FASHION SUPPORT SUCCESS

A GUIDE TO INTELLECTUAL PROPERTY ( IP)

In t el l ect ual Proper t y At t orn eys ht tps:/ / www.vault -ip.com

0121 296 9164

FASHION SUPPORT SUCCESS

4Int roduct ion

6Who owns IP?

7Overview

8Trade Marks

12Designs

16Copyright

17Patents

18Overseas Trading & IP

20Conclusion

Contents

In t roduct ion

In t el l ect ual Proper t y ( IP)

-05

When it comes to the excit ing, fast moving world

of fashion and design, the importance of

Intellectual Property ( IP) can often be overlooked.

However, brand and design protect ion, in

part icular, have a hugely valuable role to play in

the success of creat ive businesses, where

innovat ion and original ideas are the primary way

to gain compet it ive advantage.

So, w hat i s IP?

IP rights are intangible property rights, which

result f rom creat ions of the m ind and include,

t rade marks, designs, patents and copyright . IP

rights enable creators, or owners, to benef it f rom

the work and investment they have put into their

creat ion. Just like tangible property, they can be

owned by an individual or legal ent ity and can be

bought , sold and licensed to third part ies. Serious

problems can arise if IP is not adequately checked

or protected.

FASHION SUPPORT SUCCESS

Who Ow n s IP?

Probably the most important aspect when

looking at IP is who actually owns the IP

result ing from any designs and creat ions.

Making sure that your company fully owns

and controls all of i ts IP is crit ical and will

avoid any cost ly m istakes that could

jeopardise your future.

There are a few common misconcept ions

about ownership. The following points

should be borne in m ind when IP is created

for, or by, a company:-

- Foun ders ? any IP created and registered

by the founders of the company before it is

incorporated does not automat ically pass to

that company. If the company needs to own

the IP, a t ransfer agreement needs to be

drawn up.

- Em ployees ? the general rule in IP law is

that IP created by employees whilst

operat ing within the company belongs to

the company. However, i t is sensible to

ensure that this is writ ten in to any

employment contract so the posit ion is

clear.

- Con sul t an t s / t h i rd par t i es ? If your

company commissions work involving the

creat ion of IP, the IP actually remains the

property of the consultant / third party

unless you have writ ten into the contract

that the IP is t ransferred.

A case study which demonstrates the

importance of IP ownership involved the

owner of Dr Martens boots. You can read

more about the case here which dates back

to 1988 when a logo was created

incorporat ing both DR MARTENS and

AIRWAIR by a freelance designer.

-07

Trade M ark s are basically anything that

dist inguishes your goods/ services from

those of another. Trade marks are usually

names and logos, although they can be

jingles or slogans etc. Trade Marks can be

protected through regist rat ion (registered

t rade marks) or through common law,

protected by the law of passing off

(unregistered t rade marks).

Design s protect the visual characterist ics or

aesthet ics of a product . There are registered

and unregistered design rights.

Pat en t s protect invent ions, i .e. the way

something works or is made. Patents need to

be registered and to be patentable an

invent ion needs to be new, i.e. not in the

public domain, and must involve an

invent ive step.

Copyr igh t protects original works of

authorship and includes li terary, art ist ic,

musical and dramat ic works. Copyright does

not need to be registered, as it springs into

li fe upon creat ion.

When designing new products, various IP

rights can come into play and it is important

to understand what rights exist and what

can be protected.

Overv iew

Who ow n s IP?

-09

Regist ered Trade M ark s

Trade marks are one of the most relevant

areas of IP for the fashion and design

industry. Given that designs generally come

and go, i t is not always worth securing

design protect ion, whereas a company /

brand name, should last and be something

in which you will build a reputat ion and

goodwill.

The arguments for registering a t rade mark

are much the same in the fashion and design

industry, as they are in any other.

