Tips By The Experts

Tips By The Experts

 
License your Fashion

A “License” is permission by one party to another to use its intellectual property rights, subject to various limitations. The elements of such a License are defined by various elements including the product, exclusivity, territorial scope and royalties. The various trades have to consider and negotiate other elements specific to the industry. For example: “who owns the design already made when the license terminates?” The parties will most likely want to address also quality control, advertising, and promotion minimums as well as to reserve the right to inspect and mechanisms of approval.

Secting the proper terms inevitably assures the operational future health of this enterprise.

Licensing enables a small startup designer access to a Licensor’s reputation, technology and resources that would not be available otherwise. Licensing also enables startups to expand distribution expertise and customer base by minimizing inherent risks.

Conversely, an already advanced Licensor may expand its core business into alternative product lines that it may not necessarily be equipped to address. Licensing may be the most efficient avenue to accomplish that goal.

 

Finally, Trademark Licensing in the U.S. is distinct compared to its European brethren. An American License Agreement will generally govern the use of all or some of the goods/services for which the mark is registered, subject to satisfying the quality control requirement in order to maintain the source indicator function. In Europe, however, there is no equivalent legal requirement in connection with trade mark licensing. The compliance with the terms of license is the only obligation to licensee.

by Iva Rukelj, LL.M.

The 'Art' of Copying

foto001In fashion world, with the weak intellectual property rights protection and the short changing cycles lives the indefinite potential and need of copying—the eternal human distinctive feature. As such, the perception of original—high-end designer and copy—fast fashion, is becoming blurred. On the other side of the spectrum lies the novice startup designer. The balancing between painful path of the creative process and complicated and generally expensive means of protection makes the life of a newcomer more challenging than ever. As a result, there is no fashion without turning the last season collection into the obsolete.

Under the influence of such specifics and developments in the fashion industry, protection mechanisms need not only to be developed, but to evolve fittingly to enhance their abilities to protect the distinctive works of human mind. However, the recent attempts to widen the copyright protection in fashion industry in the U.S. have been unsuccessful.

There are several mechanisms of IP protection in fashion apparel, accessories and the textiles industry including trademarks, trade dress, copyright, design patent, utilities patents and trade secrets. Choosing the most efficient one given the limited time and resources makes understanding them a necessity.

  • Trademark – A trademark is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. There are three flavors of protection: common law, state and federal trademark, last two requiring registration with the trademark office.
  • Trade dress – The look of form of a product (packaging) recognized by the general public as the source of the product. There is no filing, so it makes it is more difficult to obtain than trademark protection. It is usually used as a last resort, because one asserting to obtain trade dress must prove all the elements.
  • Copyright – Copyright law does not address useful items, it is exclusive to the original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Although clothing may be considered as a piece of art, it is generally understood as an useful thing. Very limited portions of an item may be copyrightable (designs, photos, ad text, fabric, jewelry , some furniture, some product packaging, websites, quilts, designs or images on the surface of shoes, handbags, software, some accessories, drawings.)
  • Patent There are two layers of protection through patent:
    • Design Patent – Protects the ornamental appearance of an item or item component. It is the most useful and common to companies with stable, long-lasting styles (glasses, footwear, handbags, tabletop items, perfume bottles, and jewelry.)
    • Utility Patent – Protects innovations in product functionality, scientific or technical inventions (e.g. new fabrics.)

However, the short cycle of the fashion industry does not justify rather expensive patent process and it is often hard to reach a required standard of novelty and originality.

  • Trade secret – Confidential business information kept private and guarded within a company (any secret formula, pattern, device, program, method, process, technique, or compilation of information that gives a business an advantage over competition.)

 

by Iva Rukelj, LL.M.

Industrial Design vs. Design Patent

 

Europe

US

Protection Mechanism

Industrial Design

Design Patent

What is protected?

Appearance (lines, contours, colors, shape, texture, materials and/or its ornamentation)

Ornamental appearance  (“picture patents”)

Novelty Requirement

No

Yes

Other Requirements

Is it design? Is it contrary to public policy or morality?

New Nonobvious Ornamental, not solely functional

Term of Protection

Five years from the filling date; may be renewed for periods of five years each, up to the total term of twenty five years

Fourteen years from issue date

Scope of Protection

The making, offering, marketing, importing, exporting or use of a product in which the design is incorporated or to which it is applied, or holding stock of such a product for those purposes

The making, using, offering to sell, selling or importing the patented invention

Jurisdiction

In Europe the jurisdiction is twofold: Territoriala single application- each country—State Intellectual Property Office (SIPO)an uniform international application under the Hague Agreement—World Intellectual Property Organization (WIPO)   for the contracting states
EUan application for a Registered Community Design (RCD; 2003) with the competent EU Office: Office for Harmonisation in the Internal Market (OHIM)* unregistered Community designs, which protection is time  (3y) and content  (copying) limited; same conditions as RCD

by Iva Rukelj, LL.M.