GET THE LOOK! BUT AT WHAT COST?

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’. 

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. 

Comments

[Sarah]

Really interesting read. I too received that press release and the photos - and no retraction as yet (maybe they don't consider blogs "media"?)

Knowing that it would be unlikely that the celebs were wearing the TB version I had a quick hunt around for the original idea but lacked the footwear knowledge you had to track it down! Still choose not to publish news about it for that reason.

Shame, that's two far too "inspired" cases this week (the other being the Diva/Shanalogic situation).

[candi cave]

This is so wrong!!! It's bad enough that it's becoming almost common practice for PROPER designer's work being ripped off by chain stores. That, unfortunately, is kind of to be expected these days.. (I blame the rise of all these 'Get The Look' pages in magazines)

Anywoo.. more importantly is the fact that a PR agency sent out celebrity images in a press release featuring an unrelated-to-featured-celebrity product. That is like, clutching at straws.. if your product needs that kind of invented-by-you endorsement then think up other ways to promote it!

I would get fired if I did this.. and my client would panic and hate me forever.

tsk tsk tsk!

[Imelda Matt]

Sarah - how interesting that you didn't receive the updated release. Yes, thanks for the reminder about the Diva/Shanalogic situation - like this I was most disturbed by Diva's blatant disregard for ethical business practices.

Candi Cave - A number excellent points and I was thinking about the role 'Get the Look' pages have played in feeding the consumers appetite for catwalk knock-offs.

[Celia M.]

Thanks for post this sort of things. Unfortunately, this is one of the thousand of problems that a (shoe) designer has to face up.
It´s too much expensive to register each design, not only in Australia but also in Europe, what makes you feel defenseless, and knowing that, sooner or later, your designs will be copied.
This situation causes that, to exhibit your shoes at internationals shoe fairs, you have to keep your stand close and safe of "trolls". It´s disgusting.

So, thanks again. Great blog, as usual!

[Sal]

Keep us posted, will you? I hope Camilla gets 'em good ...

[imelda matt]

A few Imeldette's have tweeted that they're having problems posting comments - I'm looking in it.

[giancinephile]

IP issues are always tricky...

I remember Chloe doing this on Topshop years ago when Philo was at the helm...

[adreamer]

well i guess chain stores do it all the time with big names...but
this really sucks especially since camilla is and indie designer.

[Laura]

Tony Bianco is notorious for ripping off designs, just one look at their current stock and it's easy to tell where they got their "inspiration" from. I'm disappointed that the level of similarity has gone from "inspired" to "blatant ripoff", but there will always be the argument that it is a way for those who cannot otherwise afford designer shoes to have access to them.

I think it's a bit insulting, though.

[Pearl Westwood]

Well done for highlighting this issue, it is disgusting they can get away with it!

[OdryHu32]

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