Intellectual property rights are legal rights that protect intangible assets such as creative inventions, artistic works, designs, images, symbols and names. A business’s ‘branding’, ‘goodwill’ and ‘reputation’ are all dependent on the effective creation, protection and exploitation of its intellectual property rights.
Intellectual property protection is extremely important in the fashion industry where so much value is placed on branding and designer labels. In such a highly competitive industry, intellectual property rights are a core asset, and can be commercially exploited through licensing, sub-branding, merchandising and sponsorship.
In this article, our intellectual property solicitors explain how fashion brands can protect their intellectual property and how they can enforce their intellectual property rights if they have been infringed.
- How do fashion brands protect their intellectual property rights?
- Design rights
- Trade Marks
- Passing off
- Trade secrets
- How to avoid intellectual property infringement in fashion
- Intellectual property infringement and supply chain issues
- Licensing your intellectual property
- Collaborations and intellectual property ownership
How do fashion brands protect their intellectual property rights?
There are various means by which fashion brands can protect their intellectual property and a multi-layered approach, employing a combination of the different intellectual property protections and safeguards outlined below, is often the best way forward.
Design rights protect the unique aspects of the appearance of a product. UK design protection now comes in three formats and all three may be used to prevent the design of a fashion item from being copied.
UK Unregistered design right
When you create an original design, you automatically have unregistered design rights in the three-dimensional aspects of it, even if these serve a purely functional purpose. However, unregistered design rights do not protect the two-dimensional aspects such as its surface decoration. In terms of fashion items, unregistered designs could protect the whole or part of the shape of a product if it is particularly unusual, such as a uniquely shaped bag or pair of shoes, or it could protect an item with unusual intricate features and materials. The shape of a common item of clothing, such as a t-shirt or sweatshirt is unlikely to be protected.
Protection lasts for the shorter of ten years’ after the designed product was first sold or fifteen years’ after it was created. In the last five years, a licence must be given to anybody who asks for one.
Infringement action can be taken against anyone that makes articles that copy the design exactly or substantially, for commercial purposes or records the design exactly or substantially for the purpose of reproducing it for commercial purposes. The difficulty in enforcement lies in proving that the right exists and that it was intentionally copied.
However, in the fashion industry, unregistered design rights can provide useful protection for low margin seasonal items and trends with a short shelf-life as they provide immediate protection where registering the design may, relatively speaking, be too slow and costly.
Fashion businesses should ensure that they keep accurate records of when, where and by whom each of their designs were created. The design document should contain as much information as possible about the nature of the design and how it was created, including, the date, what is novel about it and include pictures or photographs of the design itself.
UK Supplementary unregistered design right
As a consequence of Brexit there is now a further design right for UK unregistered designs. This is available for designs that were first disclosed in the UK on or after 1 January 2021 and which would otherwise have been protected as unregistered Community design rights. The right can only apply up to ten years’ from the first marketing of the design or fifteen years’ from the creation of the document recording the design.
Unlike a UK unregistered design, a supplementary unregistered design right can also protect the ornamentation of a product and not just any three-dimensional aspects. So it can protect unique prints and surface patterns on garments as well as unusually shaped items. The design must be novel and possess individual character and protection lasts for three years from when the design was first disclosed to the public.
As with UK unregistered design rights, the difficulty in enforcement lies in proving that the right exists and that it was intentionally copied so keeping accurate records is imperative.
UK Registered design right
A registered design protects the overall visual appearance, shape and decoration of a product, or a part of a product. You can protect two-dimensional designs and surface patterns as well as a three-dimensional products. This is important as UK unregistered design rights do not protect surface decoration and the item may not qualify for supplementary unregistered design right protection.
To be registered, a design must be new and have individual character. A design would not be considered new if it were 'published' or made public before the date the design application were filed. However, you can apply to register a design in the UK up to twelve months' after the designer first discloses it and so can defer registration for up to twelve months' from the date of application.
Once the design is registered, registered design rights can last for a total of twenty five years, with renewal being necessary every five years.
The registration of a design gives the registered proprietor “the exclusive right to use the design and any design which does not produce on the informed user a different overall impression”. By registering a design, it is easier to enforce it as there is an official record of when it was created and who created it. You can take legal action against someone "making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied or stocking such a product for those purposes.”
Registration bestows a twenty-five year monopoly in the design for a relatively low cost, which can be licensed and sold by the registered design owner. A registered design is easier to enforce than an unregistered design as no proof of intentional copying is required. Thus registering a design acts as a stronger deterrent to would-be infringers.
So the owner of a fashion design of any long-lasting value would be best advised to obtain registered design protection in addition to relying on any unregistered design rights. This is particularly important where the design is a surface pattern or decoration. Larger fashion houses may register a large number of designs as they are created and then decide to only renew a certain number of them after five years, depending on which are the most successful.
