Fitch “Ruehl” design
In a case brought in the US courts in 2007 Levi Strauss sued Abercrombie under the Trademark Dilution Revision Act of 2006 (TDRA) claiming that its trade mark for the Arcuate design was being diluted by Abercrombie’s Ruehl stitched design.
At trial Levi Strauss relied on a “confusion” survey which shows that approximately 30% of people surveyed had wrongly identified Abercrombie’s Ruehl design as the Arcuate design. Abercrombie argued that the survey was flawed and that the trade marks had to be identical for Levi Strauss to be successful in arguing that its mark had been diluted. The jury had agreed with Abercrombie and found that Levi’s trade mark was not diluted because the two designs were not similar enough.
Last month US appeal court the 9th Circuit reversed the trial court decision, concluding that this was the wrong standard under which to judge the designs.
It held that under the TDRA it is not a requirement that the claimant shows that a junior mark is identical, nearly identical or substantially similar to the senior mark. Instead he must show that the junior mark is likely to impair the distinctiveness of the famous mark. The case will now go back for a further round of litigation at trial court level, where that court will apply the correct standard for assessing dilution under the TDRA.
The case is a useful reminder to fashion designers and manufacturers that where clothing contains designs – even only on parts of the clothing such as a pocket – it may be possible under US and European trade mark law to protect that design as a registered trade mark. The registered trade mark can then (depending on the trade mark laws in the relevant country) be used to stop competitors using designs which are damaging to their registered trade marks.
For more information on how IP rights can be used to protect businesses operating in the fashion sector please contact Tamar Shafran at tamar.shafran@rpc.co.uk.
FBC member Tamar Shafran is an Associate at City law firm Reynolds Porter Chamberlain LLP
