How are Fashion Designs protected by Intellectual Property rights in the UK and EU?

As London Fashion Week celebrates its 40^th Anniversary this week, we are looking how fashion designs can be protected by intellectual property rights in the United Kingdom and the European Union.

There are a number of different ways in which fashion designs can be protected in the United Kingdom and European Union. Under the laws of both territories, design protection provides the right to prevent unauthorised use of your design. This includes, in particular, making, offering, putting on the market, importing, exporting, or using a product in which the design is incorporated or to which it is applied.

We have set out below, the different regimes for design protection (unregistered and registered) in the United Kingdom and European Union which apply to fashion designs.

Common Requirements for Design Protection

The starting point for unregistered and registered design protection is that the design must be novel and have individual character:

• A design is novel if no identical design has been disclosed before it. If two designs differ only in immaterial details, they will still be considered identical.
• A design possesses individual character if the overall impression conveyed to the informed user differs from that conveyed by any other previous designs.
   

Design protection relates to the appearance of all, or part, of the product. The design is derived from the features of the lines, contours, colours, shape, surface texture and/or materials of the product.
 

Unregistered Designs – European Union

Unregistered Community Designs (“UCD”) provide automatic protection against copying for novel designs for three years from the date that the design is made available to the public in the European Union. In order to be eligible for UCD protection, the design must be first made available to the interested public in a member state of the European Union. A first disclosure anywhere else in the world (including in the United Kingdom) to the interested public could destroy novelty.

Unregistered Designs – United Kingdom

The traditional UK Design Right regime offers protection for the shape or configuration (whether internal or external) of the whole or part of an article so is often relied upon by designers of handbags, footwear and even clothing, which has original defined elements beyond surface decoration. However, it does not protect 2D fashion designs such as surface decoration and repeating patterns. Since Brexit these such designs have been protected by Supplementary Unregistered Design Right (“SUDR”). As with UCDs, SUDRs provide automatic protection against copying for novel designs for three years from the date that the design is made available to the public in the United Kingdom. In order to eligible for SUDR protection, the design must be first made available to the interested public in the United Kingdom and a disclosure anywhere else in the world (including in an EU member state) to the interested public could destroy novelty.

Unregistered Designs – The Pros and Cons

The key advantage of unregistered design protection for a fashion house producing multiple designs in each collection is that there are no fees to pay, and the design does not need to be registered. The rights granted can also be a powerful weapon against infringers who copy their designs or counterfeiters.

The disadvantage of unregistered design protection is that it is, effectively, a right to prevent copying so the rights afforded are narrower than with registered designs. The term of protection is also short, though three years in the fashion industry is, in our experience, a long time.

As the right is also based on a disclosure to the public, in order to bring an action for infringement, the fashion designer will need to be able to provide documentary evidence of the following: 
 

• Proof of the date and place of the first disclosure of the design;
• Proof that the design refers to the disclosed design (with its main characteristic features and especially ones with ‘individual character’);
• Proof that the interested circles within the United Kingdom or European Union could have been aware of the disclosure itself; and
• Proof that the alleged infringer has in fact copied the protected design.

In our experience, cases relating to unregistered design right infringement, often fail as the claimant cannot prove to the satisfaction of the court that the right validly exists. Designers must keep detailed records of their designs, how, where and when they were created and first disclosed.

Registered Designs – United Kingdom and the European Union

Registered Design protection is available in both the United Kingdom and the European Union. If the first disclosure of the product was in United Kingdom or the European Union, there is a 12-month period from the date of the first publication during which registered design protection can be sought. Registered Design protection lasts for an initial 5-year period and registrations can be renewed for up to 25 years in 5-year terms. There is a 6-month period to file United Kingdom and the European Union registered designs claiming priority from an overseas registered design application.

The UK Intellectual Property Office (IPO) and the European Union Intellectual Property Office (EUIPO) do not carry out a substantive examination of registered design applications so provided the application meets the formal requirements, registered design protection will be granted. The validity of the design will only be determined in the event that the owner takes enforcement action against a third party.