Specif ically, a t rade mark regist rat ion:

- provides a right to prevent use of an

ident ical or confusingly sim ilar mark

in relat ion to ident ical or confusingly

sim ilar goods/ services;

- ensures that you have the right to

use the mark without object ion from

3rd part ies;

- adds value to a business and is an

asset which can be put on the

balance sheet ;

- provides grounds to submit

challenges to domain name

regist rat ions infringing your rights;

- provides grounds to ask websites

such as Google and Amazon to stop a

t rader selling products which

infringe your marks;

- enables you to generate income by

franchising or licensing.

When registering a t rade mark it is

necessary to specify the goods/ services in

relat ion to which you use, or intend to use,

the mark. Brands can quickly diversify into

other product areas that may not have been

originally thought of. For example, a

business may start of f designing dresses,

but may evolve into homewares or

cosmet ics. It is, therefore, important to

ensure that any t rade mark regist rat ion

adequately covers not only your current

products, but product areas where you may

feasibly venture into in the future.

UK and EU regist rat ions last for 10 years and

can be renewed for further periods of 10

years. Trade marks are unique in that they

are the only form of IP which can last in

perpetuity, as all other IP rights last for a

f in ite period of t ime.

A closer l ook at IP!

Trade M ark s

Un regist ered Trade M ark s

Whilst i t is possible to acquire

unregistered rights through use, i t can

take a number of years of extensive use to

acquire such rights and they can be hugely

t ime consuming and cost ly to rely on. To

succeed in an act ion for passing off i t is

necessary to prove that you have goodw i l l

in the mark, that there has been a

m isrepresen t at i on and also that you have

suffered, or would be likely to suffer,

dam age as a result . In contrast , to succeed

in an act ion for t rade mark infringement,

where a 3rd party has used an ident ical mark

for ident ical goods/ services, all you need to

show is that you have a valid t rade mark

regist rat ion.

Trade M ark Searches

When adopt ing a new t rade mark it is

important to ensure that i t is f ree for use,

otherwise you could spend t ime and money

changing brand design and advert ising /

market ing collateral, because it infringes the

rights of a 3rd party. Basic t rade mark

searches can be conducted on websites such

as the UK Intellectual Property Off ice

(w w w .ipo.gov.uk ) and on TMView

(w w w .t m dn .org/ t m view /w elcom e) .

Whilst these searches should reveal major

bars to use/ regist rat ion, they will not

necessari ly ident ify all potent ially conf lict ing

marks. It is, therefore, also worth

considering having a full availabili ty search

conducted.

An example of the importance of t rade mark

search is the ASOS dispute where Asos had

to pay out £20.2m in order to set t le two

t rade mark infringement cases, after i t

changed its name from ?As Seen on Screen?

to ASOS. You can read more about the case

here.

Many designers t rade under their personal

name, and whilst there is an own name

defence, i t is highly recommended that

regist rat ion is sought so that you can

prevent use of a conf lict ing name by a 3rd

party. If you have a lim ited company, be

aware that regist rat ion at Companies House

does not provide you with the right to use

the name, or prevent a 3rd party from using

the same/ sim ilar name. Click here to view

our blog ?Why Companies House won?t

protect you?.

-11

-13

Due to the quick turnaround of fashion

collect ions, this is probably the most relied

on form of IP in the fashion/ creat ive

industries to prevent copying of designs by

others. Unregistered designs protect the

appearance of the whole or part of a product

and come into effect automat ically ( i .e. there

is no need to f i le an applicat ion). However,

these rights are not available in all countries

and businesses need to consider where they

are promot ing their designs and whether

unregistered designs exist in overseas

territories. There are two types of

unregistered design right which cover the

UK- Unregistered Community Designs and

UK Unregistered Design Right .

Unregistered Community Design (UCD)

rights arise when a product is f irst made

available to the public in the EU. UCD

protect ion lasts for 3 years. UK Unregistered

Design Right (UK UDR) can last up to 15

years from the end of the year in which the

design was f irst recorded, or the product

f irst made. This period is reduced to 10 years

as soon as the products are put on the

market .

