Phoenix rises from the ashes for Australian designer brand

Australian designer brand Viktoria + Woods has renamed its iconic leather jacket due to a “trademark technicality”. As announced on its Facebook page just before Christmas, the jacket formerly known as ‘the Hendrix’ has done a Prince and is now known as ‘the Phoenix’.

The designers seem relatively upbeat about the change – writing “New Year, New Name, Same Favourite” and indicating that they are “proud of its international recognition”. We were similarly upbeat. Any mention of a potential trade mark dispute which meant we could disguise as research the casual perusal of buttery soft leather jackets, stunning silks and ‘wardrobe staples’ sounded great to us.

Honestly, we were fascinated to delve further into how the use of the style name ‘Hendrix’ in relation to leather jackets could involve trade mark law at all. [Really, we were!]

A quick search of IP Australia’s online trade marks register shows that a Seattle-based company called Experience Hendrix, LLC (according to the Jimi Hendrix website “the official family company charged with managing the name, likeness, image and 100% of the music of Jimi Hendrix’s legacy”) owns a number of registered trade marks in Australia, including:

  • the word HENDRIX in class 32 for non-alcoholic beverages (TM no. 1172225);
  • the words JIMI HENDRIX in class 32 for non-alcoholic beverages (TM no. 1172222);
  • the words JIMI HENDRIX in class 9 for a variety of goods including sunglasses, audio discs cell phone covers and guitar amps (TM no. 1224304);
  • a composite trade mark including the words EXPERIENCE HENDRIX and an image of Jimi Hendrix in class 9 for a variety of goods including recording apparatus, computer software, sunglasses and guitar amps (TM no. 1224071);

and relevantly for Viktoria + Woods:

  • the words JIMI HENDRIX in class 25 for goods including clothing, footwear and headgear (TM no. 954077);
  • a composite trade mark including the words AUTHENTIC HENDRIX and an image of Jimi Hendrix in class 25 for clothing, footwear and headwear including jackets and leather and leather imitation clothing (TM no. 1224076); and
  • an image of Jimi Hendrix’s signature in class 25 for clothing, footwear and headwear including jackets and leather and leather imitation clothing (TM no. 1224303).

As the owner of

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a trade mark in Australia, Experience Hendrix, LLC has the exclusive right to use the words JIMI HENDRIX in relation to clothing. This means it has a basis to stop others from using JIMI HENDRIX or something like it as the brand name for goods in the same or a similar class to the registered mark.

As pure speculation, it may be that Experience Hendrix, LLC tried to enforce its rights against Viktoria + Woods, for using the HENDRIX brand. True

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it is, only one part of the trade mark is being used (where’s JIMI..?) but it may give grounds for an argument of deceptive similarity. Or maybe Viktoria + Woods noticed of its own accord that the existing JIM HENDRIX trade mark was an impediment to its own proposed registration for HENDRIX .

Celebrity names are frequently used as style names in the fashion world, often with the celebrity’s permission. Think Mulberry’s Del Rey and Alexa handbags and Hermes’ Birkin (seriously expensive hat tips to Lana Del Rey, Alexa Chung and Jane Birkin). However, this gets complicated where the celebrity has a trade mark or otherwise wants to capitalise on the use of their name in relation to clothing or accessories, for example:

  • in 2010, Zooey Deschanel instituted proceedings against Steve Madden for breach of a $1.5 million dollar endorsement deal by selling “Zooey” shoes; and
  • the estate of interior designer Tony Duqette (famous for his signature leopard print) sued for trade mark infringement, first against Michael Kors for naming a resort collection “Duqette”, and second against J.Crew for naming a sweater the “Duqette Factory Leopard Print”.

Whether or not Viktoria + Woods had guitar guru Jimi Hendrix in mind when thinking up the style name for its leather jacket, it seems to have trod into tricky trade mark territory from its choice of a name.

This should serve as a salient reminder to all brands to:

  1. Do your due diligence before selecting a style name. It’s not just your brand name that can be considered a trade mark, but also your various style or product names. IP Australia’s online trade mark register can be searched for free here; and
  2. If you have a style or product which you think will be very popular, or has already been very popular, consider registering that style name as a trade mark. This will put you in a stronger position to prevent others from selling similar products under that style name.
  3. Finally, don’t forget the Designs Act! It’s a cool piece of legislation allowing creators to register 3D designs for things such as clothes. This can be a very useful tool for enforcement in the fashion world.

About the Author

Samantha McHugh
Samantha McHugh is a solicitor loving everything media, food, fashion and IP, who would like to get to pilates more frequently. With a penchant for mustard-coloured home furnishings and a mean repertoire of desserts, Sam has dreams of one day juggling a successful legal career with a chase for an endless summer around the globe. Sam also enjoys reality TV and online shopping to an extent which is unhealthy. Sam loves writing posts about branding, marketing, celebrities and anything that makes her giggle.
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