By Meera Patel
Topshop v Chloé
High street retailers feel the pressure as luxury brands wake up to their worth and
crack down on copycat designs, how will the legal protection of branding change the
industry and attitudes of consumers?
The latest intellectual property case to stem from the fashion world arises between haute
couture house Chloé and the high street haven of Topshop. The legal protection of luxury
branding and their designs is a vital and fascinating issue due its economic effects on an
industry worth an estimated ?8 billion. The impact of copyright infringement is significant as
it draws boundaries between the high street and designer brands – allowing for these two
different markets to exist and for each to maintain their niche. If intellectual property rights
did not exist to protect the work of designers and their companies, they would have no
incentive to invest in building up a brand – if only to have it reproduced and devalued. As the
risk proceedings between luxury brands and high street retailer’s increase, the effect on the
industry will surely and hopefully compel high street brands to further their originality,
thereby driving them to take more commercial risks.
July 2007 witnessed Chloé (part of the Richemont luxury goods group) force Sir Phillip
Green’s Arcadia group to discard almost two thousand dresses. All of which looked
uncannily similar to the lemon yellow mini dungaree dress (Chloé See collection). The copy
constituted an infringement of their design rights, as the overall impression of the Topshop
dress was too close to that of Chloés.
774 of ?35 look-alikes to the ?185 original had already sold before Chloé issued its lawsuit.
It is reported that the Arcadia group paid ?12,000 to Chloé out of court to settle the matter
and withdrew the dresses. Other examples of Chloés zero-tolerance attitude include the
action pursued against Bananasoup. The internet retailer who attempted to sell a knock off
of the Chloé Paddington bag (as seen adorning the wives of footballers with its
characteristic padlock). Even Kookai felt Chloés wrath as they attempted to trade their
version of the Chloé Silverado bag.
Effectively as luxury brands endeavour to stamp out the counterfeits lurking the high street
they aim to protect their branding, an intangible asset which businesses are now
increasingly aware of the need to defend. Their brand is their investment, as money has
been poured into creating a new design, advertising, marketing, promotional works and after
sales service. To see high street copies act as almost parasites to this is what they are
trying to prevent from occurring. We need only to look to the Burberry/Chavs episode, in
which the upmarket Burberry brand became the British football hooligan uniform of the
season. It seemed as if overnight a branding synonymous with opulence found itself tainted
with the image of the opposite. In May 2004, when Monsoon took legal proceedings against
Primark, Monsoons Chief Executive Rose Foster expressed similar views ‘We take
infringement of our design and copyright very seriously...the individuality of its designs and
the flair and ability of its designers’.
It is interesting to note that most cases have been settled out of court in order to protect the
public image of the retailers involved. As having their allegations scruntised by the public is
sure to add a stigma or public disapproval to their brand. Most intellectual property cases
are settled very early on as it is important for the side who is infringing to cut their losses
immediately. It is easier for Topshop to settle the dispute, find a new line of dresses and
profit from these instead. Another example of design right infringement includes the action
pursued by Jimmy Choo, who forced Marks and Spencer to withdraw thousands of its
handbags. The ?9.50 M&S bag looked almost identical to the Jimmy Choo ‘Cosmo Silk
Satin Evening bag with jewel buckle’ which Choo sells for a staggering ?495. Much like
Chloé this is not their first triumph. Their initial IP victory was against New Look, where they
forced the high street retailer to pay ?80,000 in copyright infringement damages as well as
withdraw shoes based on Choo designs.
Designers are now realising the importance and value of their brands, not only are clothing
and shoe designs being protected but ‘smell a likes’ are being caught under the law as well.
A British judge ruled in favour of L’Oreal in 2006 as it claimed the smell and packaging of its perfume had been copied by the Belgium company Bellure. In particular the Bellure
imitations were similar to Trésor and Miracle by Lancôme as well as Anaϊs Anaϊs and Noa by
Cacharel. The solicitor acting for L’Oréal commented ‘This is a significant judgement for
brand owners and the first successful trail under section 10 (3) of the Trade Marks Act. The
judge held that ‘free riding’ off a brands reputation is not an acceptable practice.
Infringement even without the existence of any likelihood of confusion is a novel concept in
the UK and one that the market will have to get used to’. The market for fragrances is highly
competitive, with fragrance companies investing millions of pounds into the new perfume,
packaging, bottle moulds, advertising development, models and market research. Tresor, a
favourite with the traditional clientele, achieved annual sales in the UK in excess of ?3
In recent times however a solution may have been found to this dilemma, as smarter
retailers hire in ‘guest’ designers to lend their expertise to the high street (for example Julien MacDonald for Marks and Spencer or Karl Lagerfeld for H&M), this results in huge profits as
well as the designer like quality and originality which high street retailers would not be able
to obtain otherwise. Maybe this could be the way forward to maintain designer individuality
with the added bonus of high street affordability? Not only are distinguished designers
lending their name to the high street but celebrities are cashing in too (for example, Kate
Moss and Madonna). How will a designers worth be able to compete against celebrity
branding? Can celebrities themselves face the threat of copyright infringement?
As the Topshop v Chloe case adds to the many similar cases that precede it, a general
increase in searching out for such copycat behaviour can also be noticed. In July 2007, Dids
Macdonald, chief executive of industry watchdog Anti Copying in Design said ‘Copying is
endemic within the industry. This year we have seen 220 settlements – 20% of which have
been on behalf of the fashion industry’. The effect of this has pushed the high street into thinking carefully before it takes its ‘influence’ from the latest runway collections as well as
finding new collaborative type projects to stand out from the crowd.
For further information and advice please contact:
Solicitor (England & Wales)
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The material contained in this article is provided for general purposes only and
does not constitute legal or other professional advice. Appropriate legal advice
should be sought for specific circumstances and before action is taken.
? Miller Rosenfalck LLP, November 2007