Whilst UK UDR is a longer last ing right , i t

does not provide protect ion for 2D designs

such as graphics, text i les and wallpaper and

businesses should, therefore, look to

register these designs if they are deemed

important . Furthermore, the last 5 years of

a UK UDR are a ?licence of right? period,

which means that should a third party wish

to use the design, the owner of the design

must grant them a licence. During this

period, owners of UK UDR cannot prevent

copying of the design, but can st i ll generate

income from royalt ies.

In 2014 G-Star Raw successfully took act ion

against Rhodi, the owner of ?Voi? jeans, for

UK Unregistered Design Right infringement,

claim ing that they infringed various design

aspects of i ts ?Arc-Pant?. It was found that all

n ine of the Voi products were copied from

and made substant ially to the ?Arc? designs

asserted.

Design s Un regist ered Design s

Registered designs are another useful IP

right for the fashion and design industry.

However, this is an underused form of IP,

possibly due to the short li fespan of the

fashion ?seasons?. The percept ion is that the

cost of regist rat ion is not warranted.

However, fai ling to f i le a registered design

could be detrimental to a business should a

design turn out to be a ?classic? which

out lasts the t rends. Many companies choose

to register designs for the longer and more

secure protect ion that regist rat ion offers.

Hermès, creators of many design classics,

are one of the heaviest users of the

Internat ional Design Regist rat ion system.

For Hermès, registered design protect ion

has been key and has allowed Hermès to

maintain its exclusivity by deterring others

from copying and giving it a st rong

foundat ion to f ight companies who do.

One of Hermès? best known products is the

Birkin bag, the design for which is over 30

years old. Although any design right or

design regist rat ions to the Birkin bag would

have expired, the shape has acquired a

secondary meaning and is now also a

?famous t rade mark?. Hermes (unusually)

has t rade mark regist rat ions for the design:

This is in addit ion to t rade mark

regist rat ions for BIRKIN. This is a great

example, of where IP rights overlap in order

to provide a company with robust

protect ion.

Registered designs provide a monopoly right

to prevent use of a design irrespect ive of

whether there has been copying. UK and

Community registered designs offer up to 25

years protect ion ( if renewed every 5 years) .

In order to be valid, a design must be novel

and possess individual character. Once the

design is in the public domain it is no longer

new, although in the UK and EU there is a

12-month grace period for the f i ling of a

design. This means that the applicat ion for

design regist rat ion does not need to be f i led

unt i l 12 months after the design is f irst made

public. This grace period helps companies

assess whether a part icular design is likely to

be commercially successful and have

longevity.

-15

Regist ered Design s

Copyright protects original works of

authorship, including li terary, art ist ic,

musical and dramat ic works. It also protects

sound recordings, broadcasts, f i lms and the

typographical arrangement of published

edit ions. Copyright provides the owner with

the right to prevent use of the work without

perm ission. It does not need to be

registered, as it springs into li fe upon

creat ion, but for this reason it is extremely

important that you document the creat ion of

the work and keep dated evidence. The

length of t ime copyright subsists depends

upon the nature of the copyright work:

Writ ten, dramat ic, musical and art ist ic

works ? 70 years after the death of the

author

Sound and music recording ? 70 years from

f irst publicat ion

Films ? 70 years following the death of the

director, screenplay author and composer

Broadcasts ? 50 years from f irst broadcast

Layout of published edit ions of writ ten,

dramat ic or musical works ? 25 years from

f irst publicat ion

Copyright is a long-last ing right , but in order

to successfully sue for copyright

infringement, actual copying needs to be

established.

Copyr igh t

-17

Although designs and t rade marks are the

most relevant areas of IP for creat ive

businesses, the fashion industry is not

devoid of technological innovat ion and

patents can be relevant . Patents protect

invent ions, i .e. the way in which something

works or is made. To be patentable an

invent ion must be new and involve an

invent ive step. There is no grace period for

f i ling a patent and it is necessary to f i le a

patent applicat ion before any public

disclosure. A patent lasts for up to 20 years.

