How to protect intellectual property rights within the fashion industry

We have the luxurious brands like Coco Chanel and Christian Louboutin, which never go out of fashion. People pay huge amounts of money to own these designs and they are, because of this, frequently subject to trade mark infringement, passing off and copying as the high street produces copies of their ‘take’ on these designs. Â

New technology makes it easier to quickly produce good quality lookalike copies of designer items. High street chains make the latest designer trends available to everyone, by selling items strongly influenced by them for low prices. Due to the amount of money spent on fashion, there is a need for designers to protect the intellectual property rights in their designs.

There are different ways for designers to remove cheap copy versions of their designs from the market. The intellectual property right in a fashion item can be protected by copyright, design right or as a registered trade mark.

So as high street fashion is always on the move, design and copyright infringement are offten more relevant. These are the unregistered rights and belong to the family of law known as intellctual property.

Sketches and patterns for an item might be protected as design rights. They can be protected nationally or as a Community design, if they are ‘new’ and have ‘individual character’. One looks at the overall impression of the design. A design right can either be registered or unregistered and provides the holder with the exclusive right to use the design and prevent copying. It is the small details which add a distinctive new dimension to an otherwise commonplace item that makes it possible to register it as a design right. Work created from these prototypes may be protected by copyright. A work is automatically protected by copyright if it is original and involves independent skill and labour. Solely an idea is not protected. It is also possible to register a trade mark. Any sign, which can be represented graphically and which is capable of distinguishing the goods of one undertaking from those of another, may prima facie be registered as trademarks.

To enforce copyright or an unregistered design right, a designer needs to show that the design is protected and that he (himself or his company) owns these rights. The owner also needs to show that a substantial part of the copyright has been reproduced or with respect to design right, that the design is the same or substantially the same.

When registering a trade mark, it is important to remember that the selection and purchase of a fashion item is based primarily on a visual selection, making the visual and conceptual elements of a mark of great importance in determining the mark’s registrability. The mark must have a distinctive character to be registerable and descriptive marks and marks common for manufacturers of the specific product cannot be registered.

Some designers, for example Stella McCartney and Vivienne Westwood, have registered their names as trade marks. Also shapes and figurative elements may be registered as trade marks if they are distinctive and can serve to indicate the product’s origin, for example the red coloured shoe sole (Pantone 18.1663TP) has been registered as a trade mark for Christian Louboutin’s high heeled shoes.

The ECJ has given trade mark owners of the more luxurious brands wider protection than available for other trade mark owners. If licensees commerce with these goods in a way which damages their allure and prestigious image, which gives the goods sold under the mark an aura of luxury, the trade mark owners may invoke their rights under the Trade Mark Directive (89/104/EEC). This wide protection is also available if the goods are subject to parallel import to one market from a country where the goods have been put on the market by the owner or with his consent. This shows how important it is to protect the value of intellectual property rights which otherwise may be damaged by licensees misusing the rights they are granted.

There are different ways of protecting fashion designs. A brand name, logo or item design may for example be protected as trade marks, a logo or an item design may also be protected under copyright and an item design or a ‘maker’s mark’ may be protected as design rights. Even if a copy of a fashion item does not constitute an infringement, it may still be passing off if someone trades on the trade mark owner’s goodwill and reputation, for example by making high heeled shoes with a design very much alike Christian Louboutin’s, but with another shade of red on the sole.

Those involved in designing the new ‘must have’ fashion item will do whatever practically and budgetary possible to minimise the possibility to copy their item. An easy way to make third parties notice an owner’s rights is to use appropriate notice for the intellectual property right in the goods (© followed by the owners name and the date of first creation for copyright, ™ for unregistered trade marks and ® for registered trade marks).

This article was written by Malin Persson who is on work experience and is currently studying at Southampton Solent University. If you have any questions concerning this article please contact Michael Coyle at info@lawdit.co.uk

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