IP portfolio management

Gannons manages a fashion label’s intellectual property portfolio

Our client wanted to safeguard its trade secrets within the fashion industry. We ensured its employment documentation protected its intellectual property (IP), providing that ownership of new clothing, collections and accessories, including handbags, remained with the label even where designs were not subsequently manufactured. Where our client commissioned external designers, we ensured their contracts expressly transferred IP rights to our client. We also recommended additional agreements to prevent competitors from producing similar designs. Finally, we advised the label to maintain clear records of its designs and included these in its IP portfolio to help us monitor infringements.

Our role

We first audited our client’s existing IP rights to ensure they were properly protected. The audit covered UK and international rights, including registered and unregistered rights, expired IP rights, potential infringements and new revenue opportunities.

We then proposed an IP strategy to support our client’s short- and long-term business goals, including protecting its trade marks, design rights and patents.

Sub-brand strategy

Our client’s brand was central to consumer awareness. We recommended retaining its original trade mark while developing additional sub-brands to reflect market trends.

Sub-brands can build on the reputation of a main brand while reaching new audiences. They enabled our client to target consumers with different tastes and requirements from its traditional customers.

Following discussions, we registered new sub-brands locally, regionally and internationally. We also registered new designs in the UK, EU and other relevant jurisdictions, depending on the brand or sub-brand to which each design related.

Licensing IP

Our client’s IP portfolio included trade marks, designs and patents. The new sub-brands and designs supported business growth, and we proposed ways to generate additional revenue without surrendering market share.

We recommended licensing selected sub-brands and designs to help our client exploit gaps in the market ahead of competitors. We ensured the proposed licence terms were carefully structured.

A licence allows another company to use specified IP, subject to agreed conditions, while the owner retains control over the permitted use of its brand and designs. Under the licence agreement, our client would provide support in return for royalties.

Market monitoring and enforcement

Counterfeiters targeted our client’s brand because of its distinctive clothing and handbag designs, reputation and premium pricing. We monitored the market for potential counterfeits.

We identified an infringer that was competing unfairly with our client by using a 3D printer to replicate handbags designed and sold by our client. The infringer sold the handbags on its website at significantly reduced prices. The principal difference was the material: our client’s handbags were made from leather, while the infringing products used patent leather.

After identifying the products and the relevant IP rights, we took steps to enforce our client’s rights.

In relation to the handbags, the potential infringements included:

Trade mark infringement

The 3D-printed handbags displayed our client’s trade mark, potentially suggesting an association with our client. As the infringer had no licence to use the mark, we considered claims for trade mark infringement and passing off.

Design right infringement

The 3D-printed handbags closely resembled our client’s products, sharing their colours, designs and detailed features. We therefore considered a claim for design right infringement based on the similarities between the products.

Solution before litigation

Before commencing litigation, we sent the infringer a robust letter setting out the alleged infringement of our client’s IP rights. We warned that, unless the infringing sales stopped, we would seek an injunction and commence proceedings in the Intellectual Property Enterprise Court (IPEC). We gave the infringer 14 days to dispose of the infringing handbags or respond.

The infringer replied promptly and requested a meeting to explore an out-of-court settlement, wishing to avoid the costs and potential publicity of litigation.

The infringer explained that the handbags were among its best-selling products and sought a way to continue selling them.

We needed to protect our client’s brand reputation while considering a commercially workable resolution. After consulting our client, we reached an agreement under which our client granted the infringer a one-year licence to use its trade mark and designs in return for a share of the revenue.

Conclusion

Our IP audits help establish the rights a business owns and inform an appropriate IP strategy. Our IP portfolio management service helps businesses create, monitor and protect their market position. Where we identify potential infringement, we take prompt steps to protect our clients’ rights and explore settlement where appropriate before litigation. A carefully structured settlement can resolve a dispute while creating opportunities for new business relationships and revenue streams.