Infringement in the fashion sector can have a huge negative impact on businesses, with confusion between brands resulting in loss of revenue. Businesses need to watch out for infringers, and take action where necessary. A new case brought by sportswear fashion brand Puma highlights the importance of protecting your designs.
Sportswear giant Puma is suing retailer Forever 21 for profits and damages on the grounds of design infringement (as well as trade dress and copyright infringement) in relation to three of their footwear designs. The designs in question are namely: the Creeper, the Fur Slide and the Bow Slide styles from their Fenty by Rihanna collection (see pictures below).
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In the complaint, Puma alleges that Forever 21 has been: “seeking to trade on the substantial goodwill of Puma, Rihanna, and the Fenty Shoes, [and] has blatantly copied each of these shoes. Indeed, although the Bow Slide was only released this month, [Forever 21] is already offering copies of it on its website.”
Who owns the designs?
As in other design infringement cases, Puma’s success will be fairly dependent on how well it has protected and enforced its designs. So far, Puma have claimed that it created the designs; therefore, as with all designs, unregistered design rights would be automatic upon creation of the designs. Potentially more importantly, Puma own the registered design rights to the Creeper design in the US. It remains unclear whether the other designs have been registered by Puma.
Register rights to protect your designs
Where your design is a key feature of a product, model or drawing, it is generally advisable to register a design right to protect it.
Designers or inventors seeking a national (e.g. UK) application for design protection will need to comply with a number of registration conditions, namely:
- The design must be ‘new’. It will fail this test if an identical design, drawing, pattern or model has previously been made available to the public.
- It must possess ‘individual character’; in other words, it must be possible for a so-called ‘informed user’ to distinguish between the new design and a similar product. If the so-called informed user would consider that the product design creates the same overall impression as a design that has been previously made available to the public, it may not possess sufficient ‘individual character’ to be eligible for protection.
- The design does not have to be aesthetically pleasing in order for it to be registered, but an application will be rejected if it is based solely on how the item functions.