Patterns of Protection: IP case law update for fashion brands

Deity Shoes decision: CJEU provides new guidance on fashion design right

Case C 323/24, Deity Shoes v Mundorama Confort & Stay Design (judgment of 18 December 2025)

The recent Deity Shoes v Mundorama Comfort & Stay Design decision from the Court of Justice of the European Union clarifies how designs in the fashion industry are protected under EU Community design law. The Court confirmed that, unlike copyright, design protection does not require any “originality” in the sense of reflecting the creator’s personal touch. As long as a design is new and has “individual character” – meaning it gives a different overall impression to an informed user compared with earlier designs – it can qualify for protection.

This is particularly important for brands that work from suppliers’ catalogues. In Deity Shoes, the designer had assembled shoes by selecting standard elements such as soles, uppers, buckles and decorative parts from catalogues.

The Court said that this catalogue-based process does not automatically prevent a design from being protected. Even if each component already exists, the combination of those elements may still create a sufficiently different overall impression compared to any earlier design looked at individually. Crucially, prior designs cannot be pieced together like a “mosaic” of isolated features to argue that a new design lacks individual character.

The Court also addressed whether fashion trends reduce the level of creativity needed for protection. It held that trends, unlike technical or legal constraints, do not genuinely restrict a designer’s freedom to choose how a product looks. As a result, the threshold for “individual character” is not lowered simply because a design follows a popular trend: minor differences will not automatically be enough to earn protection.

Overall, the ruling reassures fashion businesses that they can obtain and enforce Community design rights for products built from standard components, without having to prove a special level of originality. At the same time, it confirms that protection is not easier to obtain just because a design is “on trend”: the design must still stand out from earlier designs in the eyes of the informed user.

CJEU on designer-name brands: when post‑assignment use becomes deceptive

Case C 168/24, PMJC v Créative SAS (judgment of 18 December 2025)

The CJEU has handed down an important judgment for fashion and luxury businesses built on eponymous brands (C 168/24, 18 December 2025).

In the latest instalment of the Jean Charles de Castelbajac judicial saga, the Court has confirmed that a trade mark consisting of a fashion designer’s name can be revoked where it is used in a way that misleads consumers into believing the designer is still involved in the design of the goods, when that is no longer the case.

The dispute concerned French trade marks corresponding to the surname of fashion designer Jean Charles de Castelbajac. Following insolvency proceedings, the business and the marks were acquired by PMJC SAS, while Mr de Castelbajac continued for a time to design new collections under a services agreement. Once that collaboration ended, Mr de Castelbajac continued to use the eponymous marks. PMJC sued for trade mark infringement and Mr de Castelbajac counterclaimed to revoke the registrations, arguing that consumers were being misled into believing he was still involved in the design of the goods.

In that context, the CJEU was asked to clarify when the use of a lawfully assigned trade mark becomes deceptive for the purposes of EU trade mark law.

The Court first reiterated that the mere fact that a designer name mark is used by a company with which the designer is no longer connected is not, on its own, enough to justify revocation: the average consumer understands that not all products sold under such a brand are personally designed by the namesake. Revocation instead requires proof of actual deception, or a sufficiently serious risk of deception, assessed in light of all relevant circumstances and the way the proprietor uses the mark.

In this case, the Court highlighted that use of the mark on goods featuring elements belonging to the designer’s specific creative universe – against a background of prior findings of copyright infringement – was a relevant factor that may increase the risk that consumers wrongly attribute the designs to the designer.

This decision sends a clear message for the fashion industry: even where a company has validly acquired trade marks identical to a brand founder or designer’s name, its branding and product strategy must not suggest ongoing personal involvement where there is none. If the overall presentation of the mark and the products crosses that line, the eponymous trade mark itself may be exposed to revocation.

The case now returns to the Court of Cassation, France to apply the findings of the CJEU and make a determination in the case.

Dryrobe v D-Robe: Distinctiveness, Descriptiveness, and the Battle Against Genericide

Dryrobe Limited v Caesr Group Limited [2025] EWHC 3167 (IPEC)

Descriptiveness

The court found that the DRYROBE marks were indeed descriptive of certain goods for which they are registered, including their core product line changing robes. However, the court concluded that the marks had acquired a significant degree of distinctive character. Dryrobe Ltd had rapidly increased in popularity and served as the official robe supplier for Team GB at the Olympics in 2016, 2022, and 2024.

Generic nature

Further, the court noted that Dryrobe had made considerable efforts to prevent their word mark “DRYROBE” from becoming generic. These efforts included sharing numerous videos and posts on social media distinguishing DRYROBE from generic changing robes, frequent use of the ® symbol, guidance on their website regarding proper use of the term DRYROBE and policing the improper use of DRYROBE by social media users and third-party publications. These actions convinced the judge that the mark was perceived as a brand name rather than a generic term.

HHJ Clarke also observed that although many consumers “google” something, they still recognise Google as a brand. Similarly, the DRYROBE marks had not become the common name in the trade for the relevant goods.

Dryrobe’s infringement claim

The judge found similarity between the parties’ marks and, given the identity of the goods and the acquired distinctiveness of Dryrobe’s marks, ruled in favour of Dryrobe, finding confusion under section 10(2) and infringement under section 10(3). Dryrobe also succeeded in their passing-off claim.

Key Takeaways

Applicants for trade marks should continue to regard distinctiveness as a crucial aspect of their brand and mark. This case illustrates how commercial success enhances the strength of even an inherently descriptive mark. Evidence of actual consumer confusion is also valuable in establishing acquired distinctiveness, showing that consumers view a mark as a brand rather than a product category. Genericide is still quite rare, but it is important that successful brands actively educate and police any generic use of their mark to ensure that it maintains its distinctiveness.

More details about the case here.