Fashion Upcycling as Protected Free Speech in Trademark Law

Fashion upcycling offers unprecedented opportunities for the sustainable reuse of clothing. Using second-hand garments as raw material for new creations, upcyclers transform used pieces of clothing into new fashion products that may become even more sought-after than the original source material. The more fashion elements enjoy trademark protection; however, the more legal obstacles arise. Fashion upcycling may trigger allegations of consumer confusion, brand dilution, and unfair freeriding. As the Introduction will explain, the exhaustion of trademark rights after the first sale does not necessarily dispel concerns about trademark infringement. The rearrangement of branded garment components in the upcycling process may render the first sale doctrine inapplicable and give the trademark proprietor ammunition to oppose the resale. Against this background, the analysis explores other strategies to assure fashion upcyclers that, as long as they do not specifically aim at misleading consumers or damaging and exploiting protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. To lay groundwork for this approach, Section I focuses on trademark theory that stresses the need to develop a specific set of rules capable of shielding the expressive use of trademarks against allegations of trademark infringement. In the light of cultural sciences, Section II demonstrates that fashion upcycling constitutes a specific form of artistic speech – and a specific form of expressive trademark use – that has particular societal value in the current environmental crisis. It offers a vision of alternative, more sustainable production and consumption patterns. Therefore, fashion upcycling should benefit from breathing space for free speech in trademark law. Taking this insight as a starting point, Section III discusses two avenues for supporting fashion upcycling in trademark contexts: first, the option of adopting a strict test of use as a trademark that could immunize sustainable fashion reuse from allegations of trademark infringement on the ground that consumers will understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. Second, the option of strengthening defenses, in particular the referential use defense, by developing labelling guidelines that allow upcyclers to ensure compliance with the requirement of honest practices in industrial or commercial matters. The Conclusion offers concluding remarks. The EU trademark system – the Trade Mark Regulation (“EUTMR”) and the Trade Mark Directive (“TMD”) – will serve as a reference point for the discussion.