A GUIDE TO INTELLECTUAL PROPERTY (IP) - Fashion Rider · Intellectual Property (IP) can often be...
Transcript of A GUIDE TO INTELLECTUAL PROPERTY (IP) - Fashion Rider · Intellectual Property (IP) can often be...
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