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Coronavirus pandemics is starting to encroach on brands and models as well. Face coverings became increasingly recognized as a way to curb the spread of the deadly coronavirus, more so they have become the new must-have accessory.  While many countries faced problems with efficient supply of medical- face masks, and the World Health Organization recommend people to wear cotton face mask, huge market opened up.  There is a trend of the rise of designer masks, several luxury brands have launched their own lines of face coverings, and a rise of repurposed designer fabrics. Many enterprising individuals, have created face coverings fashioned from designer scarves, handkerchiefs and other items from luxury brands such as Versace, Channel, Burberry, and Louis Vuitton. Some of the face coverings appear to be made from genuine items, some of them are counterfeits. While designer masks and repurposed designer fabric masks, look attractive and fashionable, making people more prone to wearing them, they also enable companies to survive the crises. However, in the case of repurposed designer fabric masks there are two important downfalls of those products. First one refers to the safety and quality of those products and the second one refers to the profit lose and reputation risks of brands due to counterfeits. Masks made by counterfeit fabric pose a safety risk to the consumer, consumer assumes that masks are made by original fabric designer, in case fabric is not sufficient quality, consumer attributes the blame to the brand behind the original fabric. This represents a new challenge for many brands.

 On June 9th and 10th, U.S. Customs and Border Protection seized more than 2.000 unapproved face masks bearing counterfeit of Burberry, Supreme, Gucci and Chanel designer logos. While legal actions in this case are pretty up forward, in the case of repurposed designer fabrics, the challenge is how to deal with secondary sales of repurposed genuine items.

After fabric is purchased and in someone’s possession it can be freely used, however they are certain exceptions. If the fabric contains logos of brands the work can be a subject to an trademark infringement. The fabric must be reworked in a way in which you are no diluting brand and potentially confusing customers into believing the fabric that they are buying is produced or licensed by trademark owner. The repurposed products should be sold under the brand name of the creator and also have ”altered” written on their product. To be completely on the up-and-up, the repurposed product should also include a trademark attribution in small print at the bottom in Terms stating who owns the copyright to the fabric design itself.

The First Sale Doctrine allows purchasers to resell or otherwise dispose of a product without seeking permission from the intellectual property owner. The first sale doctrine usually applies to copyrighted work, but with reference to trade in tangible merchandise, such as the retailing of goods bearing a trademark, the first sale doctrine serves to immunize a reseller from infringement liability. Such protection to the reseller extends to the point where said goods have not been altered so as to be materially different from those originating from the trademark owner.The purpose of the first sale provision is to cut off the trademark owner’s rights after the product is first sold, ensuring that they only get one fee from each product. After receiving the desired value of the product, it limits their rights in order to encourage creativity, which enables the purchaser to use or dispose of the purchased fabric the way they want to.

But again, the First Sale doctrine limits its protection to reselling the item in question IN ITS ORIGINAL UNCHANGED FORM. This limitation protects against confusing consumers into believing a “materially” changed good was made by the trademark owner. If a product is modified, and still sold as ”new”, it can’t be sold bearing the original trademark.” This doctrine applies to the first sale, not subsequent sales, and it does not protect reproduction.

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. This would give the trade mark owner a firm legal basis to oppose such repurposing. [1]

Some brand owners may assume, that the use of their brands in repurposed products is not harming brand image and that consumers are unlikely to attribute the product to the brand owner, however in the event that an upcycled or repurposed product is the subject of a product liability claim, evidence that a company knew its packaging was used to create a potentially harmful product, but failed to take action could be damaging from legal and public relations standpoints. A company’s zero-tolerance approach to the repurposing of its branded face coverings could result in negative reports in the press that portray a company as a sole chameleon that adapted to the needs of the market, with little concern for health impacts of its face coverings. Sending a demand letter and/or initiating a lawsuit are among the most direct ways to approach the situation. Brand owners may be able to rely on their trademark protection, copyright and in some cases design rights. Before taking legal action, however, companies should seriously consider obtaining a consumer survey to determine whether confusion is likely.

[1] http://ipkitten.blogspot.com/2020/08/repurposed-fabric-face-coverings-what.html