Design Right in The Fashion Industry: A Tipping Point
09-09-2013
Followers of fashion may have observed that there have been a number of articles in the mainstream and trade fashion press this month, primarily relating to the ability (or otherwise) of designers to rely on design right in order to prevent others from copying their designs. Brand owners seem more willing to take action to enforce their rights against third parties in what is a notoriously difficult arena to police.
By way of example, take Made in Chelsea star Kimberley Garner, whose swimwear collection has resulted in proceedings for intellectual property infringement being issued by Agent Provocateur, which alleges that Ms Garner’s “Monaco” bikini, infringes Agent Provocateur’s “Mazzy” design. You can compare the two swim suits here: http://fashion.telegraph.co.uk/news-features/TMG10242070/Agent-Provocateur-sue-Made-In-Chelseas-Kimberley-Garner.html.
Left – Agent Provocateur Mazzy Bikini, Right – Kimberley Garner’s Monaco Bikini.
Photo from The Telegraph
In a longer running saga, and reported in a recent issue of Drapers Magazine, Karen Millen is seeking to enforce its design rights against Dunnes Stores in the Court of Justice of the European Union (CJEU). A long drawn out battle has so far seen the Irish courts finding in favour of Karen Millen at first instance and on appeal. The outcome of the referral to the highest Court in Europe is likely to have a big impact on designers and their ability to enforce their rights against copycat items of clothing.
Unregistered design right (UDR) arises automatically, provided certain conditions are met. There are separate regimes governing UK UDR and Community UDR (which extends to all 28 member states of the European Union).
UK UDR lasts for the shorter of 10 years from the date of first marketing of articles made to the design in question, or 15 years from the creation of the document embodying the design. Broadly speaking, UK UDR protection arises for original (and not commonplace) aspects of the shape or configuration of an article, subject to some exclusions. The most important of those for the purposes of fashion is, arguably, that which excludes “surface decoration”.
Over the years there have been a number of attempts to attribute UK UDR to fashion designs, but given that such protection is intended to cover functional items and “surface decoration” is expressly excluded, such attempts have been largely unsuccessful. An oft-cited example is the failure of Lambretta[1] to establish that the application of particular colours to a top constituted an aspect of the shape or configuration of the article as opposed to mere surface decoration, thereby disqualifying it from UK UDR protection.
Community UDR however, does not exclude surface decoration and whilst it lasts for only three years from the date the design was made available to the public in the EU, it is a useful tool for protecting items such as fashion garments which, by their very nature, have a relatively short lifespan. Community UDR has proved a useful weapon for designers including high profile fashion houses such as Jimmy Choo and Chloé.
The crux of the issue in the Karen Millen case mentioned above, is something many designers will come across in trying to prevent copies of their works, and that is whether or not a design will still attract protection where it incorporates elements of various previous designs. In design law speak – can articles inspired by previous collections be considered not to be commonplace and to create a different overall impression (individual character) to the prior art?
If Karen Millen is successful before the CJEU, it will provide a precedent for designers to point to when trying to enforce design rights in articles which may incorporate elements of previous collections or which are inspired by older garments. However, if Dunnes succeeds in its defence, then it may become more difficult for designers to rely on unregistered design right, particularly given the culture of inspiration and derivation often seen in the industry.
It is important to remember that designers may also benefit from copyright protection for elements of their clothing, most commonly the print applied to a fabric, which can constitute an artistic work. There have been recent changes in the law (yet to come into effect), which will improve the position of designers in so far as they are entitled to claim copyright protection for industrially produced works, such as printed fabrics manufactured into garments, on a relatively large scale.
The Enterprise and Regulatory Reform Act (ERRA), which received Royal Assent in April 2013, provides for the repeal of section 52 of the Copyright Designs & Patents Act – will effectively extend the term of copyright protection for artistic works which have been exploited by the industrial manufacture or marketing of articles to the design to 70 years from the death of the author, rather than the current 25 year period, bringing them into line with the general term of protection for artistic works (see our article on other implications for copyright brought about by the ERRA here).
Design right, copyright and their enforceability in the fashion industry continue to be hotly debated topics but it is possible that the outcome of the Karen Millen litigation (not to mention extended copyright protection under the ERRA) could tip the balance in favour of design houses and away from the high street.
