Imelda
can exclusively reveal that independent footwear designer Camilla Skovgaard has unleashed her lawyers on Australian e-tail/wholesale brand Tony Bianco. What prompted this call to arms? Last week the London based Skovgaard discovered the Australian brand was reproducing one of her signature designs.
spot the difference?
This
isn’t the first time IP / Trademark lawyers have sought injunctions, sued or
issued Australian footwear brands with cease and desist orders.
In 1995
Doc Martens Pty Ltd took the Figgins Holdings, Bata Shoes, Windsor Smith and
Rivers Footwear to court after discovering the companies were manufacturing
and retailing a line of Doc Martin inspired footwear called ‘ah! SOUL’. In May 2000 Justice Goldberg ordered the
companies to make financial reparations to Doc Martens.
Source
More
recently, lawyers for luxury footwear giant Christian Louboutin issued Sydney based
retail/wholesale brand Peep Toe Shoes with a ‘cease and desist’ order after the
French based brand discovered Peep Toe Shoes were trading on the brand’s signature red sole treatment.
Skovgaard’s maelstrom began mid last week after Imelda received an email from the PR company representing the Tony Bianco brand titled ‘Sexy
Roberto’. Attached were images of the 'Roberto' shoe which bore a uncanny (and not so sexy) resemblance to one of Skovgaard’s signature shoes (seen here on Halle Berry). Accompanying the shoes were additional images, including
one of former Supermodel Cindy Crawford and Oscar winning Actress Halle Berry (as seen on Imelda),
both wearing the signature Skovgaard shoe.
The email was vaguely worded and read “Cindy and Halle –
style maidens at any age. Tony Bianco's shoes: 'ROBERTO' are a gorgeous heel for day or night, casual or glam. And a sure hit for Spring Racing season. In Bronze metallic, Black metallic and Vintage Gold, Roberto retails for $159.95".
Whilst
it’s standard practice for PR companies to match celebrity images to High Street
looks it is a first (that Imelda knows of) to imply, however vaguely, that the
celebrities were wearing the High Street label.
After alerting Skovgaard to the email, I learnt the following day both Tony Bianco and the brands PR company had received
formal notification from Skovgaard’s representatives. In the correspondence
(which has been sighted by Imelda) they were advised “the appropriate attorneys
have been notified” and the Public Relations Company were asked to “immediately
cease to publicize this celebrity placement. Furthermore, please contact all
press that have been distributed this release with a retraction/noted
correction”.
As a
recipient of the original email the
Despotic Queen has yet to receive any form of correspondence correcting the implied
connection. However, I have been in contact with several high placed fashion industry sources
and they confirmed an email correcting the misrepresentation had been sent.
Talking to the
Despotic Queen, Skovgaard noted, “I understand the industry is full of
‘inspiration’ taken from various sides but that they haven’t even bothered to
chance one bit seems downright lazy and shameless.”
The original
The copy
This morning I spoke to a representative from the Australian Commonwealth Intellectual
Proprieties department (which covers Design Law) and I was advised “To be registrable, a
design must be new and distinctive. 'New' means the identical
design has not been publicly used in Australia nor has it been published in a
document within or outside Australia.
For
example, a design would not be considered new if it had been 'published' on the
Internet before the date it was filed (or its priority date, whichever is
earlier).
Source
In lay speak this mean’s in
order to protect your commercial designs against infringement, designers are
required by Australian law to register each design at a cost of $200 (£ 98) per
design.
Uncertain if Skovgaard's designs were registered I probed the IP representative for the ‘worst case
scenario’. She replied “If the design wasn’t registered then it’s not protected
by Australian Design Law”. Offering a small glimmer of hope she went on to say
“providing the designer has sufficient evidence, a case could be bought against
the brand under Common Law”.
While there are a number of
other variables, including investigating IP protection via trade agreements, it
would appear that if Skovgaard hasn’t registered her designs, companies like
Tony Bianco will continue to infringe, until a lawsuit is bought before the courts. (Imelda would advise all designers to
seek additional legal advice – as the history books will tell you, I avoid the law).
While I was corresponding with Skovgaard she made a poignant
statement that strongly resonated with the Despotic Queen. “Perhaps they (brands like Bianco) forget that the designers have invested money and
years in footwear training in order to learn the craft. When you finally reap the benefit of that hard work someone tries to steal it at first opportunity. It’s
disheartening”.
Over the past
week I’ve spoken to a number of international designers and they’ve all agreed
that the new battleground is trademark / intellectual property infringement.
Sitting around
the Palace of Despotism sermonizing won’t change the state of the industry, but
with high profile designers like Skovgaard spot lighting the shenanigans on
Australia’s High Streets, other independent designers are going to follow her
lead…and they aren’t going to be happy with what they see.
As the battle
spills out into the court of public opinion and Imelda becomes ‘despotica non
grata’, Australian wholesale/retailer's should note, I'll be looking EXTRA closely next time you 'get the look'.
More information
on how to register and protect your designs (in the Australian market) can be found HERE.