Trade marks are words, slogans, signs, images or other distinctive features that are used to denote the origin of goods and services as well as acting as a guarantee of quality or a particular standard of products or service.
Trade mark registration provides the best route to protection and enforcement. Registration is more likely to deter others from using a similar brand in an attempt to profit from your reputation and it is easier to bring an action against a competitor, as a registered trade mark owner. Registration also creates a property right that can be commercially exploited through licensing, transferring or mortgaging the registered mark.
The UK Intellectual Property Office maintains the Register of Trade Marks and handles all registration applications. It is very important to carry out adequate checks before deciding on a trade mark, to avoid choosing a brand name and/or logo that is the same as or confusingly similar to one that is already in use for similar products or services or by a large, well-known business. You will need to search the UK and possibly also the European / other international trade mark registers, or instruct a solicitor or trade mark attorney to do this for you. If you already have an established brand, conducting searches is still advisable. This can give you the option, if the risks of an infringement call for it, of modifying your brand or negotiating a licence or other co-existence arrangement with a competitor, early on.
A trade mark can be registered indefinitely, provided that renewal fees are paid every ten years but it will become vulnerable to “attack” by other businesses on grounds of non-use if it is not put to use in business within the first five years’ of registration or in any subsequent five year period.
A registered trade mark owner can bring an action for infringement without having to prove any goodwill in the mark. They need only establish that a third party is using an identical or similar mark for the same or similar goods or services and in the case of a similar mark or similar goods or services there is a likelihood of confusion arising or a third party uses a mark that is likely to dilute, damage or take unfair advantage of the reputation of the registered mark.
In the context of the fashion industry, trade mark registrations are one of the most effective ways to protect a business’s IP and are often obtained in conjunction with registered design rights to ensure as full coverage as possible for all aspects of the design and branding.
One particular issue regarding clothing is that in order to be registered, a trade mark must be perceived as a mark of origin and not simply as decoration or a statement about the wearer on the garment itself. This is mainly raised as an issue for items that commonly bear slogans or decoration such as t-shirts, caps or sweatshirts. To get around this, brand owners can also display the mark on a logo or tag and/or on the product’s packaging to show that it is intended to be perceived in a trade mark sense.
Large multi-brand fashion houses, often operating mainly in the e-commerce sphere, may register numerous trade marks to expand their portfolios including various “legacy brands” from high street stores that have gone into administration and which still have a reputation that can be profited from.
Passing off is a common law action that is taken in the courts when there is an infringement of a business’s goodwill.
A misrepresentation occurs when a third party uses a trade mark that is similar or identical to that of the claimant business so that the public is lead to believe that the third party’s goods are those of the claimant or otherwise associated with the claimant, which is likely to cause harm to the claimant’s prior goodwill.
In practice, passing off is relied upon when a business does not have a registered trade mark or design or did not at the time when the misrepresentation occurred. However, it is harder to prove than trade mark or design infringement as you must have evidence of your ownership and goodwill in the mark or design and show that your business has suffered damage or is likely to due to the misrepresentation. This can be financial or reputational damage.
Passing off is not useful for immediate protection since some period of time and exposure is needed to amass goodwill in the brand or design before it can be protected.
Copyright is another right, like unregistered design rights, that arises naturally in the UK upon the creation of an original creative work. In the fashion industry, this is most likely to cover the surface decoration of an item, such as printed patterns, logos or artistic images or items that constitute "works of artistic craftsmanship”. It is unlikely to cover brand names, individual words or colours, common patterns or simple arrangements of common shapes or letters, as these are not generally unique enough.
As well as the items themselves though, copyright can be of use in the fashion industry in terms of protecting advertisements, sound and video recordings, advertising copy, packaging, printed literature, websites, illustrations and photographs, provided they are original and involve a degree of labour, skill or judgement.
Copyright provides the creator the ability to take action against anyone copying or adapting the work or a substantial part of it. This includes reproduction of the work in any material form. A secondary infringement of copyright could also occur if a business imports into the UK an article which they know or have reason to believe is an infringement of someone’s copyright. It is therefore important for fashion retailers and distributors to carefully check the origin and authenticity of goods that they will be importing into the UK to sell.
As with unregistered designs, fashion designers should keep detailed records of the copyright design and its creation, including dates and names of designers as proof of ownership should a dispute arise.
Copyright is particularly useful where protection is needed quickly and unregistered design rights may not apply, for example in the case of logos, surface decoration and patterns applied to a fashion article.
