Globalisation has made it possible for a fashion product to be seen in every corner of the world shortly after it is made. For designers and manufacturers, that speed has brought a serious risk with it: the unauthorised copying and imitation of original designs by persons who hold no rights in them has become one of the most widespread problems in the sector.
The principal way of reducing that risk is to secure legal protection for the product created without delay. Although fashion products are for the most part protected within the framework of the Industrial Property Act No. 6769, depending on the qualities they possess they may also be assessed under the Act on Intellectual and Artistic Works No. 5846.
The unauthorised reproduction of original ideas and designs within a short space of time exposes not only the designer and the manufacturing company but everyone who has laboured to bring the product into being to considerable loss. Below we examine in turn the two protective regimes, the conditions for registration and the remedies available in the event of infringement.
Protection Afforded by Copyright Law
Since a designer’s work possessing aesthetic value may, by its nature, qualify as an intellectual and artistic work, it benefits from the copyright protection founded on the Act on Intellectual and Artistic Works No. 5846.
The most striking feature of this regime is that protection is not conditional on any registration. The author’s right arises of its own accord at the moment the work is created. The function of a recordal or registration is not to create the right but to ease proof in the event of a dispute. Protection lasts for as long as the author is alive and continues for 70 years after his or her death.
Protection Under Industrial Property Legislation
A fashion design that does not possess aesthetic value may fall within one of the institutions set out in the Industrial Property Act No. 6769 — the trade mark, the patent or the utility model. Where the conditions required by the legislation are met, the design may be secured within the framework of that Act by way of registration.
For the purposes of fashion law, it is apt to place the main weight on trade mark and design protection. It should be added that typefaces may also be made the subject of design registration. Indeed, a significant proportion of the brands known as fast fashion register their typefaces as well and thereby widen the boundaries of their protection.
The terms of protection differ between the two institutions. Running from the delivery of the registration certificate to the right holder, a trade mark registration affords 10 years of protection, and that term is subject to no limit as to the number of renewals. In design registration, by contrast, protection lasts 5 years and, with extensions, may run to a maximum of 25 years.
There is no obstacle to more than one right being registered in respect of the same product. It should also be emphasised that the power conferred on the right holder by registration creates, in practice, a form of monopoly position.
Conditions Required for Trade Mark and Design Registration
The registrability of an industrial right depends on two basic criteria being met: the design must be new worldwide and must possess distinctive character. The monopoly power granted to the right holder arises only where the presence of these two elements is established.
At this point it is important to draw a proper distinction between the concepts of "design" and "trade mark". The most decisive difference between the two institutions is the group through whose eyes distinctiveness is measured: for designs the criterion taken as the basis is the informed user, whereas for trade marks it is the average consumer. Because the public taken as the basis of the assessment differs, the conclusions as to whether a likelihood of confusion has arisen and whether an infringement has occurred also differ.
The settled case law of the Court of Cassation on similarity and likelihood of confusion in trade marks is to the same effect. According to those decisions, infringement of a trade mark arises where a registered trade mark or one for which registration has been applied gives rise to a likelihood of confusion among the public, where that likelihood also extends to the possibility of association with the trade mark, or where any sign is used that carries the possibility of a link being made between the sign and the registered trade mark.
In the legal literature, two conditions are required to coexist for a likelihood of confusion to arise. The first is that the trade mark for which registration is sought is identical or similar to the earlier registered mark. The second is that both trade marks are used for the same goods and services. The Court of Cassation requires the lower courts, in making that assessment, to have regard to the respondent’s pleas that no similarity exists, raised from the outset of the proceedings; and further to reach the legal conclusion by taking into account, on the basis of the nature of the goods in dispute, the capacity of the purchasing public to distinguish and to make associations.
Within that framework, when similarity and likelihood of confusion are examined, the features that the trade marks share and those in which they differ must be considered comparatively; and in that assessment it is not the differences but the shared elements that must be regarded as decisive. The greater the number of shared elements, the more the distinctiveness of the trade mark is weakened.
Sanctions Applicable in the Event of Infringement
The sanctions that come into play in fashion law vary according to whether the design benefits from protection under the FSEK or under the SMK. Depending on the regime relied upon, both the criminal consequences and the other legal instruments of protection differ.
Where protection rests on the FSEK, actions may be brought in private law for the removal of the infringement, for the prevention of the infringement, for damages and for the surrender of the profits obtained. For the detail of these actions, our study entitled "Actions That May Be Brought by an Author Under the FSEK" may be consulted.
Where a design registered as an industrial design is concerned — its protection, the lapse, transfer or infringement of the right — Arts. 55–81 of the SMK find their field of application. Moreover, in almost every act amounting to infringement of a trade mark right or of a design right the prohibition on competition is breached as a matter of course; for that reason the provisions on unfair competition may also come into play in such cases.
An author whose right has been infringed may also, according to the type and gravity of the act, secure the application of various criminal sanctions against those who committed the infringement. Indeed, the offences in this field are governed by Articles 71 and 72 of the FSEK, and investigation and prosecution of those offences are dependent on a complaint. For detailed information on the criminal sanctions applicable under the FSEK, our study entitled "Criminal Actions That May Be Brought Against Infringements of Rights in Intellectual and Artistic Works" may be consulted.
Independent Legal Assessment
In the fashion sector, legal protection must be structured at the collection preparation stage and not after the product has been placed on the market. Since the criterion of novelty may become contestable once the design has been disclosed to the public, the timetable for registration applications must be planned together with the commercial calendar. Furthermore, the fact that copyright, trade mark and design protection may be used together in respect of a single product makes a layered protection strategy possible.
The headings that come to the fore in the process of securing legal protection for a fashion collection are the following:
- Recording, by means of documents, the date on which the design was first disclosed to the public and the course of the design process
- Testing the criteria of novelty and distinctiveness by means of a preliminary search before filing
- Planning trade mark, design and typeface registrations so that they complement one another
- Regulating expressly, in manufacturing, subcontract and collaboration agreements, to whom the intellectual rights belong
- Assessing the copyright, industrial property and unfair competition routes together in the event of imitation
Independent Legal provides advisory services and conducts litigation across the whole of the process for businesses operating in the fashion and design sector, from the structuring of a registration strategy to the conduct of infringement actions.