The gloves are off at Monsoon. After spending several years quietly standing by as many of its high street competitors have allegedly copied its designs, the retail clothing chain famed for its floral prints and ethnic chic has decided to fight back. “Monsoon still represents something different on the high street and we want to guard that difference. So if people continue to copy our designs we’ll be forced to take legal action,” company secretary and general counsel Rosalynde Harrison warns.
First on the company’s hit list is Primark, against which Monsoon launched High Court proceedings on 15 April. Monsoon is claiming £200,000 in damages for infringement of design rights for six items of women’s and children’s clothing.
The retailer claims that the garments sold by Primark were virtually identical to its own original designs but were a quarter of the price and of inferior quality, thus damaging Monsoon’s brand. Primark denies the allegations and has filed a defence, although this was delayed after Primark’s legal counsel suffered a broken arm.
“We usually try to resolve such disputes directly with whichever company is involved,” Harrison said. “I call them up personally and try to reach an agreement, not just go straight to court. Nine times out of 10 that works.
“I only draft in outside counsel when things turn contentious. This is the first time in years that we’ve reached proceedings.”
But despite Monsoon’s dislike of court battles, the current dispute with Primark could signal the start of a wave of proceedings initiated by the retailer against some of its high street rivals.
Monsoon (which also owns highly successful chain Accessorize) is considering legal action against several repeat offenders on the high street which, says Harrison, it has become fed up with fighting. She says several retailers have paid compensation to Monsoon for copying its designs, only to reoffend the following week.
If this is the start of a litigation spree, then Finers Stephens Innocent is likely to be the greatest beneficiary among its outside counsel. The firm has been Monsoon’s key adviser on intellectual property (IP) disputes since 1993, when it won its first criminal action for the retailer regarding a design infringement on the high street.
Head of IP and media at Finers Nicola Solomon is advising Monsoon on the current action against Primark. She handles most of the retailer’s contentious IP matters (in conjunction with Robert Lands), although Monsoon has also instructed Bristows for IP disputes in the past.
Monsoon instructs only a handful of firms, as the company does not have a formal legal panel. Instead Harrison prefers to work with a small number of individual lawyers who have a proven understanding of the company and are able to deal with matters independently, referring back to Harrison only for final decisions.
This ability for free thinking is crucial for Monsoon as the company’s two-strong legal team deals with more than 80 per cent of its legal issues internally. Harrison works on all of the company’s legal matters except for property and litigation. Trademark registration is also farmed out in its entirety to specialist consultancy Chancery Trade Marks.
“We work with people who understand the company’s culture and the fact that entrepreneurial companies like Monsoon are commercially driven over legal fees,” says Harrison. “I want to be able to pick up the phone and have a chat about what’s planned for the business with our lawyers without having to expect a ruddy great bill for it afterwards.”
Harrison’s views on this aspect of the law firm-client relationship were crystallised after she received a hefty bill from a firm for a meeting it had initiated in a bid to woo Monsoon as a client.
Because of such experiences, Harrison prefers to stick with those she knows. As such, Berwin Leighton Paisner (BLP) has been picking up an increasing amount of Monsoon’s corporate work since Harrison joined the company in March 2003 from Burberry. While at the high-end fashion retailer, she instructed BLP corporate partner Antony Grossman and continued the relationship after her move.
Fleet Street-based Royds is, however, the main beneficiary of Monsoon’s £500,000 annual legal budget.
Around two-thirds of Monsoon’s legal budget is spent on property-related matters each year, with Royds picking up most of this work. Recently, though, Finers has been taking a growing share of the property work as Monsoon expands and its legal demands increase.
“The fastest-growing part of the business is the international franchise,” says Harrison. “The company acquired its franchises in Russia and we expect even greater growth as we pursue plans to open in a further nine countries this year.”
In order to deal with Monsoon’s rapid expansion, Harrison is reviewing the company’s franchise agreement in order to create greater uniformity and reduce administrative and legal complications. Field Fisher Waterhouse (FFW) partner Mark Abell was instructed last month to conduct the review.
It is the first time Monsoon has instructed FFW and the appointment followed a recommendation from Monsoon’s international director Mark Vandenberghe, who worked with Abell during his previous position at Arcadia.
Company secretary and general counsel
Sector: Retail clothing
Turnover: £271.4m for year ending 31 May 2004 (it is currently in a closed period)
Legal spend: £500,000
Legal capability: Two
Company secretary and general counsel: Rosalynde Harrison
Reporting to: Group finance director Mark McMenemy
Main law firms: Berwin Leighton Paisner (corporate), Bristows (IP), Finers Stephens Innocent (IP and property) and Royds (property and HR)