Hey! Hands off my IP! (Design Rights)

Continuing with the Hey! Hands off My IP series, October’s blog post looks at the benefits and drawbacks of design rights for fashion brands, and asks whether it really is worth pursuing a registered design right in the fashion industry.

Vintage Courreges shades

An iconic sunglasses design from the 60’s space age designer, Andre Courreges

What are design rights?

Design rights protect the appearance of a product, or part of the product, enabling owners of the design to enforce their rights against anyone using the design without consent.

Under English law, you can have a registered or unregistered design right and rely on either for protection. However, registered design rights offer more protection. A registered design right lasts for up to 25 years (subject to renewal every 5 years), whereas an unregistered design right is only valid for either:

  • 10 years from first marketing the product made to the design; or
  • 15 years from creation of a design document

whichever is shorter.

If relying on an unregistered design right, the right doesn’t actually come into existence until the design has been recorded in a design document, or an article has been made to the design.

Records

Record everything!

Designers should therefore always sign and date their design documents. Records should be kept of the design document and the design process, and the date of first marketing of articles made to the design should also be recorded. These will be needed if your design is infringed in order to prove the date from which the right exists and that it is still valid.

Design right criteria

For both registered and unregistered design rights, a design must be:

  • made up of a shape or outline of the whole or part of an object;
  • original and have individual character, which means that it cannot be common; and
  • recorded in a design document or be the subject of an object made to the design.
Fashion design 1

Even a rough sketch of your design will be a sufficient record

To be protected by unregistered design right, a design must not be:

  • a method or principle of construction;
  • comprise features of shape or configuration of an object which:
    • enable the object to fit with another object so that either object can perform its intended function; or
    • are dependent upon the appearance of another object, of which the article is intended by the designer to form an integral part; or
  • be a design for surface decoration.

For all of you legal buffs out there, the relevant statute is the Copyright Designs and Patents Act 1988 and the above criteria and restrictions can be found at section 213 here.

What can’t be registered

There’re always some restrictions on what can and can’t be registered, here are some of the main ones:

  • hidden parts (parts which can’t be seen once the product is made);
  • features which are needed to allow the object to perform a technical function; or
  • designs which go against public policy or morality.
Restriction

Don’t forget to consider the restrictions before applying to register a design

Why register?

Apart from being easier to prove than an unregistered design, and the fact you have 10, possibly 15 years more worth of protection, other benefits of registering as opposed to simply relying on unregistered rights are:

  • Speed: Protection starts from the application date. Registration is likely to take place within two months of filing the design with EU Intellectual Property Office.
  • Geographical scope: With a registered Community Design, the right provides EU-wide protection with the possibility of further international protection.
  • Enforcement: A pan-European injunction may be available and is a cost-effective way of protecting a design in a number of different markets.
Speed

The registration process is fast, unlike registration of other IP rights

What do I need to do to register a design right in the UK?

It’s always worth doing a clearance search first to check there isn’t a similar design right registered in the territory you’re looking for protection in. However, unlike with trade marks, the examiner assessing your application doesn’t notify owners of those designs, which could be deemed similar. Instead it would be up to those owners to check on any design rights potentially infringing their earlier rights and challenge on the basis of infringement. This means the registration process is fast!

If you elect to have a clearance search carried out, once you have the go ahead, you can register a design with the UK Intellectual Property Office for UK-wide protection only, or with the EU Intellectual Property Office for EU-wide protection in all 28 Member States. A registered Community Design (EU-wide) is more expensive, but obviously offers much more protection than registering in the UK only.

As with all IP rights, it’s really important to get an expert involved to avoid any nasty pitfalls. Be sure to therefore instruct a lawyer to carry out any clearance searches and register the designs for you – not only that, it takes the hassle away from having to do it yourself!

Register

Registering a design right can be hugely beneficial, but be sure to consider your individual circumstances to assess whether it will work for you!

When should I apply to register my design?

An application to register a design should be lodged prior to publication, ideally the day before, or the same day that the design is showcased to the public.

Is it worth a fashion designer applying to register a design?

