Written by Margaret Briffa | November 6, 2018
Are British fashion consumers today able and used to distinguishing between labels with similar names? That is a question that is important to all brands as they grapple with the prospects of more labels and brands on the market some of which will be more similar to their own brand than they are entirely happy about.
A good illustration of this very question has come up once again for shoe brand Jimmy Choo. It concerns Xianjie Zhu, a 19-year-old from Guangdong Province in China, who attended Central Saint Martins Art School in London and adopted the English name Jerry Chu. As a fashion student specialising in menswear he dreamt of starting his own label once back in China. With more than two years of the course still to go and no immediate plans to start trading he applied to register his English name at the Chinese Trademark Registry. Jimmy Choo has now spotted the mark and has applied to invalidate it on the basis that the similarities between the names Jimmy Choo and Jerry Chu would cause confusion in the market.
We reported in our blog of China’s efforts to clamp down on rogue filings and it is possible that when the Jimmy Choo’s legal team first came across Jerry Chu’s mark they assumed it was just such a filing when actually it does not have the hallmarks of a mark applied for in bad faith. Assuming the mark was filed for in good faith, Jimmy Choo will not be able to rely on provisions introduced into Chinese Trademark Law which assist brand owners and will need to be able to convince the registry that there will be genuine confusion.
If Jimmy Choo are successful in their bid to invalidate the mark it is likely to be back to the drawing board for Jerry as the prospects of Jerry being able to use his name in any country will be remote. The issue is most acute where designers have common surnames but is not insurmountable. Take for example designers Alexander Wang and Vera Wang. Vera Wang is known for her glamorous wedding dresses favoured by A list celebrities. Alexander Wang is known for his dark and edgy designs and recently has hit the news over claims that he overworks and underpays his staff. Even though these brands occupy the same space as in they are both clothing brands they are able to happily co-exist.
It remains to be seem how Jerry Chu fares in his bid to secure his name. We will be following this story.
Written by Margaret Briffa
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