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Fashion eBulletin | Spring 2010
Fashion Law Updates
Protecting fashion brands online

The long running battle between brand owners and Google is over for now. In a much anticipated decision of the European Court of Justice ("ECJ"), on 23 March 2010, the ECJ has said that Google is not liable for trade mark infringement in allowing advertisers to purchase keywords corresponding to the trade marks of brand owners as part of the Google AdWords program.

Grey goods - brand owners remain protected

Towards the end of 2009, the ECJ handed down judgment in yet one more parallel importing case. Another long running dispute, the parties to the case in question, Makro and Diesel, had in fact first clashed over the matter at least 10 years previously. The case was eventually referred to the ECJ for guidance.

Recent case illustrates the pitfalls of exclusive licensing agreements

Umbro has breached an exclusive licensing agreement with a US based sportswear company for the sale of its soccer-based clothing in the US by allowing another company to market goods subject to the exclusive licence.

Counterfeit Fashion - good news and bad news

Further changes to the Customs procedure in relation to seizure of counterfeit goods came into effect on 10 March 2010.

Office space to rent in Mayfair

Harbottle & Lewis's old office has recently been renovated and re-opened as a serviced office facility run by Mayfair Point. The offices are in a fantastic location for the fashion industry directly above Bond Street tube on the corner of Oxford Street and South Molton Street and directly opposite the main Oxford Street department stores.

South Molton Street is at the heart of the London fashion industry and is a great location with its pedestrianised walk ways, designer boutiques, cafes, coffee shops and restaurants.

Mayfair Point is pleased to offer clients bright and modern office accommodation with the highest standards of IT and telecommunications services. If you are interested why not visit the website at www.mayfairpoint.com or contact the business centre manager Anna Kourdoulous at anna@mayfairpoint.com or on 020 7409 5101 to arrange a visit.

Our Trade Mark Agent Service

We offer clients a full trade mark clearance and filing service, as well as a portfolio management service. We provide strategic advice on the protection of trade marks, working with clients to ensure the most appropriate and cost effective protection is obtained. We also manage trade mark portfolios for clients, ensuring that regular reviews occur and that renewals and other formalities are all attended to. We are able to advise on conflicts with third parties when they arise, whether before or after registration of a trade mark, and have considerable experience of handling and defending trade mark opposition proceedings, invalidity and cancellation actions and trade mark infringement actions.

Our trade mark agency practice is headed by Rebecca Davis who is a UK registered Trade Mark Attorney and a European Trade Mark Attorney with 14 years experience in the trade mark field. Rebecca works closely with the wider IP team, including partners Andy Millmore, Mark Owen and Shireen Peermohamed, in relation to the protection, exploitation and enforcement of trade mark rights. We also have a network of contacts overseas whom we can call upon for advice and assistance when needed.

Our Fashion Group

As we are at the heart of the media, entertainment and fashion sectors, we have wide-ranging experience and expertise in supporting creative clients and have developed a deep understanding of the fashion industry.

Our clients include designers, manufacturers, distributors, model agencies, retailers, photographers and models. We are involved from the creation of rights through to their ultimate distribution and exploitation. The Fashion Group works alongside clients as closely as possible so that we understand their commercial and legal requirements. Our advice is cost-effective and our solutions tailor made.

Our work includes:

  • Advising on branding and protection of designs
  • Brand enforcement and anti-counterfeiting
  • Drafting terms & conditions
  • Drafting licensing and manufacturing agreements
  • Advice on agency agreements
  • Advice on distribution agreements
  • Reputation management
  • Debt collection
  • Advising on commercial and corporate arrangements

Examples of relevant work can be found on the Fashion page of our website.

This bulletin does not comprise legal advice. It is intended as a regular Fashion update for our clients and contacts. You are included on this distribution list because as a client or contact of the firm we believe it may be of interest to you.

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Harbottle & Lewis LLP

Hanover House, 14 Hanover Square, London W1S 1HP
Tel: +44 (0)20 7667 5000 Fax: +44 (0)20 7667 5100 Dx: 44617 Mayfair Web: www.harbottle.com

Lawyers for the business of media and entertainment

Advertising | Aviation | Broadcasting | Charities | Digital Media | eCommerce/ Technology | Fashion | Film and Television Interactive Entertainment | Music | Publishing | Sponsorship | Sport | Theatre

Commercial | Corporate | Employment | Family | Finance | Intellectual Property | Litigation | Private Client | Property | Tax

Harbottle & Lewis LLP is a limited liability partnership registered in England (OC304954),
regulated by the Solicitors Regulation Authority.

© Harbottle and Lewis LLP 2010

Fashion contacts
Sandi Simons
Tel: +44 (0)20 7667 5138
Email Sandi
Shireen Peermohamed
Tel: +44 (0)207 667 5070
Email Shireen
Mark Owen
Tel: +44 (0)207 667 5142
Email Mark
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25 May 10
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