Designs - what are they and how do they protect the fashion industry?
The fashion industry has obtained enormous benefits from the protection offered by design law in the European Union. But to say that designs law is complicated would be a big understatement. This post introduces registered and unregistered designs and outlines the ways in which they can be used to protect the fashion industry.
EU level design protection
The European Union offers two types of design protection which apply across the whole of the EU, namely registered and unregistered Community designs. Both have a very broad scope of protection.
If you register a design, you get a much longer period of protection - up to 25 years compared to 3 years for unregistered designs - and the scope of protection is much clearer as you have to identify the precise design you want to register.
What is the design?
Essentially the shape or appearance of any part of a product (including the entire item) has the potential to be protected as a Community design. This could be the outline or a product (e.g. a necklace), the shape of a particular product feature (such as a bag handle or belt) or the texture of a fabric (e.g. a new smart fabric or textile weave).
In order to be protected, the design must be:
new - not a direct copy of an earlier design; and
have individual character - have a different "overall impression" on the informed user from earlier designs.
The informed user is someone who is familiar with the design in practice. This is usually someone with experience of the designs in a professional or business context.
In order to register a design, you have to make a decision about what are likely to be the most commercially valuable features of your design and make sure you register them as soon as possible after you share them publicly - and definitely within one year of the date you make them available to the public (i.e. within the one year "grace period"). If you apply to register outside the grace period, the design won't be worth the digital paper it is written on as it can be easily invalidated in the future.
Identifying the best design to register is something of a dark art and one of many occasions in life where it is sensible to get some expert advice. You need to strike a balance between something which is sufficiently distinctive to withstand an attack on its validity but not so distinctive that a competitor can easily design around it.
Unregistered Community designs - the fashion industry's secret weapon
The advantage of unregistered Community designs is that you have not had to stake your claim in advance so you can identify the features of your product in which you are claiming unregistered design protection after seeing the infringing product. Consequently, unregistered designs are usually much more successful in the courts. Although unregistered designs only last for three years from publication - for the fashion industry, this is often long enough.
In addition to Community designs, most EU countries offer national registered designs. So you could get a French registered design a German registered design and a UK registered design.
In practice, these registries have become less popular since the Community registered design was introduced because why would you want a design that is only protected in a single country when for a little bit more money (and an easier registration process) you can get one which covers the whole of the European Union).
The exception to this is the UK designs registry (the UK intellectual property office). Since Brexit was announced, there has been a flurry of design applications, often in tandem with applications to register Community registered designs. After Brexit, this will be much more common as it will be necessary to register in both the UK and at the EU level in order to secure European protection.
The UK has stated that it will respect existing rights and will introduce an identical equivalent right to the Community unregistered design which will apply if a design is first published in the UK. The MAJOR takeaway from this is that designers and fashion businesses will have to be careful to simultaneously publish in both the UK and EU after Brexit in order to secure unregistered design protection in both countries.
The UK also has a completely separate form of unregistered design right which will be covered in a separate post.
NB Community designs do not cover countries such as Switzerland, Liechtenstein, Norway and Iceland which are part of the European continent but not part of the EU. Separate protection needs to be secured in these countries if they are a concern.