Fashion brands are underpinned by intellectual property (IP). This is as true for global brands as it is for tomorrow’s start-up.
This is certainly recognised by Nike, which puts a great deal of store behind its IP. But sometimes things can go awry, as was shown recently when Nike faced a legal challenge in respect of its registered Community Design for a lateral strap-like component of its Air Huarache Run Ultra trainer (Contested Design).
Nature of the dispute
The challenge was brought by Italian designer Alfredo Langella before the EU Intellectual Property Office (EUIPO). It appears that he needed to knock out the Contested Design in order to create freedom within the market for his designs.
Langella claimed that the Contested Design failed to create a different overall impression when compared to an earlier patent for another Nike sneaker design which dated back to 1992 (US patent No. D330,452) and as such the Contested Design lacked individual character, which is one of the requirements which must be met to achieve protection as a registered design.
Examples of how the prior (left) and Contested Designs (right) were incorporated in Nike’s shoe models are shown below:
Nike’s arguments
Nike argued that the Contested Design created a different overall impression on the informed user to the design disclosed in its earlier Patent. Nike’s arguments were twofold
- The design covered only the lateral strap element, not the entire upper shoe surface. The contested design was claimed to feature an upside down “C”, but the prior design featured an upside down “F”. Nike also claimed there were various additional differences between the contested design and the earlier patent.
- The footwear market is highly saturated so small variations in design should be enough to create a different overall impression.
The decision
The EUIPO rejected Nike’s arguments.
It declared the Contested Design invalid for its lack of individual character. This was because the EUIPO considered that:
- Nike’s shoe designers had significant creative freedom when designing the decorative elements placed on their shoes. This was of key importance as the greater the designer’s freedom in developing the Contested Design, the less likely it is that minor differences between the conflicting designs will be sufficient to produce a different overall impression.
- Given such high degree of freedom, the minor differences between the designs were found to be insufficient to reach a finding that the design created a different overall impression on the informed user.
In reaching its decision the EUIPO also relied upon the previous decisions of the European Court of Justice concerning the role of market trends on design freedom. It was the Court’s view that a general design trend cannot be regarded as a factor that restricts the designer’s freedom, since it is precisely that freedom on the part of the designer that allows them to discover new shapes and new trends or even to innovate in the context of an existing trend.
Implications for the fashion industry
This case highlights the challenges fashion businesses face in securing and maintaining strategic IP portfolios in a competitive and saturated market.
For brands and their designers, it is important to be aware of the legal need for designs to be sufficiently different to the existing prior art in order to achieve protection.
The case also serves as a cautionary tale for businesses which seek to extend their IP protection towards the end of the life of the IP right in question by filing fresh design applications. This decision shows that the EUIPO is clamping down on the practice by seeking to expand the 20-year duration afforded to patent protection, through the registration of a registered designs which can offer protection for a longer period of 25 years.
Top tips for registered design protection
- Securing registered design right protection is relatively fast, easy, and cost effective in the UK and EU, especially when compared to the regimes available in other jurisdictions, such as the US.
- A further benefit of securing UK registered design right protection is that it can last up to 25 years. By contrast, UK unregistered design rights last for 15 years after the design document is first created or an article is made to the design, or 10 years after a product to that design is put on the market (whichever is shorter). An additional unregistered design right relevant to fashion brands concerns Supplementary Unregistered Design Right. However, this right lasts for an even shorter period of 3 years from the point when the design is made public.
- It is easier and cheaper to enforce a registered design rather than rely upon unregistered rights, which extends to cover an action of passing off. Unregistered rights are invariably harder to enforce as they require the rights holder to satisfy certain requirements around subsistence.
- Fashion brands should not only look at registering designs to protect the appearance of their articles, but advice should be sought in respect of the wider IP rights available to ensure the best strategic protection is secured. An option which is often overlooked, typically due to the presumed hurdles to registration, is that of a trade mark for the shape of the product. However, despite the challenges facing shape marks, several have proceeded to registration. These include the packaging of the Manolo Blahnik shoe and the Longchamp Le Pilage bag as well as the Toblerone chocolate bar! Further, a key advantage of obtaining trade mark protection is that it can potentially last indefinitely if renewed every 10 years.
- Businesses should seek strategic legal advice to ensure that their registrations proceed on a strong footing. This includes carefully evaluating:
- whether the new designs are distinct from existing ones; and
- the extent of their freedom based on technical restraints.
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