Fashion Upcycling and Trademark Infringement

With this resurgence of creative clothing comes a less than glamorous side of the fashion industry: trademark infringement. As upcycled fashion blurs the line of brand identification, fashion designers are starting to see themselves on the receiving end of cease-and-desist letters. Is this sustainable fashion trend fair game, or is the law about to put the brakes on the upcycled fashion revolution? Let’s explore the complexities of trademark law and how it’s shaping the future of fashion upcycling.

Fashion meets Tech

Fashion enthusiasts isolating at home during the pandemic popularized upcycled fashion, with many picking up sewing and reconstructing clothing as a hobby. Lockdowns restricted access to traditional shopping options, forcing people to shop in their own closets. Social media and e-commerce platforms like Depop provided a perfect stage for DIY upcyclers to showcase their work and build communities with like-minded consumers.

Today, a simple search for ‘upcycled fashion’ yields millions of posts on TikTok and Instagram, fueling the trend and providing users a platform to raise awareness about sustainability in fashion.

For one New York-based designer, upcycling fashion began as an experimental hobby using discarded materials. Nicole McLaughlin, @upcycle on TikTok, posted her creations online – often showcasing repurposed items from big brand names – and quickly gained a cult following. McLaughlin has since collaborated on sustainable fashion projects with Hoka, Hèrmes, and Gucci. Recently, Puma enlisted her to redesign its Puma Suede sneakers in a one-of-a-kind patchwork style using recycled factory scraps.

Beyond social media, brands are joining the upcycling trend by collaborating with technology companies for large upcycling projects. This is the case for British brand Ahluwalia, which has partnered with Microsoft to create “Circulate” – a textile and clothing recycling program where users can send in used garments in exchange for store credit.

These platforms not only provide a marketplace for sustainable fashion but also amplify the message that secondhand materials can be transformed into luxury fashion. Technology’s role in the upcycling trend is empowering a new generation of consumers who prioritize sustainability and creativity in their fashion choices. However, as the value of upcycled fashion continues to grow, it raises complex questions for trademark law – especially when high-profile brand names are repurposed in the designs.

Trademark Challenges to Upcycling

With fashion upcycling becoming more widespread, trademarks — the legal protection of a brand’s signifiers — are becoming a major point of contention. When upcycled designs incorporate brand names, logos, or other symbols that identify the source of the original product, designers may be stepping into a legal minefield. In response to the resurgence of the upcycling trend, trademark owners are starting to assert rights over the reuse of their trademarks in secondary markets.

Courts should consider the principle of exhaustion of intellectual property rights in the case of fashion upcycling. The exhaustion doctrine dictates that trademark owners lose control over the use of material objects once they’ve been sold. By the time customers get their hands on a product, the original brand has already relinquished title to it; in other words, the trademark owner's exclusivity rights are ‘exhausted’ by the time a third party wants to resell or modify the product. The exhaustion doctrine helps unlock the potential of sustainable fashion because it allows for the reuse of secondhand goods without requiring permission from the original owner. The policy rationale behind allowing resale and modification of trademarked fashion hinges on the broader societal benefit of reducing waste and overconsumption, in favour of a circular economy.

Further, the exhaustion doctrine can benefit small-scale, independent designers who may not have the resources to seek permission for branded items, or mass produce new garments. By allowing upcycling without the need for brand permission, the law encourages entrepreneurial spirit and environmentally conscious innovation. Independent designers can use discarded materials at a low production cost to create affordable and sustainable fashion for a broader audience.

The exhaustion doctrine, however, doesn’t always protect fashion upcycling designers. While exhaustion might allow for resale and modification, it doesn’t automatically authorize third parties to sell modified trademarks in new designs without limits.

While some upcycling advocates argue they pay homage to brands when repurposing their designs, brand owners raise concerns about brand dilution and consumer confusion. These differing perspectives on upcycling come into sharp focus when high-profile brands take legal action against upcylers.

In Canada, the Trademarks Act goes beyond just protecting against confusion and specifically addresses the depreciation of goodwill associated with a mark. The Act expands trademark protection to include situations where a brand’s reputation is harmed by the unauthorized use of its mark in a way that undermines the consumer’s perception of the brand’s quality or values.

Courts are more likely to side with brand owners when modifications cause confusion about the source or authenticity of the product. In H-D U.S.A., LLC v Varzari 2021 FC 620, a case about the sale of custom-built electric bikes that incorporated Harley-Davidson motorcycle parts and the iconic Harley-Davidson logo, the court found trademark infringement of a repurposed item. The court found a likelihood of consumer confusion based on the strength of Harley-Davidson's trademark, the proximity of the goods (bike-related products), and Mr. Varzari’s intent to mimic the original branding. The court also concluded that Mr. Varzari’s use of the Harley-Davidson logo was likely to dilute the goodwill attached to the trademark.

The legal landscape around fashion upcycling is still relatively unclear because most cases are settled before a formal ruling can take place. In the United States, Louis Vuitton commenced a lawsuit against Sandra Ling, a designer who repurposed authentic pre-owned Louis Vuitton items into modified forms of handbags, apparel, and accessories. The court did not address the applicability of the exhaustion doctrine, as the parties settled with Louis Vuitton securing a $603,000 payout and a permanent injunction. The court reached a similar outcome in Chanel, Inc. v. Shiver and Duke, where the parties entered into a stipulated judgment in favour of Chanel. Chanel alleged trademark infringement against the upcycling company Shiver + Duke for repurposing Chanel’s iconic CC monogram into their jewelry designs. The parties ended up privately settling, followed by the removal of all Chanel-branded items from Shiver + Duke’s website.

What’s next for the future of upcycling?

hese high-profile cases demonstrate that large fashion companies are more than willing to take on upcyclers by asserting their trademark rights, often with a wealth of legal resources at their disposal. For many small, independent upcycling designers, a single lawsuit can be financially devastating. The threat of litigation and uncertainty in the law may have the effect of stifling innovation and discouraging creative designers from exploring the boundaries of eco-friendly fashion that are in line with broader sustainability goals.

While trademark holders should protect their legal rights, at what point must the law step in to protect designers like Nicole Mclaughlin, who entered the fashion industry to combat overconsumption through environmentally conscious design?

The legal battle hinges on whether upcycled fashion creates consumer confusion or diminishes the original brand’s goodwill. If the goal of upcycled fashion is primarily artistic or environmental, should this purpose be factored into the legal equation? Trademarks serve as a signifier of brand authenticity, and their removal in modified fashion is not necessarily a barrier to the goals of upcycled fashion. It is entirely possible to create upcycled fashion without infringing on the original trademark; however, this requires a careful balance between creativity and ensuring that the modified product doesn’t mislead consumers or diminish the original brand’s goodwill. Given the environmental benefits of upcycling, there is a compelling policy argument for adopting a more flexible or purposeful approach to trademark law that better aligns with broader societal goals.

As upcycling continues to challenge traditional notions of a linear economy, trademark law must evolve to balance protecting brand rights with supporting creative designers who push the boundaries of sustainable fashion.

The opinion is the author's, and does not necessarily reflect CIPPIC's policy position.