Fashion is a fast-moving industry. Designers are constantly working on new ideas for clothes, store fronts, jewellery, handbag and other accessories, putting out thousands of products each season. But in an industry where collections of goods change often, how do businesses protect and defend their intellectual property?
The answer to that question was laid out at this year’s MARQUES annual conference in Paris at a talk called Challenges to Fashion, Luxury and Other Seasonal Industries, organised and moderated by William Lobelson at Cabinet Germain & Maureau and Moïra Truijens at Hoogenraad & Haak advocaten.
Counsel from Swarovski, Furla, Chanel and Maus Frères, which owns Lacoste and Gant, delved into the challenges of clearing designs, mitigating risk, deciding what and when to register and enforcing rights in their fast-moving businesses.
The difficulty, it emerged, comes from that fact that these businesses produce thousands of products that could be used in short- or long-term campaigns, which are made up of various components, could easily be similar to competitor registered products because of fashion trends and that are often created and need to be protected in a short space of time.
“While the dates of shows are some time in advance, the content is very last minute. Sometimes we will know about some key designs only a couple of days before the show,” said Jennifer Pickett, global head of trade mark protection at Chanel.
Clear the runway
Constance Laennec Cuny, senior IP counsel at Maus Frères, explained that clearance is a large part of a fashion firm’s IP strategy. These businesses must consider a vast array of components when it comes to infringement, including models, shop fronts and the designs and model names of fragrances, watches, shoes, bags, clothes, sunglasses and belts – to name a few.
“It is really important that model names are clear and do not infringe any other IP rights,” she said. “It seems as though everything is taken – and we need to balance the risk of choosing model names against the possibility that a similar trade mark is registered.”
Pickett at Chanel added that her company will endeavour to clear everything regardless of its longevity and only after that will the business decide if it wants to adopt it and counsel can begin to work out how to register it and where.
She added that the firm also needs to check individual elements of a particular design. On a handbag, for example, trade marks, copyright, graphics, fonts, shape, patents and product names would all need to be cleared.
But Lynn Christina Schreier, head of consumer goods and business IP at Swarovski, pointed out that a fast-paced schedule might not allow businesses to properly clear IP rights in every instance, which means that it needs to have a means of mitigating risk.
She explained that her firm reduces risk by drafting comprehensive designer contracts, training designers in IP protection and, perhaps most importantly, ensuring that records of independent creation are maintained.
“We can’t clear all products,” she said. “We train our design teams on what IP is and how to avoid infringers and that helps them identify and flag issues.
“We also make sure they store anything that maps out their creative process – such as boards, first drawings and final drawings. That has proven to be extremely helpful in any defensive situation we’ve ever faced because you can show that you have really created something and that it’s not a rip off.”
Fashion trends
Counsel at fashion and luxury businesses must also regularly consider what type of protection is best for a particular product.
“We rely on the whole range of rights and remedies,” said Pickett at Chanel. “In the case of trade marks, we often have global clearance and registration programmes. For designs we have to be a little more selective and what and where we register.”
She added that Chanel takes a selective approach to designs for a number of reasons.
“We have a huge number of designs every year – many of which will be short term. It just would not be possible to register them widely or extensively.
“We also find that the cost of design registration, which by the time we’ve factored in registration or drawings, is something that we need to consider.”
She added that the firm has found that the registration of designs is not as robust a right as trade marks because it is only after having to enforce a design that you know how valuable it is. But equally, registered designs can be more beneficial than copyright or unregistered designs, which the firm uses as well, because enforcement agencies like having certificates to prove rights.
“And when it comes to copyright, we’re not going to get a certificate,” she said.
In terms of where to register protections, Furla IP counsel Arianna Iacomelli explained that her firm’s strategy is quite straight forward.
“We register in the main markets and countries where we are most hit by counterfeits. We always file before disclosing to public because we want to make sure the registration is accepted in offices, such as in China which requires absolute novelty,” she said
“To give you an idea of the timeline – yesterday at Milan Fashion Week, our spring/summer collection was presented to the public. Those products had all been registered on July 4 – three months before.”
Tips for external counsel
The panel then moved onto talking about what they look for and need in external counsel.
Pickett at Chanel said getting drawings prepared is a big area in which she relies on external legal counsel.
“We sometimes find that the biggest challenge for us is the practicalities of getting design drawings prepared and approved for each market that we want to register in in the short time that’s available. We can be very difficult clients in asking for help at our excellent external counsel. They do regularly perform miracles for us in preparing those drawings,” she said.
She added that the business often relies on external counsel for a quick sense check – allowing them to run ideas them to gauge the level of risk they might be bringing on.
“We are looking for practicality and solutions. We rarely need long analysis – and if we do, we will ask for it. We want agility and precise and practical solutions.”
For Cuny at Maus Frères, however, the main benefit of having external counsel is confidentiality.
“We use counsel to keep discussion confidential. We want to keep some things under the radar, such as litigation, and it is important to send a clear message to the adversary that we are serious on the matter and ready to go to court if necessary. That’s why we often use counsel at the very beginning of a matter.
