Democratisation of fashion
Fashion trademark piracy
Protection for fashion trademarks
Comment
In Peru, the fashion industry grows every day. Proof of this is the success of great designers who showcase their creations not only nationally but also internationally in important fashion events (eg, Lima Fashion Week and Peru Moda) in which all kinds of designs are exposed. Such fashion events create a space for the development of the creativity of both national designers and international designers seeking a suitable market to commercialise their trademarks.
It is inevitable that big trademarks are mentioned when talking about fashion. This is due to the significant role that they play in identifying brands when a product is commercialised. Such trademarks, which have previously seemed inaccessible, are becoming increasingly within reach of the public consumer. This is due to the so-called "fashion democratisation" through which the clothing and accessories of high-cost designers or world-famous trademarks are becoming more accessible to the general public because such trademarks or designers create alliances with multi-brand or department stores. These collections are called "capsule collections" and are limited edition, which generates high demand.
The democratisation of fashion has brought benefits for all of the parties involved – namely:
- the store, due to the large number of people who purchase the product;
- the trademark or the designer, which benefits from the marketing or the advertising carried out by the store and also by the customers who attend the stores; and
- the consumer, who can buy a product from a designer or a high-cost trademark at a reasonable price.
It is perhaps because of the importance of trademarks in commercialising a fashion product or the desire to bring big trademarks to the public consumer, in addition to a general lack of creativity or originality, which generates examples of plagiarism or trademark piracy. For example, Nike Innovate's well-known "swoosh" design (Figure 1) is one of the most important sportswear trademarks.
Figure 1: Nike swoosh design
However, Nike's design has been recognised in various National Institute for the Defence of Free Competition and the Protection of Intellectual Property (INDECOPI) resolutions, in which oppositions and nullities have been filed against trademarks that have unscrupulously sought to copy the characteristic design (Figures 2–4).
Figure 2: File 550432-2013
Figure 3: File 559657-2014
Figure 4: File 495090- 2012
Another case in which there is a clear example of piracy that is common in the Peruvian market is the imitation of the trademark of a polo player, which belongs to the company The Polo Lauren Company LP (Figure 5).
Figure 5: Ralph Lauren polo trademark
Various trademarks have sought to reproduce this design (Figures 6–8).
Figure 6: File 564371-2014
Figure 7: File 538693-2013
Figure 8: File 594519-2014
Protection for fashion trademarks
Although there is a constant risk of entrepreneurs taking ownership of designs or trademarks of designers, many do not protect their designs, either because they are unaware of the forms of protection offered by the Peruvian legal system or because they cannot access such protection due to costs or other factors. Thus, after reviewing the key concepts and analysing the main obstacles in the world of fashion, this article provides a clear outline of the forms of protection that designers may use to protect their creations.
Copyright
In Peru, there is a protection regime called "cumulo total". As far as copyright is concerned, it is pertinent to refer to Legislative Decree 822 (the Copyright Law), which states that:
- "Copyright is independent and compatible with any industrial property rights that may subsist in the work" (article 4(a)); and
- applied works of art are protected (article 5(f)).
An "applied work of art" is defined as "an artistic creation with utilitarian functions or incorporated in a useful article, whether a work of hand-crafted or produced on an industrial scale" (article 2(20) of the Copyright Law).
The INDECOPI Intellectual Property Chamber has previously ruled on a case relating to models of sweaters, making it clear that fashion designs could obtain protection by copyright. In Resolution 063-2001/TPI-INDECOPI, the following was held about a complaint of infringement of the author's rights:
Applied works of art include both dimensional forms (such as drawings) and three-dimensional ones (such as models). Considering the characteristics of the applied works of art, it is possible that said works can also be protected as industrial designs, to the extent that they comply with the requirements demanded by the law of the matter. . . . National legislation does not contain a rule that prohibits providing this double protection to applied works of art, so it can be understood that it is possible to invoke it. However, this does not mean that any work of applied art also enjoys protection as an industrial design or vice versa, since it may be the case that an applied work of art has been made accessible to the public, losing therefore the novelty required by the industrial property law to protect an industrial design.
Industrial designs
The importance of protecting fashion designs is such that the INDECOPI Directorate of Copyright has created a Guide to Copyright in the Fashion Industry (INDECOPI, 2013), which aims to provide more information according to the needs of each sector in the industry. This guide establishes that fashion creations or designs are not only protected in terms of copyright, but also as industrial designs (eg, the design of a certain fabric pattern presenting a monogram) to the extent that the work is a two- or three-dimensional creation that can be incorporated into fashion designs and produced on an industrial scale. For example, the pattern of the GUCCI trademark will be protected, but not the model or design of the fashion item itself.
