While most fashion trends may come and go in a heartbeat, some never go out of style. The Birkin bag, Cartier's L⊝Ve bracelet, Chanel's classic flap bag -- all unique, timeless, classic designs that have become synonymous with the brands that created them.
The fashion industry invests significant resources to create new and original designs each season to entice the public. Despite this substantial investment, not enough use is made of design rights to register and protect the aesthetics of these vibrant and creative designs. Design rights protect the 2D and 3D appearance of a product or a part of that product, whether that be a fabric pattern or the shape of a shoe for example.
Why protect your design?
Designs are potentially extremely valuable property rights. Design rights can, for instance, be transferred (sold) or given in pledge to a bank as part of your company’s assets. They can also be licensed to third parties, such as retailers. In the fashion industry, successful designs of jewellery, watches, clothing, handbags, shoes and sunglasses are often copied. Even though copying is endemic in this industry, intellectual property law offers a raft of rights to fashion designers to stop others unfairly benefiting from the designer's creativity and craftsmanship.
Protecting your design in the European Union
There are two different types of design rights in the European system of design protection; the protection of registered designs and of unregistered designs. The laws relating to these design rights are harmonised and a single Community design offers protection in all (currently 28) countries of the European Union.
To enjoy protection, the design has to be "new" and has to have an "individual character". The design is regarded as new if, on the date of filing, no identical design (being a design whose features differ only in immaterial details) has been made available to the public. Publicly disclosing your designs prior to registration, for instance by having your designs appear in fashion magazines or at a fashion show, may result in having lost the ability to protect those designs. Fortunately, a designer has 12 months from first disclosure of a design to apply for registration (known as the grace period). This grace period can also be used to assess whether a particular design is likely to warrant the additional protection afforded by registration.
A design is considered to have "individual character" if the overall impression it produces on the "informed user" differs from the overall impression produced on said user by any design which has been made available to the public previously. The informed user is a particularly observant user who, without being an expert or designer, will be aware of the various designs which exist in the sector concerned, possesses a certain degree of knowledge regarding the usual features of designs and, as a result of his/her interest in the products concerned, shows a relatively high degree of attention when using them. For example in a case concerning handbag designs, it would be someone who knows and can differentiate between brands and styles of handbags, but not the handbag designer. The informed user might be for instance a fashionista or fashion blogger.
A registered Community design is obtained through registration with the European Union Intellectual Property Office (the EUIPO), which is a quick and relatively inexpensive procedure. Registration initially protects your design for 5 years from the date the application was filed. The design registration can be renewed for additional periods of 5 years with a maximum term of 25 years. For unregistered Community designs on the other hand, protection arises automatically and is effective as soon as the design has been made available, i.e. disclosed, to the public within the Community. An unregistered Community design provides protection for a period of 3 years.
Unregistered Community designs are often unfairly overlooked in the intellectual property armoury of rights. They prove a useful and cost-effective tool, especially for fashion designs which have a relatively short product life cycle. The unregistered Community design provides important protection to fashion designers who struggle to realise return on their creative investments, particularly up and coming designers.
Enforcement of design rights
By registering your designs, you can take action against infringing designs made by third parties. Specifically, the design owner can stop the use (which includes the manufacture, provision, trade, sale, supply, rental, import and export) of a product in which the design is incorporated and which is identical to, or creates the same overall impression as, the protected design.
Another important difference between enforcing a registered Community design and an unregistered Community design is that in respect of the unregistered design right the designer must show that copying has taken place, whereas no such requirement exists for the registered right. It is therefore easier to enforce the registered right.
Finally, when determining infringement all that matters is the overall impression created by the two designs, not the exact number of changes that might have been made. It is important for designers to know that the persistent misconception that if you make seven changes to a design, it becomes a new design and does not infringe the original design, is incorrect.
Filing strategy tips and tricks
For the reasons mentioned above, there is no doubt that the legal protection conferred by a registered design is stronger and serves as a greater deterrent than the corresponding unregistered right. In the fast-moving and seasonal world of the fashion industry, it can of course be a costly undertaking to register every new design before putting it on the market. The unregistered right therefore has an extremely important role to play and may be the better strategic choice for your business.
It is important for industrial and commercial interests of the fashion industry to develop a suitable design protection/filing strategy and it is worth keeping the following tips in mind:
Check prior art, as a design is only protectable if it is new and has individual character;
For each design, establish/estimate the lifespan of the product in order to decide which route of protection (registered or unregistered design) is most suitable;
Have clarity on the ownership of the designs that you create by entering into contracts with employees, free-lancers, etc., which spell out who owns the designs;
Make sure you date, store and archive drawings, sketches, mood-boards and other items that are part of the design history and process so that you can prove the existence and ownership of your unregistered rights;
From a cost efficiency perspective, consider filing multiple applications which allows you to include several designs in one application;
Consider deferment as an option. A Community design must be published, however publication may be delayed for up to 30 months, which means that your product can be kept confidential until you are ready to disclose it (for instance just before a catwalk show);
Be cautious of "over-filing" as one design might be detrimental to the novelty of a (very) similar later design application;
Be clear on dotted lines. Features of a Community design which are marked with dotted lines are excluded from the scope of protection, unless it is made clear that protection is also sought in respect of such features;
Be clear with colours. If you include colour in your design, that colour will form part of your protection design. If you wish to protect your design in any colour, consider filing black & white line drawings as well.
In this article, we have focused exclusively upon Community design protection. Designers should however be aware that other rights may be available to protect their work, including national design rights, copyright and trade mark rights. Whether such rights are available or appropriate will depend on the nature of the work in question and the country in which protection is sought.
Lara van Huizen & Linda Brouwer are attorneys at Bird & Bird.