When you think of fashion brands extending beyond their usual offering of clothing and accessories, you may think of fragrance or cosmetics lines, or possibly even homewear. But over the past few years, fashion brands have moved into much more unconventional spaces.
Karen Millen, for example, a British womenswear brand known for its classic tailoring, workwear and formalwear, has now expanded into sex toys after being taken over by fast-fashion retailer Boohoo in 2019. Boohoo has recently been in the spotlight after having completed a purchase sweep of the high street as we know it, acquiring Arcadia Group brands Dorothy Perkins, Wallis and Burtons Menswear, as well as department store Debenhams after the brands fell into administration.
Karen Millen isn’t the only fashion brand diversifying into other areas. Zara Home recently launched a pet collection including feeding dishes, pet collars and leads, as well as little pet bag pouches – who said scooping poop couldn’t be stylish?
Luxury brands such as Louis Vuitton and Tiffany have extended their service offering to the culinary sector, both having opened cafés over the past few years. Louis Vuitton’s café and restaurants, Le Café V and Sugalabo V, launched last year and can be found in Osaka, Japan. The restaurants have exclusive settings, suggestive of the luxury of the brand. Tiffany’s Blue Box Café, which launched back in 2017, can be found in Harrods, London – where everything is of course, Tiffany blue. This colour is a registered trade mark in the UK for, amongst other goods and services, jewellery and a range of retail services.
Italian fashion house Fendi also opened a pop-up ‘caffe’ over the 2020 Christmas period in Selfridges, London. The ‘caffe’ featured yellow decor, the colour of which is synonymous with the brand, and coffees that were patterned with the Fendi classic FF logo, making taking a break from shopping rather glamorous.
While it is great to see brands venturing into new spaces, there are some IP considerations that need to be made and more specifically trade marks:
- Can you use the mark for the new products and services of interest?
It is important that before launching into a new space outside of your brand’s usual business activities, you conduct a clearance search. This ensures that you are not going to run into any issues with third parties that may have earlier trade mark rights in an identical or similar mark for those particular products or services that you intend to venture into.
2. Review your existing trade mark protection.
If your existing trade mark applications or registrations do not cover new product or service offerings and they are offerings that are here to stay (less so important for temporary offerings), before you launch it would be advisable to file a trade mark application to cover these new areas of interest.
3. Review any existing agreements / undertakings with third parties.
In the event that you have previously entered into an agreement with a third party or signed undertakings regarding the use of your trade mark, if you are venturing into new areas, these may need reviewing, updating or renegotiating, in order to ensure that no agreed terms have been breached and to reflect your new product or service offering.
If you need any assistance with clearance searches, updating your trade mark protection or reviewing and renegotiating agreements, do get in touch with us here at R&G and we would be happy to help.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.