designs on fashion
12 April 2011
Ryan Harrison and Declan Cushley from Browne Jacobson sketch for
us the latest UK trends in design protection in the fashion
industry.
The value of the UK fashion industry is enormous, contributing
an estimated £20.9 billion to the UK economy each year[i]. To put
this figure into perspective, the fashion industry’s contribution
to UK GDP is almost twice that of car manufacture (£10.1 billion),
so fashion is undoubtedly big business and clothing designs are
highly valuable assets. That being the case, it is surprising that
businesses operating in this highly competitive industry are not
doing more to protect their designs.
A very fashionable industry, but what makes it
different?
In contrast to the motor industry where new innovations with
long term benefits are frequently protected by patent and design
registrations, intellectual property enforcement in the fashion
business remains more sporadic. More often than not, fashion houses
turn a blind eye to lookalike copies and allow High Street chains
to sell lines which are influenced by their latest designs at rock
bottom prices.
Perhaps what makes this industry unique is the speed at which it
moves. The short-lived transience of new designs can make it very
difficult for fashion companies to know what to protect, and
how.
Although some fashion items have timeless appeal, classically
designed watches or shoes for instance, many others represent
trends which are very popular for a short period of time only.
Quite often the success of a particular item will not be apparent
until after it is launched, and the leading design one year can
move quickly out of vogue the next. This is perhaps the most likely
reason why designs are not registered, or why unregistered rights
are not frequently enforced in what is ironically one of the most
design led industries in existence.
Another factor is that whilst the fashion houses have dipped
their designer clad toes into the world of design right protection,
design protection remains frequently misunderstood. The four design
regimes applicable in the UK (the UK design right, UK registered
designs, unregistered Community designs, and registered Community
designs) each have their merits and limitations, and identifying
the most appropriate right is not always straightforward.
It is also important not to forget that trademark registration
can be used to protect shapes and figurative elements, for example
a stitching pattern, but the focus of this article is design right
protection.
Design right and its limitations
UK unregistered design right was first introduced to protect
functional, rather than aesthetic, designs and for this reason
clothing designs do not usually sit comfortably within the scope of
protection afforded by this right.
The benefit of design right is that it comes into existence
automatically without the need for registration and has a
relatively long term of protection – usually 10 years from when the
design is launched. Design right protects the “shape and
configuration” of the whole or part of the design. This includes
internal and external aspects of the design, as well as purely
functional features.
Although wide in scope, the design right is subject to several
limitations which often cause problems in relation to fashion
designs. In particular, surface decoration – ie, printed patterns
or surface textures – are not protected by this right and attempts
by clothing manufacturers to bring their designs within the scope
of this right often end in failure. In Lambretta Clothing v Teddy
Smith[ii], Lambretta sought to argue that the coloured panels of a
tracktop were an aspect of its configuration and also that the
printed stripes on its sleeves were not surface decoration because
they permeated the material. Both arguments were rejected by the
Court of Appeal.
Another problem with this right is that it will not usually
protect designs created or commissioned by fashion houses which do
not operate a place of business in the UK or EU.
Registered Designs – a shoe that fits
better?
Although UK and Community registered designs are distinct
intellectual property rights, they are broadly comparable under the
harmonised European regime.
These registered rights protect “the appearance of the whole or
a part of a product resulting from the features of, in particular,
the lines contours, colours, shape, texture and/or materials of the
product itself and its ornamentation”[iii]. The scope of protection
is wider than for UK design right making these rights more suitable
for protecting fashion designs. In particular, surface decoration
and design features comprising colours (as in Lambretta) are
capable of protection.
In order to qualify for protection, the design must be new – ie,
not identical to earlier designs – and must have individual
character. To have individual character, the design must create a
different overall impression on the informed user than the overall
impression produced by previous designs.
Designs can be registered quickly without being subjected to a
pre-grant examination process, but designers should be acutely
aware that registrations will be vulnerable to revocation if they
do not satisfy the registration requirements. Legal advice should
always be sought in order to assess registrability, but more
importantly to determine which aspects of the design should be
registered in order to give the proprietor the strongest protection
possible.
Designers should also take care not to undermine the validity of
their own designs by launching their products prior to making an
application to register. Last year Crocs Inc[iv] lost its Community
design registration for its famous clog-shaped plastic sandal by
launching the product in the US more than a year before the
priority date of the application.
Ideally, an application to register should be lodged prior to
product launch, but if the success of a design is not apparent
until after it has been placed on the market, the design can still
be registered. A 12 month grace period exists in which any
disclosure made by the designer in the 12 month period before the
filing of the application, is not taken into account when deciding
whether a design is new. That said, making an application after
launch does give rise to complications, particularly where
competing designs enter the market during the 12 month period.
For designs with long term appeal – shoes, handbags, and
jewellery being good examples – registered designs offer a much
longer term of protection of up to 25 years.
