Jimmy Choo takes trademark action against Chu
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Jimmy Choo is taking a preemptive strike at some potential competition. Xianjie Zhu, a 19-year-old from Guangdong Province in China, goes by Jerry Chu at Central Saint Martins, where he’s a fashion student specialising in menswear.
Last year, at the recommendation of his father, he applied to register his English name in Beijing in case he decided to use it to start a clothing line in the future. With two years left of school, Chu had not yet given starting a line any serious thought, he said.
Last week, the footwear and accessories brand Jimmy Choo filed a request to invalidate Chu’s trademark, arguing that the similarities between the names Jimmy Choo and Jerry Chu would cause confusion in the market.
The company cited previous trademarks it has successfully invalidated, for trademarks including Jenny Choo and Ray Choo.
Susan Scafidi, founder and director of the Fashion Law Institute at Fordham University’s School of Law, said these disputes are common — so much so that she always urges young designers not to name their businesses after themselves.
“Designers with common names in particular often have to engage in protracted legal disputes with companies who already own the same or similar names,” she said.
But fashion consumers today are accustomed to distinguishing between namesake labels with similar names, such as Alexander Wang and Vera Wang, said Scafidi, and there is hope for independent designers.
“Designers with common names in particular often have to engage in protracted legal disputes with companies who already own the same or similar names,”
Last month, Thaddeus O’Neil, the surf-inspired menswear label, reached a settlement with surfwear brand O’Neill after more than four years of legal disputes between the two companies.
Scafidi explained that a significant difference between those disputes and Jerry Chu’s situation is that in the US, trademarks must be used in commerce in order to be valid. Having an active business can also help demonstrate that a brand with a similar name is not producing similar products or “trademark squatting” in order to get a payout from a larger brand. Brands with global name recognition like Jimmy Choo are especially vigilant about trademark protection.
“Jimmy Choo may well have assumed that the Jerry Chu registration was just another attempt to trade on the established Jimmy Choo name, since soundalike registrations are a particular problem in countries like China, whose primary writing system uses characters rather than letters,” said Scafidi.
Chu and his lawyers will wait to see what the trademark committee decides, he said, hoping that the situation can be resolved quickly.
The student posted the legal papers on Instagram this week, catching the attention of fashion’s social media watch dogs, Diet Prada, who echoed his frustration and spread the word.
“I’m surprised so many people would care about me, an independent designer, a student,” he said.
Questions & Answers
Q.Why did Jimmy Choo file a request to invalidate Jerry Chu’s trademark registration?
Why did Jimmy Choo file a request to invalidate Jerry Chu’s trademark registration?
The footwear and accessories brand argued that the similarities between the names Jimmy Choo and Jerry Chu could cause confusion in the market. They have previously invalidated other similar trademarks like Jenny Choo and Ray Choo.
Q.What is Jerry Chu's current situation regarding the trademark, and how did it originate?
What is Jerry Chu's current situation regarding the trademark, and how did it originate?
Jerry Chu is a fashion student who registered his English name in Beijing last year at his father's recommendation. He had not seriously considered starting a clothing line yet when Jimmy Choo filed to invalidate his trademark.
Q.What does an expert say about the commonality of such trademark disputes?
What does an expert say about the commonality of such trademark disputes?
Susan Scafidi, founder of the Fashion Law Institute, states that these disputes are common, often leading to protracted legal battles for designers with common names. She advises young designers not to name their businesses after themselves.
Q.How might trademarks needing to be used in commerce affect a dispute like this in the US?
How might trademarks needing to be used in commerce affect a dispute like this in the US?
In the US, trademarks must be used in commerce to be valid. An active business can help show a brand with a similar name is not producing similar products or 'trademark squatting' for a payout from a larger brand.