By Rachel Cook, Associate in the Commerce & Technology Department of Fox Williams LLP
The announcement of HRH Prince William’s engagement to Kate Middleton resulted in a flurry of activity by High Street retailers as they responded to the demand by consumers to emulate the soon to be royal and offer other women the chance to find their own Prince.
But a warning has been issued that companies seeking to falsely associate their products with her name could face serious consequences.
Within a short period of the engagement being announced “versions” of the blue Issa dress were populating the High Street with the actual Issa dress having sold out within hours. Also, sales of QVC’s ‘Diamonique’ ring, which bears a resemblance to the engagement ring rocketed.
Whether a “version” is an actionable infringement will depend on:
o whether the original is different enough from previous garments that have been on the market to attract design right protection; and if so
o when comparing the original article with the copy does it create the same impression
Product endorsement is big business. Equally, a sub practice of anti-product endorsement has also grown up, where brands may send their rivals products to people who are deemed undesirable. One only has to consider the position Burberry ended up in several years ago to appreciate that the key is the “right” people being seen in order to communicate the “right” message.
Whether any false endorsement or implied association is actionable will depend on demonstrating that a not insignificant section of the consumers targeted considered that the product had been endorsed by a particular individual. Therefore, the context of any references will be crucial.
A consumer is unlikely to believe that HRH Price William and Kate Middleton have endorsed the souvenir memorabilia, which will doubtless hit the streets before the wedding but what about statements, such as, “as worn by Kate Middleton”, or the “Kate” dress, or in the style of Kate Middleton?
If a dress is incorrectly stated to have been worn by Miss Middleton, then Trading Standards may be able to act under the Consumer Protection from Unfair Trading Regulations. The Regulations prohibit retailers from misleading members of the public.
However, style descriptions and “in the style of” references will be far more difficult as consumers are accustomed to seeing “versions” and “replicas” of styles which have been recently worn by media personalities without believing that the actual celebrity has been directly involved or has endorsed the product.
Would the average consumer believe that Miss Middleton had agreed to allow budget High Street retailers to use her name as the result of a licence agreement? The answer is unlikely to be yes.
The answer for any celebrity caught in this situation may be to register their name as a trade mark. Following the ruling in L’Oreal v Bellure, the most fruitful ground may be to show that by using the trade mark (their name) in association with their products companies are taking unfair advantage, diluting or tarnishing the exclusivity of the trade mark.
While the effect of L’Oreal v Bellure and the provisions in relation to unfair advantage are being reviewed, due to the clear benefit of being removed from the perceptions of customers for now this may be the best hunting ground for media personalities seeking to protect their brand.
This article was written by Rachel Cook, an Associate in the Commerce & Technology Department of Fox Williams LLP and a member of Fox Williams’ Fashion Law Group and can be contacted for more information at firstname.lastname@example.org