Distinctive signs
Another form of protection applicable to fashion is protection as a distinctive sign, either through a trademark or logo. What is sought here is to protect the trademark or logo registered before the INDECOPI Direction of Distinctive Signs. However, protection is not provided with respect to the garments to which such trademark or logo is applied.
Trademark protection is the most recurrent medium for designers, as indicated by the World Intellectual Property Organisation (WIPO):
instead of protecting designs, most fashion designers prefer to rely on their trademarks, applied directly to their products and which are usually protected by the legislation relating to trademarks. Trademarks make it easy for designers to detect imitations and help consumers identify their favorite items.
Taking into account the preference of designers regarding the protection of their creations as distinctive signs, it is appropriate to focus on the existing forms of trademark protection.
Registration of fashion trademarks
According to article 134 of Andean Community Decision 486, corresponding to the Common Regime on Industrial Property in Peru and the other countries of the Andean Community, there are several objects that can be registered as trademarks – companies and designers can request the registration of word or figurative trademarks. Applications can be regarding:
- the designers' name or a pseudonym;
- logotypes that are included in labels or images which will be placed on fashion products; or
- a fashion line or collection.
Registration of fashion designs as trademarks
Two- or three-dimensional trademarks are a clear example of this type of design. To access the registration of a two- or three-dimensional trademark, the design that is intended to be registered must correspond to a specific business origin. The absence of this necessary attribute has been grounds for denials regarding some trademarks that were intended to be registered in Classes 18 and 25, where the following was argued:
It is not endowed with the necessary attributes to be the means by which the products that intend to distinguish are identified and differentiated from the others that are offered in the market, since such figure will not be perceived by the consumer as a distinctive sign of a certain business origin, while it does not have any peculiar characteristic whose sole presence allows the consumer to determine the business origin of the products that intends to distinguish.(1)
Another classic example of this type of record corresponds to the designs and soles of footwear registered as a trademark in Class 25, which present a special design that makes them different from each other.
One of the most emblematic cases in this regard corresponds to the ADIDAS trademark. It was intended to record the characteristic design of three lines on shirts and trousers in Class 25. This record was subsequently granted by Resolution 2054 -2015/TPI-INDECOPI and Resolution 2055-2015/TPI-INDECOPI since, according to the evidence presented, it was determined that the public consumer could associate the aforementioned design with the applicant company and differentiate the product from others that were commercialised in the market. It was also determined that the products in question had acquired distinctiveness due to their constant use in the market.
Registration of other products as trademarks
Various fashion products are registered under different classes – for example:
- soaps and perfume products are found in Class 3;
- articles of jewellery, costume jewellery and precious stones are found in Class 14;
- imitation leather, leather and animal skins are found in Class 18; and
- clothing, footwear and headgear are found in Class 25.
However, as stipulated in article 151 of Decision 486:
classes of the International Classification . . . will not determine the similarity or dissimilarity of the products or services expressly indicated.
Taking this into account, INDECOPI uses linking criteria when issuing a resolution – for example:
- Resolution 1140-2014/TPI-INDECOPI, concerning the trademark shown in Figure 9 against the trademarks EBEL, L'EBEL and others, where a link was made with respect to products in Classes 25 and 14; and
- Resolution 114-2009/CSD-INDECOPI, concerning the trademark shown in Figure 10 against the trademark BILLABONG and others, where the link was made with respect to products in Classes 25 and 18
Figure 9: subject trademark of Resolution 1140-2014
Figure 10: subject trademark of Resolution 114-2009
For this reason, trademark applicants must consider whether the trademark that they wish to register for their product line is registered and whether it has been used for a class other than Class 25 and with which a connection or link can be appreciated as described above.
The fashion industry has evolved considerably in Peru and has positioned itself as one of the most important industries nationally. Fashion is synonymous of creativity, creation and innovation. It is essential that those who are involved in the fashion industry recognise the law and, more specifically, the IP laws, as these provide the ideal means to protect their creations. Such protection can bring multiple benefits and prevent further cases of piracy or plagiarism.
For further information on this topic please contact Evelyn Dueñas Morales at OMC Abogados & Consultores by telephone (+51 1 628 1238) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.
Endnotes