International Trademark Association (INTA) keeps educating on Fashion Law

The Fashion sector, today, is a $1.7 trillion dollar global industry and the Fashion Law is a relatively new legal discipline developed to respond to the needs of the Fashion industry. Although this new field involves many different legal disciplines, the Intellectual Property (in particular, Trademark, Designs, Copyright and licensing strategies related to these assets) is a core element of Fashion Law.

Profitability of Fashion business is linked to branding success, so that Trademarks are an essential element in this field, and constitute the main source of the advertisement message transmitted to customer regarding specific styles and tastes.

When it comes to Fashion counseling, it is key to provide creative solutions based on a proper combination between the various forms of protections (Trademark, Copyright, Designs, etc.), being always aware of the current legal and practical differences existing in the international legal landscape (e.g. USA vs. EU).

Lawyers and industry professionals shared experiences, recommendations and insights into protection and enforcement of Intellectual property in the context of Fashion Industry during an interesting conference held on March 22-23, 2017, in New York. Discussions on fashion and branding had a particular focus on how technology progress has been changing the fashion business: In order to see the impact, it is sufficient to consider how social media and young (and less young..) fashion influencers are gaining more and more importance in defining trends, preferences and styles at global level.

Another important discussed topic was the one related to advertising strategies generally employed to launch a new luxury brand. Panelists discussed long-term brand protection, brand revival  and ways to keep a brand true to its essence while embracing new technologies and commercial strategies. Attention was also given to legal issues related  to corporate compliance, and panelists spoke about  what IP lawyers should know to avoid problems in that specific legal context: for example,  they discussed potential liability for apparently innocuous things as gifts, freebies, giveaways and discounts, e.g.  in the framework of US legal remedies to struggle against corrupt or illegal commercial behaviours.

As to design protection, the panelists discussed different ways of enforcement of unregistered designs in various jurisdictions, including the United States, where the difference with the European Union design (called “Community Design) is still quite important: in the EU, “registered” and “unregistered” Fashion design protection regimes are clearly defined, while in the States, protection of Fashion products  considered to be  “useful articles” is still not clear under Design Law.

During the upcoming INTA annual meeting in Barcelona, Spain (20-24 May 2017), Mr. Riccardo Ciullo, IP/IT lawyer and managing director of IPWISELY, together with american lawyer Matthew Asbell, will moderate an interesting table topic on “IP Law and Fashion business”.

Below the proposed outline:

              i) Fashion products and Copyright Law

1. Copyright protection for Fashion Design. How important is copyright for Fashion Designers in your jurisdiction? Pros and Cons
2. The problem of fashion items as useful articles and its consequences on copyright protection for clothing designs. What aspects of a clothing design are or are not protectable under copyright in your jurisdiction?
3. The concept of “separability”
4. The piracy paradox doctrine: some commentators claim piracy could be beneficial to fashion industry. What do you think?
5. What ancillary aspects of Fashion Design (ie, logos, labels, websites, fashion photography, software and interfaces in relation to wearable technology) are protectable under copyright in your jurisdiction?
6. How, if at all, does copyright provide added protection for fashion goods at ports of entry?

ii) Trademarks in Fashion

1. Trademarks as long-term protection for fashion houses. Do Fashion companies abuse trademark protection or it is a reliable solution if compared with other kinds of rights, such as Industrial Design? Are the rights mutually exclusive?
2. Designers’ penchant for choosing their personal names as their house trademark (see Gucci, Prada, Donna Karan, Marc Jacobs, etc.). Pros and Cons of this tendency in the medium-long term? Any relevant litigation in your specific jurisdiction? (e.g. Paolo Gucci v. Gucci Shops, Inc. US DC SD of New York, 688 F.Supp.916, 1988)   Are there separate non-trademark rights in the commercial use of personal names in your jurisdiction, and do they apply to established and new fashion designers alike?
3. Trademark Parody in the Fashion world. A Parody has been defined as a “form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner”. When it is justified and when not?
4. Oscar Wilde said, “ Fashion is a form of ugliness so intolerable that we have to alter it every six months”. An American judge in a famous trademark infringement case mentioned this quote. Do you think fashion cases are somewhat undervalued or even snubbed by judges in your country? Any example? Practical experience?
5.  What are the benefits and limits of trademark protection at ports of entry?

iii)  Design and Patent in Fashion

1. Is there an abuse in your jurisdiction of trademark protection if compared to (available) design protection?
2. Is sui generis legislation for fashion design protection beneficial to the business? The experience of the Community unregistered design
3. The Community unregistered design. Evidence and arguments generally accepted by EU courts in order to prove its existence.
4. Design protection regime in the US and the EU. Pros and Cons of both systems. The Community unregistered vs. the (debated) US Design Piracy Protection Act, the Community registered design vs. the U.S. design patent.
5. Utilitarian Patent relevant to the fashion industry. Any example? What about wearable technology?

iv)  Counterfeiting as a global menace to Fashion industry   

1. The use of undercover purchases in Fashion litigation: is the use by lawyers of private investigators posing as customers allowed under your jurisdiction ethical rules?
2. When is counterfeiting a crime in your jurisdiction and how do the authorities address it?
3. How do sophisticated counterfeiters attempt to get around IP rights in your jurisdiction? What steps can IP owners take?

v)   Fashion licensing

1. Licensing vs. Franchising. Characteristics, Pros and Cons of both approaches for a young fashion house.
2. Principal elements of fashion licensing agreements: exclusivity / non-exclusivity, terms and termination arrangements, compensations (royalties, guaranteed minimum payments, etc.), quality control, Advertising and promotion. Discuss the “perfect” licensing agreement from the licensor and from the licensee standpoints.
3. How must licenses be modified or supplemented in your jurisdiction when the fashion product is a wearable technology?
4. Do fashion licenses need to be recorded in your jurisdiction?
5. How do fashion licenses in your jurisdiction address uses on the internet, including on  social media?

For additional information on the topic, feel free to contact us