Unlike unregistered design rights, registered design protections enable the holder to act against third-party products that create the same “overall impression” as the registered design, regardless of whether copying can be proven or not. As such, registered designs provide a true monopoly right, with a notably lower bar to enforcement than unregistered designs.

We work with many fashion clients who register their designs in the United Kingdom and European Union. The system in both territories allow for the registration of multiple designs in a single application which makes seeking registered design protection very cost-effective. Whilst registered design protection may not be appropriate for single-season products, for important new "long term" pattern designs, footwear, jewellery or handbags, it offers valuable protection against infringers.

Copyright – United Kingdom and the European Union

A fashion designer would be limited to claims of copyright infringement only if the first public disclosure of a design is outside of the United Kingdom or the European Union. The claim would need to be based on copyright in the original design drawings afforded by the national law where the designer is domiciled. The United Kingdom and each EU member state are members of the Berne Convention so provided that, under the law where they are based, they can establish that copyright exists in design drawings this right would be enforceable in the country where an infringement takes place.

Let’s take a look specifically at fashion design rights in France…

In France, the general definition of a what qualifies for design and copyright protection is similar to that adopted in the European Union. Likewise, national registered design and copyright protection are specific in the way that both IP rights are fully cumulative, provided that the respective legal requirements are met for both. This is called the principle of art unity. A dress, shoe, hat etc, can thus benefit from both IP rights.

Copyright is granted automatically to all original works of the mind, whatever their genre, form of expression, merit or purpose. No distinction will thus be made with regard to the artistic degree or the industry. The starting point is the creation date, independently of any public disclosure, solely by virtue of the realisation, even if unfinished, of the author's creation. A fashion product in itself, as well as fashion shows, are eligible for copyright protection as works of mind.

The fashion industry is very important to the French economy and has, therefore, special recognition under the law. The French IP code specifically refers to the creation of seasonal clothing and jewellery as being protectable by copyright. Article L112-2, al. 14 states:

“Creations from seasonal clothing and ornamental industries. Seasonal clothing and ornamental industries are industries which, because of fashion requirements, frequently renew the form of their products, and in particular sewing, fur, lingerie, embroidery, fashion, footwear, glove-making, leather goods, the manufacture of high novelty fabrics or special fabrics for haute couture, the products of parure makers and boot-makers and furnishing fabric factories.”

The French IP code also allows for the registration of designs for fashion industry products which are novel and have proper character. Further, there is a low cost, simplified procedure for industries which frequently renew the shape and decoration of their products, including the fashion industry. Article L.512-2 provides:

“In the case of designs for industries which frequently renew the shape and decoration of their products, registration may be made in a simplified form under conditions laid down by decree in the Council of State. The forfeiture of the rights arising from such a filing is pronounced where it has not been made to comply with the general requirements laid down by this decree at the latest six months before the date set for its publication.”.

Using the simplified design form, the designer can thus file multiple designs to keep them secret for up to three years, which are published only if the necessary fee is paid. If the publication does not occur, the registered design protection falls away, but the existence of the design application can, nevertheless, be useful to demonstrate when a design came into existence.

...And Italy

In Italy, the overlap between design and copyright protection has been a hot topic for many years. When the chance of double protection was firstly proposed with the EU Directive, the Italian Government introduced that industrial designs are protectable under copyright into its national laws and specified that they would allow this only if those designs "have creative character and artistic value in themselves". Copyright protection would, therefore, only be available for industrial designs that are comparable to works of art. This approach is in contrast with the EU Design Directive and the position taken by the European Court of Justice which suggested the mere requirement of creativity is sufficient. In a recent decision, the Court of Justice has stated that:

"It is not in harmony with European Directive 2001/29/EC for national legislation to make copyright protection of garments conditional on a subsequent finding that, apart from their utilitarian purpose, they produce a visual effect of their own which is relevant from an aesthetic point of view.”

The position remains uncertain, and it remains to be seen if the Court of Justice will force Italy to drop the requirement of artistic value.

