Stories

Spot the Difference

The above picture shows two identical pairs of authentic Levi’s jeans with one small but incredibly important difference. Have you found it? The pair of jeans on the right has the iconic red tab with the word LEVI’S displayed on it whereas the pair of jeans on the left has only a blank red tab with the registered trade mark symbol.

This is anything but a manufacturing mistake, it is instead part of a highly sophisticated trade mark filing strategy.

How Trade Marks Identify a Brand

The function of a trade mark is to act as a badge of commercial origin. In other words, it identifies the source of the specific goods or services. Trade marks can also, importantly, give confidence to consumers as to the quality of the goods or services.

So, for example, when you see the word “LEVI’S” on a pair of jeans, you immediately know they are an authentic, high-quality pair of Levi Strauss & Co’s jeans.  

Words are not the only effective trade marks. Think of the Nike swoosh or the Apple logo, which are used by themselves without any words. They still signify commercial origin and guaranteed quality. You immediately know what you are looking at when you see them.

Levi’s Layered Trade Mark Strategy

Levi Strauss & Co has a plethora of registered trade mark and patent protection covering different features of its jeans.

As well as registered trade marks for the more traditional signs you would expect a brand to protect, such as the word mark “LEVI’S”, it has a variety of more creative trade marks protecting features of the products themselves which, in turn, protect the wider brand. Such protected features include the stitching on the back pocket, the button, the two-horse leather patch, the inside of the front pocket and, most interestingly, the blank red tab.

The blank red tab is a fascinating example of trade mark protection. Even if you take away the word “LEVI’S” or the colour red, the blank tab still functions as a trade mark by indicating that the jeans are a genuine Levi’s product. The use of the ® symbol is a further indication to the public that Levi Strauss & Co is using the blank tab as a source identifier.

Going further, as well as its blank red tab trade mark registrations, Levi Strauss & Co has a position mark: UK00902292373. This trade mark purely protects the specific placement of the red tab on the back pocket of trousers, shorts or skirts, but importantly does not give an exclusive right to the shape or colour of the pocket.

Taken together, these registrations create overlapping layers of protection.

Why This Matters for Copycats

As touched on above, traditional trade mark protection is used to promote and protect a brand, including by preventing third parties from using its name or logo.

Traditional trade mark protection is a clear way to stop counterfeit products entering the market. By counterfeit, I mean products which explicitly use a brand’s name or logo without permission to trick consumers into thinking they are buying a genuine, authentic, high-quality product.

But what about copycat products? We are all aware of shops that sell products which, from afar, look like genuine branded products but, up close, do not directly copy the brand’s name or logo and instead only give the impression of the genuine brand.

Where only more traditional trade mark protection is available, the brand may of course have a claim for passing off, but this can be a more difficult argument to pursue. Passing off requires a brand to prove goodwill, misrepresentation and damage, which can be incredibly expensive and evidence heavy.

Levi Strauss & Co’s registration of the blank tab gives it a clearer basis for bringing a trade mark infringement claim where a copycat uses a similar tab bearing a different name, on its products. Its position mark may provide a further layer of protection where that tab is placed in the protected position on the back pocket. These registrations significantly narrow the scope for a copycat to argue that it has not used Levi Strauss & Co’s registered trade marks.

Use It or Lose It

You may think, “Great, I have my mark registered at the UKIPO, so now I can stop all these pesky copycats.” But it is not enough simply to have a registered trade mark: you must use it. Trade marks which have not been used for a continuous period of five years are vulnerable to revocation for non-use.

According to Levi’s, roughly 10% of its products include the blank red tab, helping to maintain use of the mark. Using the mark consistently is not just a procedural necessity, it is also an evidential priority.

If you need to take action against a copycat, whether through a cease and desist letter or a court claim, you will likely need strong evidence of your use of the trade mark to help support your arguments that there is a likelihood of confusion and/or that the mark has a reputation in the UK.

Thinking Outside the Box

Relying solely on a traditional trade mark, such as your brand name, can be difficult (although not impossible) when someone uses distinctive elements of your wider brand without giving you a clear-cut case of trade mark infringement.

Registering less conventional trade marks is not always straightforward. Depending on the nature of the mark, the Registry may question whether consumers would perceive it as identifying the commercial origin of the relevant goods or services, rather than as a decorative or functional feature. If the mark is not considered distinctive enough on its own, the applicant may need to submit evidence showing that it has acquired distinctive character through use. This can make the registration process longer and more complex. Nevertheless, these marks can provide a valuable additional layer of protection for the wider brand.

How long registration takes will depend on the issues raised in each case. By way of example, the Levi’s position mark discussed above was filed on 5 July 2001 but was not registered until 24 January 2005.

Although you may originally have thought that the blank red tab on your Levi’s jeans was a manufacturing error, it actually means you own one of the rarer and more iconic pairs, with a fascinating IP story behind it!

Once you have come up with a great brand name, don’t stop there. Continue to consider ways in which you can protect your wider brand. A useful starting point is to audit the features that customers repeatedly associate with your products.

I encourage more brands to think creatively about their trade mark registrations, get inside the minds of their copycats before it is too late and look beyond the more traditional forms of protection.