French Designer Isabel Marant Gains Rights to Delete Infringing Listing from Third Party Site

French fashion designer Isabel Marant has been steadily gaining international notoriety over the last decade. Some of her designs, such as the low cowboy boots, are particularly recognizable. Her special collection for H&M will be sold in November.

She is also savvy at starprotecting her intellectual property. Her group (Marant Group) recently resolved a dispute with the U.S. site iOffer.com by a settlement agreement which has been approved by the Paris Court of First Instance (scroll down for the English version of the agreement).

iOffer describes itself as “a place to buy, sell, & trade… allow[ing] buyers and sellers to negotiate to buy and sell items in an interactive and open format.” It offers trading services, but does not market or sell goods itself.

According to the agreement, the Marant Group contacted iOffer in November 2011 asking it to remove from its site items which allegedly were counterfeiting Isabelle Marant’s trademarks. The site quickly responded to the Marant Group asking for the URLs of the allegedly infringing listings, so they could be disabled.

However, in June 2012, the M. group brought proceedings against iOffer before the Paris Court of First Instance, apparently stating that the site was favoring the distribution and sale of counterfeit products infringing on the M. Group’s rights.

While the case was pending, the parties reached an amicable solution, and the settlement was approved by the Court on June 20, 2013.

Under the terms of the settlement, iOffer grants access to its site to the Marant Group’s designated agent, by granting him user name and password. According to the agreement, the agent will thus be able to delete, using a simplified notification procedure, any listing he would consider as infringing on the Marant Group’s rights. These withdrawals will be made under the sole responsibility of the Marant Group.

iOffer has also put in place two alerts on the key words “lsabel Marant ” and “Marant,” so that the agent can be informed by email if new listings are published using these keywords.

This case is an interesting example of active international enforcement of a fashion designer’s intellectual property rights. U.S. law does not protect fashion designs by copyright, as they are considered “useful articles” by the Copyright Act, and U.S. copyright does not protect useful articles. However, U.S. trademark law may offer protection, such as in the Isabel Marant case. Indeed, the trademarks “Isabel Marant” and “Isabelle Marant Étoile” are protected by U.S. trademarks.

Also, trade dress can be registered as a trademark. Trade dress is not necessarily a dress ;), although BCBG is successful protecting Hervé Léger’s ‘bandage dress’ by trade dress. Trade dress can also protect shoes, bags, or other fashion goods. However, because the purpose of a trademark is to identify and distinguish goods and to indicate the source of the goods, a trade dress must be distinctive, meaning that consumers recognize a particular company as the source of the product. In other words, you see a pair of shoes, and you know they are designed by a particular fashion designer (the source of the product).

Image is  Étoile filante // Shooting star courtesy of Flickr user  Stéfan pursuant to a CC BY-SA 2.0 license.

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