Alexander Wang has earned back the rights to the use of his name in a trademark battle with a company Etincelle Paris, who according to the courts had registered the Alexander Wang name as at trademark in “bad faith,” on a class of registered goods (class 3) that enable the commercial use of the designers name on “perfumes and cosmetics."
In December 2011, Etincelle Paris International Group, filed an application to register a community trademark for the name Alexander Wang, ( a community trademark covers all of the countries in the European Union). The application was granted in May 2012, and on the 3rd October 2013, Alexander Wang invoking Article 52(1)(b) of the community trade mark regulation (CTMR) filed a request to declare the trade mark invalid on the grounds that the company Etincelle Paris had registered the name in bad faith.
According to Article 52(1)(b) CTMR, a community trademark must be declared 'invalid' if the holder of the trademark was acting in bad faith when the application was filed. There is no precise legal definition of bad faith, but in previous cases the courts have been of the opinion that “bad faith appears as an inherent defect in the application” suggesting that “bad faith involves conduct which departs from the accepted principles of ethical behaviour or honest commercial and business practices.”
In a decision given by the European Intellectual Property Office’s Boards of Appeal this week, coming to the conclusion that there was indeed bad faith, the courts questioned why:
1. Of all the names Etincelle Paris could have chosen to file in a CTM application, it happened to choose the unique name of a well know fashion designer.
2. Of all the tens of thousands of goods and services Etincelle Paris could have chose to register the mark for, it chose class 3 which contains products such as cosmetics and perfumery, which allows an easy means to exploit the name and repute of a famous fashion designer for commercial gain.
Turning to press evidence submitted by Alexander Wang, one of the relevant factors taken into account in the courts overall assessment of whether Etincelle Paris acted in bad faith, was use and knowledge of the sign Alexander Wang across fashion business in well know magazines and news papers, in particular Vogue, Elle and Grazia. The board was of the view that the “evidence submitted…definitely proves that Alexander Wang is the name of a designer, who at the time of filing of the CTM application was not only well known in the United states, but also widely known in the European Union.”
Commenting on Wangs appointment as creative director of the European luxury fashion house Balenciaga in Paris, even though this appointment happened after the filing date of the contested mark the courts said “it cannot be ignored” and “such a prestigious appointment is the consequence of renown acquired in previous years.”
The board also consider evidence that showed that the Etincelle Paris had also filed trade mark applications in china for other names of well known contemporary fashion designers including Zantotti, Giambattista, Christopher Kane, Isabel Marant, Phillipe Plein and Alexander Wang and called this a “misappropriation of other traders goodwill’
And invalidated Etincelle Paris community trademark.
This is a legal triumph for designer Wang who launched his own eponymous label in 2005, and left Balenciaga as creative director last year, shortly after creating the first fragrance for the luxury fashion house may mean that we might see the introduction to the market of a fragrance under his very own name soon. After all fragrances are big business for high-end fashion designers to which large profits are made on brand extensions of their name in lucrative licensing agreements, for the sale of eyewear, cosmetics and perfumes.
The judgement is also good news for designers who seek a cause of action against trademark trolls who profit from the registering of famous and well-known luxury brands & designer names.