[Patent Talk] Why Burberry Protects Its Check Pattern with Trademark Rights

Checked school uniforms are set to disappear from 2023. In 2019, Burberry sued school uniform manufacturers, claiming that uniforms featuring a check pattern infringed its trademark rights, and the Korea School Uniform Industry Association, representing the uniform makers, reached an agreement with Burberry through mediation to change the design of uniforms supplied from 2023 onward.

Here, however, something strange stands out. A "check pattern" is a matter of design, so why did Burberry file a trademark infringement suit rather than a design right infringement suit? This question occurred to me as well, so I searched Burberry's registered design rights and trademarks.

In Korea, Burberry holds a total of six check-pattern design registrations covering scarves, footwear, hats, shirts, slippers and textile fabrics, and No. 099837 in the table is the design right registered for textile fabrics. Burberry also holds a total of 11 trademark registrations for its check pattern, and No. 0419956 in the table is the trademark registered for clothing and other goods.

Burberry's check pattern is known to have become famous in the 1960s. A check pattern design that has been public for more than 60 years can no longer be registered as a design because it has lost novelty, and even assuming it had been registered before, the right would have expired after its 20-year term. The design registered in 2018 (No. 099837) is merely a new design that combines the check pattern with a rainbow stripe.

Burberry was therefore in no position to assert design rights against checked school uniforms, and it appears to have asserted trademark infringement as a natural alternative. For trademark infringement to be established, however...