Repurposed fabric face coverings - what options are available to affected brands?

At least in the UK, as the Government continues to nudge us in the direction of something resembling pre-Covid normality, the number of people wearing face masks outside of the home has inevitably increased. And, naturally, the market has responded, increasing the supply of standard medical-grade face masks, as well as “designer” face coverings. 

This GuestKat is particularly interested in the second category. Some clothing brands have launched their own face coverings, but a cottage industry of repurposed designer fabrics has also sprung up. Enterprising individuals have created face coverings fashioned from designer scarves, handkerchiefs and other items from luxury brands such as Hermes, Versace and Louis Vuitton. Some of the face coverings appear to be made from genuine items, but there will also be many counterfeits. Either way, brand owners are facing a new challenge, and it is interesting to watch their response.  

The problem

Whether a mask is made from genuine or counterfeit fabric, the challenge for brand owners is more acute than normal because of the context. Face coverings are now widely considered to have at least some safety benefits, but the degree of benefit depends on several factors, including the type of fabric and method of construction. There is no guarantee that a repurposed garment will make an effective face covering. This may pose a safety risk to the consumer (and to those with whom they come into contact). This, indirectly, leads to a reputational risk for the brand behind the original fabric, in addition to the usual problem of value leakage caused by counterfeits and certain forms of secondary sales. 

What can be done?

Generally speaking, brand owners can deal with counterfeit items via their usual brand protection programmes and legal routes. The more difficult (and therefore interesting) challenge is how to deal with secondary sales of repurposed genuine items. 

Since the start of the Covid-19 crisis, several luxury brands have launched their own lines of face coverings. This helps to deal with the challenge of repurposed fabrics (as such products become less attractive to consumers by comparison), but may not be enough to eliminate all such products. 

Can brand owners legally oppose the repurposing of their legitimately-purchased fabrics? In short, yes. 

Trade mark infringement

Assuming that the repurposed product is sold under and/or incorporates a brand owner's trade mark (in each case in a manner that is liable to affect the functions of the trade mark), this is likely to give rise to a trade mark infringement claim. In some cases, the facts may allow a parallel imports type claim. In most cases, even if the original product was placed on the market on which it is being re-sold in its repurposed form, trade mark exhaustion should not be an obstacle for the brand owner. Under Article 15(2) of the Trade Marks Directive (and the Regulation), a trade mark owner can oppose further commercialisation of genuine goods where it has "legitimate reasons" to do so, "especially where the condition of the goods is changed or impaired after they have been put on the market". It is almost certain that the condition of the original product will be altered and/or added to in turning it into a face covering. There is little doubt that this would give the trade mark owner a firm legal basis to oppose such repurposing. 

Design infringement

Brand owners may also be able to rely on other IP rights. In some cases, design rights may be available. Article 21 of the Regulation on Community designs (regarding exhaustion of rights) is materially identical to Article 15(1) of the Trade Marks Regulation and Directive, although the Design Regulation lacks an equivalent provision to Article 15(2). The case law, however, strongly suggests that the position would be the same for designs as for trade marks. In Verlängerte Limousinen (Case I-ZR 89/08 [2010] GRUR Int 12/2010), the Bundesgerichtshof made clear that a stretched version of a genuine Daimler car infringed Daimler's RCD because Article 21 relates to products that have actually been put on the market, not altered versions of such products.

Copyright and moral rights

This is perhaps the most challenging area for brand owners in relation to the issue of repurposed fabrics. Even before Cofemel, (artistic) copyright would subsist in many designer fabrics. In light of the CJEU's decision in Art & Allposters International BV v Stichting Pictoright (Case C-419/13), it is at least arguable that the conversion of the original product may infringe the reproduction right of the owner or copyright in the original work. This argument would, however, be highly dependent on the facts (and in the UK there is the additional issue that the separate adaptation right expressly does not apply to artistic works, which may affect the interpretation of the scope of the reproduction right). 

Obviously, products fashioned from unlawful parallel imports will be infringing copies for the purposes of section 18 of the CDPA (and equivalents). Moral rights belonging to the author of the original work may also assist, but employed or retained designers are usually asked to waive their moral rights (as they cannot be transferred to the design house). Depending on the wording of any waiver (i.e. whether the waiver is as against the world, or as against the design house only), it may still be possible for the author to bring a claim objecting to derogatory treatment of their work. 

"Pleated Covid mask making - Vicky's HK pattern - using pegs to lessen holes made with pins" by Rain Rabbit is licensed under CC BY-NC 2.0.