In the first decade of the twenty-first century, the fashion industry has renewed its designs on intellectual property law.1 From the WTO to WIPO, clothing-related issues have become part of the global agenda.2 As a result, all nations around the world are reexamining the relationship between law and fashion. With Paris as the world’s fashion capital, next to other fashion epicenters, such as, London and Milan, it is not surprisingly that Europe has a well-developed level of fashion design protection.

 

Contents

 

1. Legal instruments

2. Type of protection

3. Requirements for protection

4. Scope of protection

5. Practice – Recent Cases

6. Individual countries

6.1 France

6.2 United Kingdom

6.3 Germany

7. See also

8. References

9. External links

 

Legal instruments

 

The European Community Design Directive (Council Directive 98/71/EC of the European Parliament and the Council of 13 October 1998 on the Legal Protection of Designs)3 has harmonized the national systems of protection in each of the member states. In addition to the protection that countries like France and Britain already afforded designers, the Member States of the European Union, in December 2001, adopted the Design Regulation of the European Union (Council Regulation 6/2002/EC of 12 December 2001 on Community Designs)4.

 

Type of protection

 

The Regulation on Community designs creates a system in which a single design application can give protection throughout the European Community. There are two types of community design right:

- A registered right, obtained by registration at the Office for Harmonization in the Internal Market (OHIM), which gives monopoly protection to original designs for a renewable period of 5 years, with a maximum duration of 25 years from filing the corresponding application. The provisions relating to the registered design right came into effect on April 1, 2003.

- An unregistered right, which gives protection against deliberate copying of designs for a period up to three years, from the date on which the design was first made available to the public within the EU. The provisions relating to the unregistered right came into effect on March 6, 2002.5

Due to this dual system of protection, all original designs now receive automatically a minimum form of protection.

 

Requirements for protection

 

A design shall be protected by a Community design to the extent that it is new and has individual character.6 A design shall be considered to be new if no identical design has been made available to the public: (1) in case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; and (2) in case of an registered design, before the date of filing of the application for registration of the design for which protection is claimed, or if priority is claimed, the date of priority.7 Designs shall be deemed to be identical if their features differ only in immaterial details. A design shall be considered to have individual character if the overall impression produced on such a user by any design, which has been made available to the public. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.8

 

Scope of protection

 

The scope of the protection conferred by a Community design shall include any design, which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.9

 

Practice – Recent case

 

On April 4, 2007, the OHIM made a decision on the validity of a Community design for shoes.10 In this case, the applicant claimed the invalidity of a Community design registration for shoes, based on two prior registered Community designs for shoes, which, in its opinion, comprised all the main features of the contested Community design. OHIM compared the contested Community design with the prior shoe designs of the applicant. On the requirement of novelty, OHIM held that the designs differed in both material and immaterial features: (1) the contested design comprised two horizontal seams dividing the shoe in three parts whereas the prior designs only comprised one vertical seam; (2) the soles of the shoes had a different height and consisted of rubber in the contested design and of leather in the applicant’s design; (3) the overall height and the proportions of the shoes were different. On the requirement of individual character, OHIM said that, because of the differences in proportions, shapes and seams, the contested design made a different overall impression on the informed consumer.

 

Individual Countries

 

France

In the fifteenth century, the French King granted exclusive rights, or privileges for the fabrication of textiles. A government ordinance penalized the counterfeiting of weaving patterns for the first time in 1711 in Lyon.11 The French copyright system has protected garment designs, under its Copyright Act, since 1793.12 Even today, when the haute couture serves primarily as an advertisement for its designers’ own ready-to-wear styles and the hierarchical structure of creativity in the realm of fashion has been replaced with a far more democratic diffusion of influential ideas, France has the world’s strongest legal protections for fashion design, and Paris remains the world’s fashion capital.13 Indeed, the “applied arts” beneficiates of a combination of protection under the “unity of art” doctrine. They enjoy, on the one hand, under the law of July 14th 1909, of the specific protection for industrial designs, subject to the novelty requirement, and on the other hand, of the protection by the droit d’auteur (French copyright), subject to the originality requirement. The French Intellectual Property Code includes expressively in its list of “works of the mind” that comprise the subject matter of copyright, “creations of the seasonal industries of dress and articles of fashion.

However, the judges mix the two protections when they have to decide on designs that may be protected by both French copyright and the law of July 1909. Indeed, many courts, embarrassed by the vagueness of the concept of originality, have preferred to apply the novelty requirement by making it the sole criterion for protection in the field of applied art. Therefore, the design only has to be different from the pre-existing wealth of forms.