As an early stage brand unless you are likely to re-use the design, collection after collection, season after season, then it’s not worth registering a design in the fashion industry. Doing so could be extremely costly given the amount of individual designs one collection will produce and the amount of collections a brand will show during its lifetime!

However, that said, some designers do re-use particular designs as a sort of trade mark of their brand. Take for example Chanel’sBoy Chanel” iconic handbag, or Dior’sFuturist Boots” from Raf Simons’ Spring/Summer 2015 collection.

Chanel boy bag

Chanel’s iconic “Boy Chanel” handbag registered design

At this particular show, Simons exposed a supernatural fashion crusade between past, present and future, which was inspired by David Bowie, who provided a soundtrack for the psychedelic looks on the runway. On his design, Simons commented, “This season, the Dior couture woman will walking on diamonds on the soles of her shoes”, pure poetry!

With such an iconic design, and given the magnitude of the design house itself, it’s no wonder that the House of Dior Couture wanted to protect this particular design.

Dior Futurist Boots

Walking on diamonds, here’s an example of Dior’s “Futurist Boots” registered design

If however, you think a particular design will only be shown once in one collection, or isn’t likely to become iconic of the brand itself, copyright is perhaps a better intellectual property right to rely on to keep costs down. See my previous post, “Hey! Hands off my IP! (Copyright)” for more info.

FTL verdict

When protecting designs, here are some really useful practical steps to consider, whether relying on unregistered or registered design rights, or copyright:

Fashion design sketch 2

It’s always a good idea to keep documented evidence of your designs, whether you decide to apply for registration or not

  • Use appropriate copyright notices. These put third parties on notice of a designer’s rights, such the rights in a design drawing. These should take the form of “Copyright © – [name of copyright owner]” followed by the date of first creation (the year will be sufficient), for example “© Sarah Simpson 2007”.
  • Safely archive the original design drawings, with dates and stamps/signatures.
  • Think about creating a stamp to use on key documents to mark their importance.
  • Avoid circulating design drawings, sketches and other prep work to third parties.
  • Keep contact details for each individual designer or artist working for you, including their name and nationality, copies of their employment or consultancy contract and any assignment documents.
  • Have the above documents checked by a lawyer to ensure it is the brand that owns the designs and not the individual designer – this is particularly important where designers are engaged with the brand on a consultancy basis, rather than employed by the brand.
Advertisements

Hey! Hands off my IP! (Trade Marks)

For the next few months, in-between the regular Fash Tech Lawyer news and gossip, I thought it might be useful for all of you budding designers out there hoping to turn your start-up fashion business into a fashion power house of the future, to list my top tips for protecting your intellectual property.

In this series of “Hey! Hands off my IP!” posts, I will give an insight into what IP rights are, how you can use them to protect your business and why you should!

These designers built their brands around their names, can you guess who they all are?

These designers built their brands around their names, can you guess who they all are?

IP – what’s all the fuss about?

Why do I think this is important? Well, being in the creative industry your most valuable assets can often be your intellectual property. What’s intellectual property I hear you cry?! A house of our own that us Londoners can only dream of? Nope! Intellectual property, or IP as it’s more fondly known, is a collection of intangible property rights that come about as a result of intellectual effort – so get those cogs turning! IP can be things like trade marks, copyright, design rights, confidential information, trade secrets and patents.

Trade marks

Fashion brands such as Chanel, Burberry and Louboutin all share something in common, their brands are king! So naturally they would want to protect them. One of the best ways to do this in the early stages, is to register a trade mark for your brand’s name and/or logo.

Be smart like these fashion power houses and be sure to protect your brand name and logo as registered trade marks!

Be smart like these fashion power houses and be sure to protect your brand name and logo as registered trade marks!

So what’s a trade mark? The terms “trade mark” and “brand” are often used interchangeably. Both can refer to a sign which distinguishes the goods, or services, of one trader from those of another. Trade marks are used to help customers identify goods or services as originating from you. A registered trade mark is infringed if it is used without its owner’s permission, so the owner of the mark has a monopoly over its use for the goods and/or services for which it is registered. This monopoly can be maintained forever!