One of the most well-known patents relates

to the t reatment of fabrics by Novozymes, a

Danish biotech company specialising in

enzymes and m icroorganisms. In the 1990s

the company developed and patented an

enzyme which was used for the manufacture

of ?stone washed? jeans without pumice

stones. The enzymes disrupt the f ibres on

the surface of the yarn, which loosens the

dye so the jeans acquire a ?worn? look.

Within 3 years, most of the denim f inishing

industry was using the technique.

The bar for patentable invent ions is much

lower than many people imagine. The

requirement is that the invent ion should not

be an obvious modif icat ion of what has gone

before and is assessed through the eyes of

the uninvent ive skilled technician. For

examples of some household invent ions we

take for granted, please click here . You can

also read our blog art icle ?Patents for

diapers? Or a load of pants?? by clicking

here.

Pat en t s

Through the internet , i t is now easier than

ever for fashion items to be sold worldwide.

Due to the speed this can occur, thought is

not always given to the new markets

products are being sold in. For all IP rights, i t

is important to consider the territories in

which the business is or w ill be operat ing, to

ensure proper checks are carried out and that

adequate protect ion is put in place. This can

be a complex and cost ly exercise and

assistance from Trade Mark and Patent

At torneys is advisable.

It is worth not ing there is no worldwide

t rade mark regist rat ion, patent or design

system. Most countries are a party to the

Berne Convent ion for the Protect ion of

Literary and Art ist ic Works and under this

convent ion, countries enforce copyright

from other countries, in accordance with

certain rules.

It is also important to check that your t rade

mark does not have any inappropriate or

offensive meaning in other languages. Click

here to read our art icles about the

importance of adopt ing a suitable t rade

mark, which contains some amusing

examples of inappropriately chosen t rade

marks.

Overseas Tradin g & IP

-19

-21

In short , IP protects the original ideas of

creat ive thinkers and designers which the

fashion industry is so hugely reliant on to

gain compet it ive advantage. As such,

businesses need to take the t ime to look at

how they protect their unique creat ions

through t rade marks, designs, patents and

copyrights, to ensure they do not lose

coveted designs, or experience damage to

brands, through copying and m isuse by

others.

Tips an d recom m en dat ion s

1. Keep detailed records and evidence

relat ing to the creat ion of designs and

copyright works;

2. Conduct searches for new t rade marks, to

ensure they are free for use and regist rat ion;

3. Consider whether a new mark is going to

be used just for one season, or whether it

has longevity. If i t is the lat ter, consider

t rade mark regist rat ion;

4. Ensure manufacturers, licensees and

potent ial future partners sign NDAs;

5. If you use freelance designers or

photographers, make sure that you have

agreements in place to ensure that you own

the IP in any work they create;

6. If you want to licence your designs,

consider which designs you are licensing

and in which territories;

7. If you are licensing your t rade marks,

ensure that the marks are registered and

consider what goods/ services you are

licencing the use for, and in what countries;

8. Consider whether licence agreements

should be sole, exclusive or non-exclusive;

9. Keep evidence of use of t rade marks,

part icularly in relat ion to unregistered

marks, such as date of f irst use, turnover

f igures relat ing to part icular marks, copies of

invoices which should refer to the mark,

details of the goods/ services in relat ion to

which the mark has been used, copies of

li terature, advert ising materials, newspaper

art icles, as well as samples or photos of

merchandising products bearing the mark,

all of which should be dated and details of

t rade fairs and fashion shows at tended with

evidence;

10. Use © , ® and ? symbols, where

appropriate, as well as statements on

websites and li terature ident ifying your IP;

11. Take act ion against m isuse of your IP

rights;

12. Put in place t rade mark watches and f i le

opposit ion against applicat ions for

conf lict ing t rade marks;

13. Carry out an annual or bi-annual review

of IP.

Com pan y: Vault IP

Websi t e: ht tps:/ / www.vault -ip.com

Con t act Michelle Bishton

Locat ion : Birm ingham, B2 5PP

Telephon e: 0121 296 9164

Con clusion