Industries which, by reason of the demands of fashion, frequently renew the form of their products, particularly the making of dresses, furs, underwear, embroidery, fashion, shoes, gloves, leather goods, the manufacture of fabrics of striking novelty or of special use in high fashion dressmaking, the products of manufacturers of articles of fashion and of footwear and the manufacture of fabrics for upholstery shall be deemed to be seasonal industries”14. Articles of fashion may also qualify for protection as registered industrial designs, for a more limited term of up to 25 years.15 While French intellectual property law has by no means eliminated design piracy, at home or abroad, the protection enjoyed by designers working in Paris contributed to the strength of the industry and its global influence throughout the twentieth century and into the twenty-first.16

 

French law has an original and very efficient tool to find evidence of infringement through counterfeit seizures. Where an alleged infringer may seek to conceal or destroy evidence of its activities, the copyright holder can require that the president of a Court issue a counterfeit sequestration order (ordonnance de saisie-contrefaçon). 17-1 The acquisition and safeguarding of evidence is an important factor in the fight against counterfeiting and piracy. From this point of view, the French procedure of saisie-contrefaçon may constitute very effective way of obtaining and preserving evidence. Such actions, intended as they are to conserve proof both before and after a case comes to Court, unquestionably make an effective contribution to the fight against counterfeiting and piracy.17-2

 

United Kingdom

In England and Scotland, the first statute concerning the protection for designs was initiated by textile producers in 1787.17 Currently, in the U.K., there is interplay between four regimes of design rights, which businesses can seek to rely on to protect their interests in the U.K.18 The first form of protection is to be found in the Registered Designs Act of 1949, implementing the Community-registered design. The second source is section 51 of the Copyright, Designs and Patents Act (CDPA) of 1988. Furthermore there is a[n U.K.] unregistered design protection, granted by Part III of the CDPA. And finally, there is Community Unregistered Design protection.19 However, there is a general lack of understanding in the U.K., of when and how design rights should be applied, even amongst intellectual property lawyers.20 In 1974, the Fashion Design & Protection Association was established to protect and uphold the rights of originators of creative and other original designs.21 As direct result of the efforts of the Fashion Design & Protection Association, the law in the United Kingdom has been changed, now acknowledging and enforcing Copyright and Design Right in garment designs.22 The first case in Europe involving clothing, was brought before the U.K. Commercial Court.23 Dunnes Stores was found to have infringed the design rights of Karen Millen by copying and selling a Karen Millen jumper and two shirts. The Court found that Karen Millen’s designs had an individual character and that the color, texture, and material used in the garments should be taken into consideration.24

 

Germany

With Munich as Europe’s intellectual property capital, unsurprisingly, Germany, in 1876, issued a law concerning the copyright on patterns and models, mainly as a consequence of requests of the textile industry.25 Imitations of another’s product that result in confusion are prohibited.26 However, such use of a product configuration must actually cause confusion and be recognized by the public.27 Under this theory, technical innovations have been protected when it is proven that they are capable of indicating origin.28 The German jurisdiction stress that direct adoption is not unlawful per se, but only in certain cases because of the special features of the product, if imitation is very easy, when otherwise incentives for development would be stifled or when imitation was undertaken systematically and for a whole range of goods.29 For example, in its decision of January 11, 2007, the German Federal Supreme Court decided that there was no infringement of Hermès’ handbags.30 The French company Hermès Sellier SA has produced and sold the famous “Les Kellys” handbags series since the 1950s. Hermès has also marketed the famous “Les Birkins” handbags since 1984. Hermès claimed that the distribution of defendant’s bags infringed its rights. The claim was based on unfair competition, in particular slavish imitation and taking unfair advantage of the reputation of Hermès’ famous bag designs. The Supreme Court, however, held that the distribution of the defendant’s bags did not constitute a slavish imitation claim. Although the Hermès bags had the required individual character, the defendant’s handbags showed sufficient differences in their overall impression (e.g. the use of metal, the proportions of the front, and the use of ornaments). Furthermore, the Supreme Court said that consumers nowadays know that there are both originals and imitations of luxury products in the market so their awareness of the details of these products is higher. In addition, the Court stated, the distribution outlets of the products were different.

