IP lessons from Emily in Paris? Va Savoir!

**WARNING: This article contains spoilers about season 5 of Emily in Paris**

Whilst I’m hesitant to downplay the fact it was our first Christmas as a family of four and therefore filled with many special memories, I cannot deny that I was (possibly almost equally) excited for the launch of season 5 of Emily in Paris just before Christmas. My addiction to the show is such that I may have lengthened a few contact naps pretending my daughter wouldn’t settle so that I could squeeze in an extra episode or two..! 

Having grown up in France myself and therefore fully appreciating the frequent play on words between the two languages, the show has fast become a regular staple of my TV scheduling habits. Imagine my added excitement last season then when an allegation of trade mark infringement was introduced into the storyline! Hopefully sufficient time has passed that any fans who weren’t able to watch it over the Christmas period have now caught up… If not however, please do not read any further and spend your time watching the show instead!

For those who have watched the latest season, they will know that Emily’s new beau, Marcello Muratori, decides to deviate from the family business and launch his own clothing line under the brand name Marcello Muratori. The issue? His family business is the luxury cashmere clothing company, Muratori. Identical goods and the shared identical element, Muratori, in the brand name resulted in a prime case for his family alleging trade mark infringement when they objected to his solo launch. 

Part of me was pleased to see the severity of trade mark infringement issues being given the limelight; the other part cringed as, to any attorney or IP-savvy individual, the potential ramifications of the brand name Marcello had chosen had been glaringly obvious long before Marcello was publicly served with Court papers. I was (silently, of course, whilst holding a sleeping baby) screaming at the TV when Sylvie, head of the marketing firm Savoir, agreed to come onboard as a partner in Marcello’s new business venture despite no due diligence having seemingly been conducted.

Perhaps however Marcello was aware of the IP complications he was unravelling when he launched his own brand; and perhaps a scene where he or an attorney sits and reviews the trade mark register and discusses the complications of using the Muratori name weren’t quite as comparable as the dramatic pause and commotion that ensued by being served court papers in public.

On a serious note however, the story-line does highlight the importance of considering any potential intellectual property issues at an early stage. For brand owners, investors, as well as any marketing firms, do make sure that trade mark clearance searches are conducted, and broader IP risks considered, ahead of any new launches. The consideration also applies to sales and acquisitions: one of the famous examples is of course fashion designer Karen Millen who was prevented from using her own name in relation to the launch of a new luxury fashion and homeware line, after previously assigning all rights to a third party over ten years previously when she sold her fashion business.

Whilst defences to trade mark infringement can be available, the pre-requisite (certainly in the UK) often is that use must be in accordance with honest practices and use of one’s own name must be by individuals, not companies, for example. Disputes can therefore become messy and costly – and, in my experience, not just financially if the parties involved are related.

As my colleagues Hannah Finster and Ella Newell have both explored last week in the context of the Beckham saga (Why the Beckham "family feud" is also a lesson in IP strategy and What's in a name? Trade marks & 'Brand Beckham'), trade mark strategy can often collide with personal autonomy. Whilst producers of TV shows and films can engineer happy endings to family disputes, occasionally reality is not quite ‘la vie en rose’.