Okay, so you’ve explained what a trade mark is. Why do I need one for my fashion business? 

Once you have decided on a name for your brand, protect it! It’s very tempting for competitors to start using a similar brand name to yours to try and ride off your success, particularly as your brand grows and becomes more successful. I wrote about the retailer VoQuE attempting to use VOGUE’s name on my last post here. Take a look for a prime example!

If I want to protect my brand’s logo, what should my first step be?

You’ll first need to see if there are any identical or similar marks to the name you are thinking of using. Although it’s perfectly possible to carry out a simple online search to see what’s out there, this might not catch everything. The best thing to do is to instruct a lawyer or trade mark attorney to carry out and report on detailed searches for you, known as Clearance Searches.

A clearance search needn't be long and winding! Enlist the help of a lawyer or trade marks attorney to set you on your way!

A clearance search needn’t be long and winding! Enlist the help of a lawyer or trade mark attorney to set you on your way!

What happens if I don’t carry out a search?

If you go ahead and use a name without first doing a clearance search, you can certainly run into problems. I’ve seen situations where businesses choose what they think is a unique name, only to be slapped with a nasty letter from someone who already owns that name! Or worse, they’ve been trading for a number of years, stacked up a tidy sum in assets, and the owner of the registered mark then sues them for infringement, and they lose everything.

What do I do next?

The next step would be applying! If you think here in the UK is your main market, but you hope to expand into other European countries and eventually the U.S.A. (for example), then think about applying for a Community Trade Mark (CTM) first and foremost. This will protect your brand in all 28 Member States and can be cheaper than registering your mark in multiple countries as and when you decide to trade there.

What if I start trading in different countries outside of the EU?

You will need to make separate applications for this and the hurdles for getting this through to registration in the U.S.A (for example) can be quite high! For instance, you will need to prove use or intent to use in the U.S.A. This can be quite difficult to do, but if you already have a national registration or a CTM, the hurdles can be a little easier to jump! What’s more, if you decide that within 6 months of your initial application, you are ready to take on a U.S.A. adventure, you will be granted what’s called a ‘priority period’ if claiming priority in your application. This means that when your U.S.A. application is approved and that mark registered, the U.S.A. mark will be deemed to have been registered from the date you initially applied for your CTM or national registration. Bonus!

Where will your trade marks take you?!

Where will your trade marks take you?!

What are classes?

Don’t worry, you don’t need to go back to school and take one – classes in the trade marks sense categorise goods and services for which the mark is registered. You will need to consider what goods and/or services, covered by these classes, you want to use your trade mark for. Typical classes for the fashion industry are class 25 for clothing footwear and headgear; and class 35 to advertise your goods for sale, but these are just a few. There are a number of classes available and a full list can be viewed here. Which classes you choose may largely depend on your brand, so always seek specialist advice from a lawyer or trade mark attorney before going ahead and selecting them.

How do I actually apply?

Most applications can be made online and there will be a fee to pay to the relevant IP office you are applying to. An examiner will then assess your application and if he or she is happy with it, will publish it for people to view and oppose (see warning above!). If you’ve had proper clearance searches carried out you shouldn’t have any oppositions and your trade mark will be entered on the relevant trade marks’ registry within a matter of months. Happy days!

Don't just stand around looking pretty like this Valentino model, get applying!

Don’t just stand around looking pretty like this Valentino model, get applying!

What’s a watch service?

All of this is no good if once registered, someone starts infringing your mark and you don’t pick up on it! For a small fee, most lawyers and trade mark attorneys will offer a watch service, where, by the power of highly intelligent software, any marks that appear online or that are applied for in territories of interest to you that are slightly similar to your mark will be reported to you. Well worth doing!

The moral of the story

Carry out full and proper clearance searches on any name you plan to use, protect your brand early on by applying to register a trade mark, and always keep a watch out!

Don't forget to keep a watch out!

Don’t forget to keep a watch out!

For more information on how to protect your IP, contact me!