A trade secret is any confidential business information or know-how that is commercially valuable. It can constitute a manufacturing or production method, a piece of software, supplier or customer lists, a design idea or a particular advertising or marketing process. The value is in the confidential nature of the information so it is imperative that this is protected by way of non-disclosure agreements with whoever is to be a party to it. Secure filing systems and information technology systems can prevent unauthorised access to such information and staff and employees should only be able to access it on a ‘need to know’ basis.
Actions for the unauthorised disclosure of trade secrets are based on breach of the contract in question as well as the common law tort of breach of confidence, if there is no contract in place.
How to avoid intellectual property infringement in fashion
The above means of protection can provide remedies once an infringement has occurred but this can be costly and involve going to the court or pursuing a claim through the Registry of the the UK Intellectual Property Office.
As the risk of infringement is high in the competitive world of high street fashion, where many retailers’ designs are often all inspired by the same current designer pieces, important steps should be taken to try to prevent infringement from the start. These can include:
- Protecting trade secrets and designs before they are released into the public domain through confidentiality and non-disclosure agreements, encryption, password protection and limited disclosure of confidential information;
- Conducting availability searches and checks before deciding on a brand name or design to ensure that it does not infringe anyone’s existing IP rights;
- Training staff and contractors so that they are familiar with the business’s IP rights and how they can use and protect them. For example they should understand the business’s marketing strategy and convey a consistent brand message on-line and in person; they should use the registered ® symbol after any registered trade mark, alternatively the TM symbol for an unregistered markand they should report any inconsistent use of the mark ;
- Having comprehensive agreements and documentation in place to clarify who owns the IP, who is authorised to use it and how and what remedies are available in the case of infringement.
Intellectual property infringement and supply chain issues
Many fashion retailers source stock from suppliers, sometimes based abroad in places such as China or Bangladesh, as it is usually cheaper. This brings with it high risks of infringement as the retailer will have no control over product development or manufacture. Retailers must ensure that their supply chains are not infiltrated by counterfeit products. Good practice must be maintained and a coordinated approach used based on prevention and vigilance. Some methods can include:
- Register important trade marks and designs abroad in the country of manufacture as well as the country of retail so that action can be taken against infringement there and to act as a deterrent against foreign counterfeiters;
- Set up trade mark and brand watching services at home and abroad so that action can be taken quickly against anyone seeking to register a similar trade mark or design;
- Invest in distinctive and good quality labelling and packaging that is more difficult to copy and which clearly bear the item’s trade mark and the registered ® symbol;
- Use authorised suppliers and minimise the number of suppliers as far as possible. Due diligence should be conducted on supplier companies and their websites to ensure that they are genuine and trustworthy;
- Have clear and detailed agreements and contracts in place with suppliers, manufacturers, distributors, agents and retailers to ensure that procedures are followed and standards are met to regularly check and trace products and packaging;
- Inform the relevant customs/border agencies in the UK and abroad of any suspected infringements;
- Consider obtaining an assignment of the IP rights in the goods from the manufacturer to ensure that you have control over the protection and enforcement of such rights.
Licensing your intellectual property
Licensing IP rights can allow a designer or retailer to develop or sell a product in new markets or to a wider extent or to exploit a sub-brand or expand into new product categories. For example, you can license the rights to a distributor to sell the licensed goods in a particular territory. Intellectual property licensing agreements allow the rights owner to keep ownership and control over the IP and to collect a licence fee from the licensee. It is important that any licence agreement contains full, detailed obligations and information regarding how the IP rights and goods to which they pertain should be used and marketed by the licensee. There are many considerations when entering into an intellectual property licence and it is recommended that legal advice is sought to ensure that you consider all the major issues and how they are to be dealt with in the agreement.
Collaborations and intellectual property ownership
Brand collaborations are common in the fashion industry and another way to exploit IP rights. For instance a high street retailer may enter into collaboration with a high-end designer or celebrity to create a particular range or limited edition product. This can benefit the designer in reaching a wider market and customer demographic. The high street retailer may benefit from an association with the prestige of the designer or the fame of the celebrity and a more exclusive and/or widespread reputation for its goodwill and brand. Collaboration with social media influencers can allow a business to keep up with new trends and to increase its social media presence.
Before entering into this type of arrangement both parties should ensure that their values and brand image are a good match and that one business’ or celebrity’s image will not decrease the value of the other. Due diligence is necessary to check the authenticity of the brand in question and the validity of any IP rights that will be licensed or created.
IP rights are one of the most important assets of the fashion industry and as such, should be protected, enforced and exploited with due care and expertise. Specialist advice is often required to ensure that documentation is correctly drafted, careful due diligence is carried out, important registrations are applied for and maintained and proportionate enforcement action is taken when required. Without such advice a simple mistake could end up costing a business deeply and even result in a business having to completely re-brand or go out of business completely.