 

According to the Federal Ministry of Justice, the German Association of textiles and fashion recently made an agreement with China on the protection of copyright. They have as goal to reinforce controls on trade fairs in order to fight counterfeiting as well as higher awareness in the participating countries and taking steps against fashion firms who constantly counterfeit brands. Especially in the last decades, this has led to unprecedented big losses and challenges to international trade.31 The latest OECD figures show that counterfeiting causes damages up to 200 billion US dollars worldwide. Germany alone, damages per year are evaluated to approximately 25 billion Euros.32

 

See also

 

- Regulation on Community designs

- Industrial Rights in the European Union

- Fashion

 

External links

 

- eur-lex.europa.eu

- www.fdpa.co.uk

- www.hg.org

 

References

 

1 Susan Scafidi, Intellectual Property and Fashion Design, in Intellecutual Property and Information Wealth (ed. Peter K. Yu, 2006) 115, at 125.

2 Id.

3 Council Directive 98/71, 1998 O.J. (L 289), 28-25 (EC).

4 Council Regulation 6/2002, 2002 O.J. (L 3), 1–24 (EC).

5 See, e.g., www.ipo.gov.uk/policy/policy-issues/policy-issues-designs/policy-issues-designs-comdesign.htm.

6 Council Directive 98/71, art. 4, 1998 O.J. (L 289), 28-25 (EC).

7 Council Directive 98/71, art. 5, 1998 O.J. (L 289), 28-25 (EC).

8 Council Directive 98/71, art. 6, 1998 O.J. (L 289), 28-25 (EC).

9 Council Directive 98/71, art. 10, 1998 O.J. (L 289), 28-25 (EC).

10 See Leopold Von Gerlach, European Union: Design Quarterly: An update on design protection in Europe, accessible at www.mondaq.com/article.asp?articleid=53492 (last visited March 2, 2008).

11 Fridolin Fischer, Design Law in the European Fashion Sector, WIPO Magazine, Feb. 2008, accessible at www.wipo.int/wipo_magazine/en/2008/01/article_0006.html (last visited March 5, 2008).

12 Scafidi, supra, at 117.

13 Id. at 118.

14 Art. L112-2(14) France’s Intellectual Property Code, accessible at http://www.legifrance.gouv.fr/html/codes_traduits/cpialtext.htm (last visited March 5, 2008).

15 Art. L511 France’s Intellectual Property Code, accessible at http://www.legifrance.gouv.fr/html/codes_traduits/cpialtext.htm (last visited March 5, 2008).

16 Scafidi, supra, at 116.

17-1 Jean-François Bretonniere and Gregoire Corman, France Building and enforcing intellectual property value, available at: http://www.buildingipvalue.com/n_eu/288_292.htm (last visited May 1st, 2008).

17-2 Combating Counterfeiting and Piracy in the Single Market, Green Paper of COMMISSION OF THE EUROPEAN COMMUNITIES, available at: http://www.ipr-helpdesk.org/documentos/docsPublicacion/pdf/8_d7352_en0000000904_01.pdf (last visited May 1st, 2008).

17 Fischer, supra.

18 Deepak Sharma, Design Protection in the Fashion Industry, accessible at http://www.hg.org/article.asp?id=4962 (last visited March 5, 2008).

19 Gavin McGinty, How design rights can add value to a business, BNA Int’l Patents Copyrights & Tademarks J., Apr. 2006 (updated May 2007), accessible at http://www.out-law.com/page-7088 (last visited March 5, 2008).

20 Id.

21 See www.fdpa.co.uk (last visited March 5, 2008).

22 Id.

23 Dunnes Stores found to have copied designs, www.rte.ie/news/2007/1221/dunnes.html (last visited March 5, 2008)

24 Id.

25 Fischer, supra.

26 Kenneth L. Port, Dead copies under the Japanese Unfair Competition Prevention Act: The new moral right, 51 St. Louis U. L.J. 93.

27 Id.

28 Id.

29 Id.

30 See Leopold Von Gerlach, European Union: Design Quarterly: An update on design protection in Europe, www.mondaq.com/article.asp?articleid=53492 (last visited March 5, 2008).

31 Textile & fashion industry comes to an agreement with China in order to fight counterfeiters, available at: http://www.just4business.eu/2007/09/textile-fashion-industry-comes-to-an-agreement-with-china-in-order-to-fight-counterfeiters/ (last visited May 1st, 2008).

32 THE ECONOMIC IMPACT OF COUNTERFEITING AND PIRACY, available at: http://www.oecd.org/dataoecd/11/38/38704571.pdf (last visited May 1st, 2008).