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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:

Rely on registered rights where possible because these can be enforced quickly and at lower cost than their unregistered equivalents;

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;

  • 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
  • Apply for design registration before the item is launched
  • If a design that was not registered prior to launch later becomes popular, seek registration quickly and certainly within 12 months of launch
  • 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
  • Keep copies of all employment contracts with employee designers, and any contractual arrangements with freelance designers
  • 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
  • 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
  • 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

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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

Declan Cushley

Declan Cushley

Partner and Head of IP and Commercial Group

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