Unregistered community designs
Unregistered Community design right arises automatically and
offers the same scope of protection as the UK and Community
registered rights discussed above. The term of protection is much
shorter; 3 years from the date that the design was first made
available to the public in the Community.
Although short lived, this right is likely to provide an
adequate term of protection for most fashion designs, which often
have an equally short shelf life. Relying on unregistered rights
may be more appropriate for smaller organisations without the time
or resources to invest in managing a large registered design
portfolio and can be used to good effect. In Ireland’s first
unregistered Community design right case[v], Karen Millen was
successful in enforcing three unregistered designs against Dunnes
Stores, a large Irish retail chain, who were selling designs very
similar to Karen Millen’s earlier designs for a black knit top, a
blue striped shirt and a brown striped shirt.
Although registered and unregistered Community designs give the
right holder an exclusive right to use the design, an unregistered
design only permits the right holder to challenge designs which
result from copying, hence the registered right is easier to
enforce.
The big advantage of obtaining a registered design, rather than
relying on unregistered rights, is that it shifts the burden of
proof in the proprietor’s favour and makes enforcing the design a
much quicker and cheaper process. Registered designs (UK or
Community), enable the proprietor to take action against an
infringer in relation to any design which does not create a
different overall impression, and the existence of a design
registration may be enough to prompt a competitor to withdraw a
potentially infringing item from the market.
When relying on unregistered rights, the right holder will
inevitably be forced to justify its rights and show that design
right exists, that it is the legitimate owner of the design, and
that the alleged infringer has copied the design. Quite often this
takes the sting out of the tail of enforcement actions, and relying
on unregistered rights rarely yields the quick and effective
results that can be obtained from a validly registered design.
Belt and braces - preparing for a fight!
One common misconception is that designs are excessively costly
and time consuming to enforce. A well thought through strategy for
design enforcement can be used to great effect in preventing
infringements at relatively low cost. Fashion houses should work
with their lawyers to develop a structured and cost-effective
strategy for protecting designs, but ten top tips for ensuring
effective enforcement are:
1. Rely on registered rights where possible because these can be
enforced quickly and at lower cost than their unregistered
equivalents;
2. If trading in Europe, opt for the Community registered design
which provides EU-wide protection and potentially entitles the
proprietor to a pan-European injunction;
3. Register key elements of the design, as well as the design in
its entirety – this will provide protection against infringers who
copy the entire design, or even its distinctive elements;
4. Apply for design registration before the item is
launched;
5. If a design that was not registered prior to launch later
becomes popular, seek registration quickly and certainly within 12
months of launch;
6. Keep records and design drawings relating to the creation of
each design because this helps to establish the provenance and
ownership of the design, and may be vitally important evidence if
the validity of the design is challenged;
7. Keep copies of all employment contracts with employee
designers, and any contractual arrangements with freelance
designers;
8. Express assignments from employee or freelance designers are
helpful; although designs created by employees or freelance
designers will usually belong to the fashion house. A confirmatory
assignment will help ensure that the alleged infringer has little
chance to challenge the ownership of the design;
9. Act quickly – if an infringement is spotted at a trade show
of fair, take photographs of the infringement and identify the
infringer. It is much easier to prevent an infringing design from
being launched than it is to withdraw one from the market;
10. Again, act quickly! Interim injunctions are powerful
remedies against infringement, but can only be obtained if sought
very quickly (a rule of thumb is 4 weeks) after becoming aware of
the infringement.
Final thoughts
Design rights are commonly overlooked or, if not overlooked,
badly managed and policed by rights holders in this industry.
That said a few brands are leading the way on design
registration and enforcement, and Jimmy Choo is a notable example.
In one case, Jimmy Choo successfully enforced its registered
Community design right in a handbag against a UK retailer, even
though that retailer had no actual or imputed knowledge that the
design they were selling was an infringement[vi]. Cases such as
this are beginning to demonstrate that a carefully managed design
portfolio can protect the valuable investment that goes into
product development.
A more focused approach to design right registration and
enforcement would give fashion businesses a low cost and highly
effective method of protecting their creative output. Rather than
setting a trend for others to follow, fashion houses could use
design rights to protect designs and ensure that they remain
unique. Without this, fashion brands run the risk of allowing
competitors to undermine the identity of their brand.
Footnotes
[i]
http://www.britishfashioncouncil.com/uploads/media/62/16356.pdf
[ii] Lambretta Clothing Ltd v Teddy Smith (UK) Ltd [2004] EWCA
Civ 886
[iii] Community Design Regulation (6/2002/EC), Article 3(a)
[iv] Crocs Inc v Holey Soles Holdings Ltd [2010], Case R
9/2008-3
[v] Karen Millen Ltd v Dunnes Stores [2007] IEHC 449
[vi] J Choo (Jersey) Limited v Towerstone Limited & Others
[2008] EWHC 346 (Ch D)
This article was first published in Intellectual
Property Magazine