The Milan Fashion Week has just started and from today we are glad to host some highlights on the major fashion law trends of this season.
Heritage is one of the major assets a fashion company holds and the ultimate tendency of this Fashion Week is to revamp old creations from the maison’s archives.
Firstly, it should be assessed whether the fashion company can use its own archives. This seems to be a plain question, however, in practice, it could happen that, despite being the owner of the physical copies of sketches and preparatory works of certain garments or motifs, the company does not hold the IP rights over such creations of the past.
For instance, when fashion companies undergo an M&A process and creations have been developed by the designer as an independent contractor, it should be carefully assessed whether the ownership of all the intellectual property rights has been assigned to the company through a specific agreement. On the other hand, creations of employees of the maison are automatically assigned under Italian law to the latter, if such creations have been carried out during working hours and within the purpose of the employment agreement. Thus, before being revamped into new creations, fashion archives shall be the object of a careful due diligence process, involving also the transfer of the right to modify and create derivative works.
Once the clearance process has been carried out, the second question is how to protect creations coming from fashion archives. In this regard, the situation could be divided in different scenarios.
In case the archive creation is currently sold with modifications, it would be necessary to understand the entity of such modifications, to assess whether the revamping of a creation closer to the original archive would be sufficiently new to trigger a protection through a new design, also assessing the relevant prior art and the designs filed by the company itself.
Often this is not the case, therefore, the most suitable protection is through unfair competition, mostly if there is a slavish imitation of the creation’s distinctive features or a parasitic imitation of all the main characteristics of an entire fashion collection or of a whole product, if made as a consequence of a further unfair behaviour (e.g. a previous commercial relationship between the parties or the steal of moulds or preparatory works). However, it should be borne in mind that, in limited cases, fashion creations are so iconic that could be protected also through copyright − which does not request any registration requirement in Italy − provided the concerned creations own a creative and artistic value. The latter requests an high threshold, which is satisfied when the creations are the expression of an artistic period and are exposed in museums and included in art books.
The above also applies in case the archive creation is no longer marketed, but was firstly made available to the public in the same appearance or with substantial modifications. Yet, protection through unfair competition would be available only against competitors who are offering infringing goods whilst the original creation is on the market, therefore time of marketing would be crucial to uphold the claim.
Thirdly, ifthe creation stayed only within the company’s archives, design protection would be the main path to follow, provided the creations satisfies the requirements of novelty (no identical design disclosed to the public earlier in the world) and individual character (it should trigger a different overall impression on the “informed user” from any design disclosed earlier). After testing the commercial success of the product, the decision whether to register a design is available until 1 year from its first disclosure to the public, otherwise, unregistered design protection would apply in EU for three years thereof.
After several years of use, trademark protection might also be available, when the shape of products of a certain fashion house has become so distinctive that they univocally refer to a specific company, without any need to affix the name of the producer or further word signs. This would be particularly beneficial, as it provides perpetual IP rights over the shape of a product, but also quite difficult to obtain and enforce.
Conclusively, fashion maisons shall check if and under which conditions they are entitled to use their fashion archives. Afterwards, they should never underestimate the power of their heritage and assess if IP protection is available and which would be the best tool, based on the evaluation of the following two factors: time of marketing and implemented modifications over the archive creation. It is true that “Fashion goes round in circles”, but you should be catching such circle the right way!