The protection of fashion in the Brazilian luxury industry

21 Jul 2017 , 2:30pm

Protecting exclusive fashion collections from being copied is one of the challenges for luxury brands. Felipe Bueno and Júlio Regoto of law firm Mattos Filho Advogados discuss the approach in Brazil.

'In order to be irreplaceable one must be different.' This remarkable quote from iconic Coco Chanel is both subtle and impressive as it shows the symbiotic relationship between her artistic creativity and her talent in the development of her exclusive collections.

To Chanel, the protection of a designer’s collection is one of the key elements for brand success, in part because design exclusivity makes the product more valuable and builds customer loyalty. Chanel’s tweed suits and Christian Louboutin’s legendary red sole high heels are perfect examples of such unique creations protected by law. But, how can you efficiently prevent third parties from copying exclusive collections?

In Brazil, a world leader in the beachwear, jeans wear and home wear[2] products, produces 9.4 billion pieces of garment every year, among which 5.3 billion are from the clothing industry. In this scenario what is the legal protection available to the fashion industry?

First, please note that technical creations of utilitarian nature and artistic creations are granted different legal protection. Law No. 9,279/96 (the “Brazilian Industrial Property Law”) grants protection to technical and useful creations, such as trademarks, patentable inventions and industrial designs, whereas Law No. 9,610/98 (the “Brazilian Copyright Law”) grants protection to arts in general.  The fashion industry is covered under the esthetical and the useful protections.

The zipper, for example is an invention that was, and still is, largely used in the fashion industry and was granted a patent under the Brazilian Industrial Property Law. A more recent example of an invention is the footwear “Hyperadapt” designed by Nike, Inc., in which shoestrings have been replaced by a motorised adjustment system inspired by the movie Back to the Future. The Brazilian Copyright Law, however, protects an original print on fabric created by a designer.

Pursuant to the Brazilian Copyright Law, protected works are “creations of the mind, whatever their mode of expression or the medium, tangible or intangible, known or susceptible of invention in the future”. Accordingly, any original images on a printed fabric or sculptural elements in clothing and accessories would be protected by copyrights, as they are creation of the mind, expressed by means of a piece of clothing. As such, the Brazilian Copyright Law stipulates remedies to the creator to prevent third parties from using this original image or a photograph without authorisation.

Nevertheless, there are no statutory provisions in the Brazilian Copyright Law to prevent third parties from copying an exclusive “look” as a whole created by a stylist. Instead, the copyright owner has to prove that all “elements” of that “look” were copied from his/her pieces. Certain elements in the fashion world are protected by copyright laws, such as designs (croquis), photography, editorial contents (fashion articles), but pieces of clothing themselves are not.

In Brazil, courts are often called upon to solve disputes in the fashion industry. In 2002, the Court of Justice for the State of Rio Grande do Sul found a famous Brazilian jewelry brand guilty of copying a collection that was originally created by an artist, violating the Brazilian Copyright Law[3].

Please note that the Brazilian Copyright Law is not the sole remedy to protect the creations of the fashion industry. Fashion industry players must use appropriate legal resources to protect their creations against possible infringers. For example, they may obtain proper protection for intellectual property rights, such as industrial designs, trademarks (for each collection or product) and patent (if applicable).

Additionally, Brazilian courts have recognized protection against unfair competition granted by the Brazilian Industrial Property Law and trade dress[4] protection. A court in a case involving the French group Hermès International and the Brazilian company Village 284, which copied Hermès’s handbag “Birkin” and sold it in the Brazilian market for a derisory price, decided against Village 284 based on unfair competition laws for the slavish imitation of a Hermès’ product.[5]

Finally, it is important for fashion designers and creators to know that their creations do not go unprotected and that they will be able to seek protection under Brazilian law to prevent copycats from using their creations without proper authorization.

 


[1] Associates at Mattos Filho Advogados in the Intellectual Property practice.

[2] http://www.abit.org.br/cont/perfil-do-setor, last access on February 14, 2017.

[3] That decision is final and not subject to appeal.

[4] Among other Brazilian scholars, José Carlos Tinoco Soares has coined the expression “conjunto-imagem” as the synonym for trade dress. He emphasizes that either “trade dress and/or conjunto-imagem, for us is the external expression of an object, product or its packaging, it is the peculiar manner it is introduced to and known by the market. It is merely the  “dress”, and/or “uniform”, i.e. a peculiar feature, the external characterization or a particular way in which something is habitually introduced in the consumer market or to users”

[5] That decision is final and not subject to appeal..