PROTECTING DESIGNS – WHAT’S THE POINT?

To paraphrase The Kinks, in matters of the cloth the dedicated follower of fashion is often as fickle as can be. This sentiment evokes the fast-paced and eternally transitional nature of the multibillion dollar fashion industry, in which it may be easy to overlook or downplay the relevance and necessity of effective, long-term protection for new designs. However, despite the ‘here today, gone tomorrow’ nature of many fashion trends, it is often worth the extra effort to register designs and a number of recent cases bring home the benefits of registration.

THE LAW IN BRIEF

In general, design rights protect the shape and configuration of all or part of an original design. In the UK, any design may benefit from one or more of four different types of design right:

  • UK unregistered design right (UKUDR)
  • UK registered design right (UKRD)
  • European Community unregistered design right (CUDR)
  • European Community registered design right (RCD).

Click here to view table

RECENT DEVELOPMENTS

2014 was a busy year for both the courts and the legislature in the field of design. One key development in the UK was the coming into force of the Intellectual Property Act 2014 (IPA), which had a number of implications for UK design rights. (Note thatthe IPA only applies to UK design rights, not CUDR or RCD.)

The main changes are as follows:

  • Subject to alternative written terms, the designer will own the design rights to a commissioned design. This could be applicable, for example, when commissioning a celebrity to design a line of clothing. This rule does not apply to designs created by employees.
  • A new criminal offence of deliberately copying UKRD. The offence carries sentences of a fine, a prison sentence of up to 10 years, or both.
  • A new defence of private, non-commercial use of UKUDR.
  • Account of profits can now be awarded against innocent infringers of UKRD.

TOP TIPS

Several high-profile cases involving design rights were decided over the past year and can provide top tips to ensure trouble-free designing in 2015:

  • Keep detailed records of your creative process (John Kaldor Fabricmaker UK Limited v Lee Ann Fashions Limited [2014])

This case concerned CUDR. John Kaldor (JK) had shown a fabric print to Lee Ann (LA). LA subsequently supplied clothing to Marks & Spencer, using a similar print, and JK sued for infringement of its CUDR. At trial, the well-maintained sketchbooks and notes of LA’s designer showed that she had independently created the design, so LA was found not to have copied JK’s design.

  • Practice point: even where the designs are similar and the defendant had access to the original design, copying will not exist if the defendant can show sufficient independent creation. The judge did state that copying may have been found if LA’s design brief to its designer had been so narrow as to ensure that she created a substantial copy of the original design, regardless of her own independent creative process.  

This is exactly what happened in Kohler Mira Ltd v Bristan Group Ltd [2013], and the court found copying and infringement of UKUDRs.

  • Practice point: had JK registered its design, it would probably have won the case as it would merely have been necessary to show that the LA design did not create a different overall impression from the JK design, rather than actual copying. 
  • Combination of individually unoriginal features may collectively be used to produce an original design (Karen MillenFashions Ltd v Dunnes Stores and another [2014])

This case primarily concerned CUDRs, with passing reference to RCD in the judgment too. Karen Millen (KM) successfully sued Dunnes in the Irish courts for infringement of KM’s CUDRs in a striped shirt and a black knit top. Dunnes had admitted copying these but appealed to the Court of Justice of the European Union (CJEU) with the argument that KM did not have valid CUDRs as the garments contained several design features from a number of earlier designs and so did not have individual character. 

The CJEU refused Dunnes’ appeal, stating that the overall impression of the garments on the informed user must be based on the combination of all of the features in the design, not a selection of isolated features taken individually. The CJEU also confirmed that there is a presumption of validity of CUDR and RCD so it is not for the designer to prove that his design has individual character. Instead, the designer need only indicate the features that he believes to provide individual character.

  • Practice point: this is a welcome judgment for designers and may boost the probability of design rights being valid. It would be a good idea to encourage designers to try to identify any elements of their designs that provide individual character, so as to be well-prepared in the event of needing to rely on community design rights. 
  • Shading in registered designs may unintentionally limit the scope of protection for registered design rights (Magmatic Ltd v PMS International Ltd [2014])

This case, which concerns RCDs, has recently been referred to the UK Supreme Court so remains ongoing. The Court of Appeal, however, decided that PMS’s cheaper alternative to Magmatic’s (M) popular Trunki animal-themed ride-on suitcases did not infringe M’s design rights.

The rationale for this was that the drawing in the RCD for Trunki contains greyscale shading that shows a contrast in colour between various parts of the suitcase, whereas the relevant parts of the PMS suitcase were the same colour throughout and there was no contrast in colour. Although this only formed part of the court’s finding that the PMS suitcase created a different overall impression from the Trunki suitcase, had M’s drawings omitted the shading indicating contrasts in colour on different parts of the suitcase, this point would not have arisen.

  • Practice point: designers should be careful when using shading as, if it can be interpreted as designating contrasts in colours, this is likely to limit the scope of protection available. This case is ongoing, however, and the situation may change.

REMEDIES

Regardless of which type of design is infringed in the UK, the remedies are largely the same and include the following:

  • An injunction preventing future sale of infringing articles
  • Destruction of any unsold stock
  • Payment of damages or account of profits
  • Requirement to provide details of suppliers
  • Publication of the judgment at the defendant’s expense; and
  • A contribution towards legal costs.

Enforcement of your designs can therefore be a very profitable exercise, as the damages can be large and cost contributions can prevent you from being out of pocket. The new Intellectual Property Enterprise Court (IPEC) has also made it much quicker, easier and cheaper for rights’ holders to enforce and protect their designs.