It seems Italian Courts are not very keen on this European approach though the Milan Court’s Decision No. 491 dated 25/01/2021, takes an interesting position with regards to the artistic value and its evaluation. This decision, in favour of copyright protection for a design, has clearly explained how to find an artistic value. The court stated:

“it should be evaluated in the most objective way the perception that may have been established in the social community, of a given design creation; and furthermore in the broader cultural circles”;

and, moreover, it should take into account the:

"widespread recognition that several cultural institutions have expressed in favour of the design creation’s belonging to a sphere of expressiveness that is based on and constitutes an expression of trends and influences of artistic movements or, in any case, of the author's ability to interpret the spirit of the age, even beyond his own intentions and awareness, given that the design creation with artistic content acquire value in itself and as a result of the representative and communicative skills that it possesses and that are recognised in it by a wider sphere of subjects than just the consumer of that specific good”.

In the light of the above, the position of the Italian courts as to whether designs are entitled to copyright protection may be changing. However, it will still be some time before a clear picture has developed, and only when the outcome of doctrine and further case-law shows whether Italy should change its path and abandon the artistic value concept for the creative character.

Public Disclosure

The key issue for a fashion designer is the question of first public disclosure. As mentioned earlier, if the first disclosure takes place outside of the United Kingdom or European Union, the design will not be eligible for UCD or SUDR protection. For example, if a designer’s new collection debuts at a fashion show in Australia, it will only be able to rely upon copyright infringement (see above) as the basis for a claim against third party infringers in the United Kingdom or European Union, unless registered design protection has been sought.

If the designer’s first public disclosure is during Paris Fashion Week, it would not be eligible for unregistered design protection in the United Kingdom. Similarly, if the designer’s first public disclosure is during London Fashion Week, it would not be eligible for unregistered design protection in the European Union. In this instance, it would be possible to obtain registered design protection in the territory where the disclosure did not occur, but this can be expensive, depending upon the number of designs disclosed. In our experience, unregistered design protection is most frequently relied on as an enforcement tool by businesses that generate large volumes of new single-season designs for each new collection.

Practical Tips and Suggestions that might work for you

The problem with unregistered design protection, is that a first public disclosure in the United Kingdom will destroy novelty in the European Union and vice versa. One way around this problem is to adopt a strategy of simultaneous first disclosure in multiple territories that includes the United Kingdom and the European Union. There are a few ways in which this can be achieved:

1. If the designer first shows its new collections to distributors via email, simultaneous disclosure is relatively easy to prove provided that the same email was sent to distributors in the United Kingdom and the European Union, and this can be proven through the retention of the email and a comprehensive mailing list. Reports from customer relationship management tools would probably be admissible evidence.
2. If disclosure typically occurs via virtual meetings with buyers, again, it is relatively straightforward to prove that there was simultaneous disclosure. In this instance, if the meeting is conducted via Zoom or Teams, the designer should be able to prove that customers in the United Kingdom and the European Union were present, ideally through retaining a recording of the meeting.
3. For disclosure at a fashion show, the designer would need to establish that there was live-screening or online streaming of the show to the United Kingdom and the European Union. This has been adopted by some leading design businesses as a means of securing unregistered design rights in the United Kingdom and the European Union.
    

The above options provide ways to try to prove simultaneous first disclosure. There, however, remains a degree of legal uncertainty as the legal status of simultaneous launches remains, to date, untested before the courts of the United Kingdom and the European Union. Until there has been decided cases and judicial guidance provided on this issue (or legislative change which seems unlikely at the current time), the status of a simultaneous first public disclosure and whether it would afford dual unregistered design protection in the United Kingdom and the European Union remains unclear.

For any products which are going to be used for more than a season or two and across multiple product lines, such as patterns, handbag designs or footwear soles, consideration should be made to obtaining registered design protection. The tiered costs of filing multiple designs, both in European Union and United Kingdom, offer a cost effective solution for fashion houses to obtain registered design rights.

If you work within the fashion industry or are a designer and would like to have a free initial chat about the fascinating world of design protection, you can contact me directly or get in touch to see how we can help you protect your valuable intellectual property.