The fashion IP debate – Protecting your clothing designs

11 Feb 2016

The fashion industry is booming and highly profitable worldwide. How can fashion designers protect their trends from being replicated while reaping the benefits of their ideas and inventions that take months to create, prepare and produce? The answer lies in the law of Intellectual Property and the different forms of protection it has to offer.

There are slight differences in protecting specific articles, depending on the jurisdiction, but the concept remains the same – all in the name of fashion right?

A designer seeking protection in South Africa would apply to have his article registered as a design. South African design law distinguishes between two forms of registered designs. Firstly, a functional design emphasizes and protects the necessary featuresrequired for the design to function in a specific manner. The requirements include the design to be new and not commonplace. Secondly, and oppositely, an aesthetic design emphasizesand protects the actual features that appeal to the eye. The requirements include the design to be new and original. The South African aesthetic design is the equivalent to a design patent in the United States. Design patents provide protection upon establishing the requirements of being new, original, and ornamental. Therefore, design patents and aesthetic designs protect the appearance of an article.

One tends to ask the question – why would anyone protect ‘an article of fashion’ if trends come and go so often? The items we currently see on the runway, television, the rails, social media and celebrity-attire will be an ‘oh-so-vague memory’ next season. Let us consider the following facts and examples before answering this question.

Applicants who have applied for protection of their designs include Jimmy ChooTM, GucciTM, RolexTM, ChanelTM, Christian DiorTM, Marc JacobsTM, PradaTM, Louis VuittonTM, HolsterTM and NikeTM. An applicant should claim the basic design and not the exact item as this would provide broader protection. The item would therefore be protected from more than just replication and would include a larger variety of infringing items.

Jimmy Choo obtained a design patent for the oval feature on the side of its sunglasses which was used in more than one fashion line. Jimmy ChooTM obtained another design patent for an ornamental design for their heels in footwear. The design patent protected the five inch plexi-glass heel which was introduced in 2010 and then re-introduced in 2011. Alexander WangTM obtained a design patent for metal corners on handbags.

The importance of deterring infringers was clearly displayed in the recent infringement case between Sketchers and Steve MaddenTM. Sketchers took action against Steve MaddenTM for infringing seven patents that Sketchers owns in its ‘Go Walk’ collection. The infringing patents referred to the woven elastic upper and molded rubber bottom of the sneakers. Steve Madden had been selling a very similar looking sneaker to wholesale customers and others distribution channels in which SketchersTM’ Go-WalkTM collection was sold. The parties settled out of court by coming to an agreement but the mere existence of this case emphasizes the importance of obtaining protection and thereafter enjoying the benefits thereof.

In South AfricaTM,NikeTM applied to register a number of designs in order to protect the side portions of its shoes. Similarly,HolsterTMapplied to register a number of designs relating to the upper part of its sandals, thereby protecting the shape and/or configuration and/or ornamentation and/or pattern thereof.

In order to answer the above question on whether it is worth applying for protection if trends come and go, one should not overlook the long term advantages that Intellectual Property has to offer. The greatest asset a designer has is its creativity – this, when combined with Intellectual Property rights, offers an economically feasible and effective way to protect their designs. A designer must consider and decide whether a specific article or portion of an article, like the oval shape in Jimmy ChooTM’s sunglasses, serves as a specific design worth protecting, while having a strategy for re-introducing this article at a later stage. Therefore, the main advantages of applying for a design patent or a design is the protection of the designer’s rights, while simultaneously building their brands and reputation. Evidently, protection is obtained in order to safeguard one’s designs, prevent reproductions and deter infringers.

See also: Don’t step on my red-soled shoes! Louboutin’s Red Sole Trademark

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)

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