FASHION DESIGN PROTECTION IN EUROPEAN UNION : UNREGISTERED COMMUNITY DESIGN
As we know, fashion industry is influenced by rapid changes and lack of sufficient level of IP protection for fashion products around the world. The fashion industry is valued at 3 trillion dollars,1 so in the effect of any legal problems, the potential damage may be huge. The efficient communication process and satisfactory relation between legislative and fashion designer is crucial for the industry. For many years, the representative of fashion designers and design houses are requesting a worldwide harmonization of intellectual property protection. This issue of counterfeiting fashion apparel, such as bags, shoes and all sort of fashion accessories which are protected in some states and are unprotected in the other, is still a problem.
On the one hand, international trade is counterfeit and pirated products represent up to 2.5% of the world trade, up to 338 billion, based on the data from 2013.2 On the other hand, fashion retail’s specialists explain “piracy paradox” and they define it as a rule that copying results in greater industry-wide sales, causing design trends to have shorter lifespan which, in turn, spurs innovation.3But still, it is illegal process which should be terminated.
The first legal regulation related to fashion design protection was issued in the 15th century’s France, once the French King granted exclusive rights or privileges for fabrication of textiles. In the French Copyright Act of 1783, a design is classified as works afforded copyright protection. Similarly, the current French Intellectual Property Code expresses that any original work expressed in any form, may be copyrighted. As a result, fashion and garment design and even fashion shows are granted protection under the French law. In 1787, the first statue was initiated by textile producers regarding the protection for design in England and Scotland. In Germany, which is the European capital of IP protection, the act related to the copyright protection of patterns and models was issued in 1876.4
In other states, such wide gamut of protection is rare. In states such as Italy, where fashion industry has been flourishing for decades or centuries, the copyright protection for fashion designs is granted. On the other side, in the United States, there is a lack of copyright protection regarding fashion designs which are considered only as functional items. As a way to fight against counterfeiting, trademark protection is used.5
The European Union provides some unique legal tools which may be used by fashion designers to protect their rights. For that objective, the European Union accepted the Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs6 and established a very broad definition of design which is “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation.”
According to the European Union law, there are two types of (fashion) design rights protection:
- a registered right which may be obtained by registration at the European Union Intellectual Property Office (EUIPO), which gives monopoly protection to original designs for a renewable period of 5 years with a maximum duration of 25 years from filling the 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 design for a period up to three years, from the date the design was first made available to the public within the territory of the European Union. The provisions relating to the unregistered right came into effect on March 6, 2002.
As a result of the dual system of protection, all new and original designs now automatically receive a minimum form of protection. The unregistered design is not granted a monopoly but it prevents from copying.
The differences between registered and unregistered designs are based on: the validity period (25 and 3 years), the registered community design is granted protection against similar design and obtains a certificate which makes easier to prove the ownership in any potential dispute.
In addition, a fashion design, which has a unique function, may be protected as a patent, If a design house or a fashion designer created a logo design or a name, they may consider to obtain a protection as a trademark.
As a related example of a case, which may clarify the fashion design protection in the European Union, is the case of Yves Saint Laurent vs. Ralph Lauren as of 1994.7 Yves Saint Laurent (YSL) sued Ralph Lauren (RL) for copyright infringement, design infringement and unfair competition. The Paris court in that case regarding a black tuxedo dress design awarded YSL a compensation for its damages. For the first time, it was a tactical action against counterfeiters of fashion goods which allow a designer to protect a dress as “intellectual property.”8
Another related example is the case of the John Kaldor Fabricmaker UK Ltd. vs. Lee Ann Fashions Ltd.9 provides several information which can be a warning recommendation for fashion designers. The John Kaldor (KJF) is a design house and Lee Ann (LAF) is a fashion business which designs and makes garment. KJF sued LAF for infringement of copyright and unregistered Community design right. JF previously showed the fabric to LAF which was not interested in the product. JKF claimed that the fabric of the dress was similar to the one of their designers. The similarities produced by LAF were dismissed on the grounds of irrelevance and commonplace. LAF commercialized a dress, which was sold at Marks and Spencer, and provided sufficient evidences with six colour versions of the design. The judges accepted the evidence of independence creation provided by LAF. As a result of losing the case by JKF along with its revenue, it confirms how important is:
- to maintain documents regarding design process to be able to defend any allegations of infringement of IP rights in the future and;
- to consider the best IP protection tools for fashion designs e.g. registration as a registered Community design or national registration in the UK.
The above information described EU harmonization specified to fashion design protection and allows to conclude that it should be still a subject of lively debate. The current legal situation in the European Union has more positive aspects than in other parts of the world, however officials and designers interested in the issue may still look for a better solution for effective IP protection in the fashion industry. Besides, the existing EU model of design law may be a pattern or benchmark for coming legislation in other states around the world.
Aya Eguchi, Curtailing Copycat Couture: The Merits of the Innovative Design Protection and Piracy Prevention Act and a Licensing Scheme for the Fashion Industry, 97 Cornell L. Rev. 131 (2011) available at: http://scholarship.law.cornell.edu/clr/vol97/iss1/4 [https://perma.cc/87U9-HW97].↩
Fridolin Fischer, Design law in the European fashion sector, WIPO Magazine, 2008, http://www.wipo.int/wipo_magazine/en/2008/01/article_0006.html [https://perma.cc/KF6K-CYVT].↩
Graeme B. Dinwoodie, The Protection of designs under U.S. law, IPRinfo 4/2008, https://www.iprinfo.com/julkaisut/…/fi…/Dinwoodie_nettiin.pdf [https://perma.cc/XFP6-T5HV].↩
Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, EUR-Lex, http://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:32002R0006 [https://perma.cc/C6FY-XYQY].↩
See Societe Yves Saint Lauren Couture SA v Societe Louis Dreyfus Retail Managment SA  E.C.C. 512 Trib. Comm. (Paris).↩
John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd  EWHC 3779 (IPEC) (21 November 2014), http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/IPEC/2014/3779.html&query=Fabricmaker&method=boolean [https://perma.cc/847E-CY4X].↩