**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’.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.