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A Guide to Intellectual Property in the Fashion Industry

guide-intellectual-property-the-fashion-industry

Helen Anthony (c) This image is used with the permission of British luxury fashion designer Helen Anthony Ltd.

1.0 Copyright

The British Fashion Council estimates the UK Fashion Industry 2018 to be worth £21 billion, or 1.7 of UK GDP. Speed is paramount in the fashion industry, with each fashion house customarily showcasing a Spring/Summer and Autumn/Winter collection, and often a cruise, or ‘mid season’ collection. Each collection showcases 30 - 40 looks, with 75 - 105 garments, with small variations.

Many emerging fashion designers will exhibit at smaller fashion shows, at stylish hotels, restaurants, art galleries, museums and public spaces, and also participate in pop up boutiques and pop up showrooms before investing in a major fashion week show. This will give them the opportunity to establish an audience, learn how fashion shows operate, collaborate and share market intelligence with other designers and establish a fanbase and buyers, which is vital before many department stores would consider investing in a new designer.

Whilst some of these different looks may only feature minor variations, there will be certain garments that create a cohesive signature look for your brand’s style that season, inimitable to your brand, these will be the ones that you choose to protect, and monitor competition and imitators who may infringe your rights.

Within the fashion industry, Intellectual property can be secured through:

1. Copyrights

2. Design rights

3. Trademarks applied at the product development and generation stages.

Copyright is given automatically to any “original literary, dramatic, musical or artistic work”. For the fashion industry, it is necessary to prove that it is a “work of artistic craftmanship” to secure copyright protection.

Copyright is the most affordable way to protect your designs, however it is important to document your audit trail, and to bear in mind that designs which may be similar to those in the mainstream may not automatically be covered by the protection. 

Copyright owners are advised to place the universal symbol for the copyright © next to their name and the year to show they own the copyright. Once secured, your brand’s intellectual property rights become core assets, making the brand more attractive to investors.

2.0 Design Right

The design right protects the appearance of a purely functional product, and its functional, but not decorative features.

It is a right to prevent copying which does not require registration and is valid for the lesser of 10 years from the first marketing of the articles made to the design, or 15 years from the creation of the relevant design document, subject to the license of rights in the last five years of the term.

To be protected by a design right, a design must:

    • Comprise by shape or figuration (whether internal or external) of the whole or part of the article (section 213(2) CDPA) 
    • It must not be commonplace in a qualifying country Section 213 (5) CDPA
    • It must be recorded in a design document, or be a subject of the article made to the design (Section 213 (6) CDPA)
    • It must be created by a qualifying person (section 213 (5) CDPA

The owner of design right within a design has the exclusive right to reproduce the design for commercial purposes by making either:

    • Articles to that design
    • A design document recording that design for the purpose of enabling such articles to be made (section 226 (1) (b) CDPA)

European design rights differ from UK design rights which protects designs of the appearance of the whole of the part of a product, resulting from the features of contours, colour, shape, texture, and /or materials that produce itself, and/or its ornamentation. (Article 3a Council Regulation on Community Design 2002/6/EC).

Any drawings of patterns may be protected as artistic works.

3.0 Trademarks

The three years of protection will in many cases be suitable to protect a design for its lifespan. The definition of a design must have a “new” and “individual character” (Article 4 (1)) and “the appearance of the whole or part of a product resulting from features of, in particular the lines, contours, shape, texture, and/or materials of the product itself, and/or its ornamentation.

A registered design has the benefit of:

Speed - protection starts from the application date;
EU wide protection with the possibility to secure further international protection;
Enforcement - a Pan-European injunction is a cost-effective way to protect a design in a number of different markets.

Protected across all products, and not just the original first use.

In order to register your design:

United Kingdom

Pay a UK fee of £50, or £70 for 10 designs.
Submit up to 7 graphical representations - drawings, CAD models, prints, lines, drawings or photographs.
Apply to register a trademark: https://www.gov.uk/how-to-register-a-trade-mark/apply 

European Union

Or a EU registration fee of EU350 for a first design's registration and publication.
With an additional EU165 payable per items for 2 - 10 designs, and EU80 for 11 or more designs.
Submit up to 7 graphical representations - drawings, CAD models, prints, lines, drawings or photographs
Apply to register a trademark: https://euipo.europa.eu/ohimportal/en 

Worldwide 

To register your trademark on an international basis, it is possible apply to the trademark office of each country you wish to trademark in. 

There is also the option for companies which have secured a trademark in the UK on EU to apply for International Trademark Protection which is applicable to countries which have signed up to The Madrid Protocol.

The Madrid Protocol

The World Intellectual Property Organisation (WIPO), based in Geneva, Switzerland controls The Madrid Protocol.

A caveat is that the applicant must have previously registered the identical trademark in one of the member nations, e.g. The United Kingdom. If an applicant has registered an EU Trademark then the application can be made via the EU Intellectual Property Office.

The Madrid Union currently has 105 members, covering 121 countries, including China. These members represent more than 80% of world trade, with potential for expansion as membership grows.

View a list of: The Madrid Protocol Members

Fees

For example:

1. The basic fee is 653 swiss francs, without reproduction of colour the complementary fee for designation of China as the Contracting Party is 249; leading to a total fee of 902 Swiss francs payable. 

At the current exchange rate this is equitable to £770.12

2. The basic fee is 902 swiss francs, with reproduction of colour the complementary fee for designation of China as the Contracting Party is 249; leading to a total fee of 1152 Swiss francs payable. 

At the current exchange rate this is equitable to £983.56

It may be renewed for further periods of 10 years on payment of the prescribed fees.
The International Bureau sends a reminder to the holder and to their representative (if any) six months before renewal is due.

The international registration may be renewed in respect of all the designated Contracting Parties or in respect of only some of them.

It may not however be renewed in respect of only some of the goods and services recorded in the International Register; if therefore the holder wishes, at the time of renewal, to remove some of the goods and services from the international registration, they must separately request cancellation in respect of those goods and services.


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