Intellectual property rights in fashion

From the haute couture on display at Paris Fashion Week, to the print-on-demand, direct to consumer sales of a meme-based T-shirt, fashion represents a complex and varied industry. Component subindustries such as design, manufacture, and sale of garments each represent their own portions of a global market that produces over a trillion dollars of revenue per year. For consumers, fashion may represent a powerful and personal outward expression of individual identity. These expressions can reflect the personality and mood of the wearer represented through colour and silhouette, or status and wealth by displaying limited edition or high-end brands, or political and religious views, or fandom, or any other semiotic signifier.

The trickle-down effect of fashion often results in a translation of more luxury concepts into wearable pieces that are affordable for consumers. For example, a colour or silhouette shape that is popular on the runway one season may influence more consumer-friendly brands to introduce that same colour or shape into the form of more accessible garments. However, beyond trend-setting influence, the ability to directly copy and reproduce a garment has only accelerated with the advance of technology, and a knock-off garment that exactly or substantially replicates an existing garment may have a variety of adverse impacts on the original’s impact and uniqueness, in addition to the original designer and manufacturer’s projection of profit for a good sold at the original’s price.

As a startup breaking into the fashion industry at any level, and for mainstay brands, understanding and protecting your intellectual property is critical to continued success. This article will review and explore the various forms of intellectual property relevant to the fashion industry (industrial designs, trademarks, patents, copyright, and trade secrets), and how best to protect the intellectual property rights which will be most important to your business.

Industrial design

An industrial design (or what is referred to in some jurisdictions as a “design patent”) refers to the aesthetic form and feature of an item. Therefore, industrial design registration is about protecting the unique appearance of a product rather than what it’s made of or how it works. In other words, industrial design may protect your product’s shape, configuration, pattern, or ornamentation. Similar to a patent, in order to qualify for registration, your design must be novel or original, it cannot have been done before.

In Canada, there is no inherent protection for unregistered industrial designs. Instead, design owners must secure rights related to their original industrial design by registering the design with the Canadian Intellectual Property Office (CIPO). Under the Industrial Design Act, the author of the design is offered exclusive rights up to 15 years for 3D features such as shape and configuration, as well as 2D features such as pattern and ornament.

There are several reasons why you may choose to register your industrial design. The primary reason is also the most obvious: as a sword. Proper registration of an industrial design can help prevent or stop your competitors from creating a direct copy of your unique design because the right confers an exclusive right over the industrial design. The second reason is to provide a shield. Registration of an industrial design will also assist in establishing your legal claim to ownership and provide you with the right to prevent others from making, importing, selling or renting articles incorporating the registered design or a substantially similar design. Finally, and equally as important, registration can also create value for your company as part of a broader IP portfolio as the protected registered industrial designs are more valuable than designs that do not carry such rights of exclusivity. This can be helpful when seeking investors or when eventually selling the business, not only because it demonstrates the seriousness of the business, but it creates a definable asset that can be licensed, sold, or used as collateral for a loan and importantly to exclude others from being able to do so without the opportunity of a revenue stream through licensing rights from you.

Notably, the value of exclusivity that follows registration of any IP flows through each of the forms of IP described in this article.

Trademarks

A trademark is a combination of letters, words, phrases, sounds, symbols, or designs that identify and distinguish one company’s goods or services from another. Trademarks can help to establish a brand, build recognition and represent the reputation of the holder. Trademarks can take many forms and companies often register names, logos and slogans. Nike, for example, has registered a large number of trademarks, including for its name, the “Swoosh” logo and the ‎slogan “Just Do It”‎.

The primary driver behind the creation of the trademark regime was a form of consumer protection: signifying and certifying that everything with the same mark comes from the same source. Certain trademarks may also be appellations or quality assurance marks, used as a certification mark to show that certain products meet a defined standard. For example, the Woolmark design on clothing labels certifies that the products are made with 100% pure new wool. The company holding the mark acts as a quality assurance body to ensure that companies to whom the mark is licensed to meet and uphold its certification requirements.

While you are able to gain some degree of rights over your brand based on use and recognition through what is called a common law trademark, those rights are relatively limited. They are limited in scope to the area in which you may actually be recognized, and establishing that you actually hold those rights in order to prevent someone else from using a similar brand is not without difficulty.

Registering a trademark is a much more effective way to protect the brand that you are building. A registered trademark can prevent and deter others from using the same name or logo as your brand, or one that is confusingly similar to your brand. Trademarks are jurisdictionally effective, so registering a trademark in Canada gives the holder an exclusive right throughout Canada to use it for ten years, following which the registration may be renewed. Each international filing jurisdiction sets out its own specified period of time under which the holder has an exclusive right to use, and each country you wish to protect your trademark in requires its own registration. However, many countries are aligned by treaty under the Madrid Protocol, allowing you to make multiple registrations through a centralized process, which can be much more effective than making individual registrations, depending on your IP strategy.

When building a brand, it is very important to consider conducting a comprehensive trademark search in key jurisdictions to determine whether a proposed branding strategy infringes on a third party’s existing trademark. To prevent wasting valuable resources, we generally advise companies to consider undertaking this sort of review early on in the process of brand development. While it may be frustrating to have to change a fledgling brand, it can be far more negatively impactful to be forced to do this later when the holder of an existing trademark exerts their rights and forces you to not only change your brand, but possibly also destroy branded products and turn over profits.

Copyright

Copyright is the exclusive legal right to produce, reproduce, publish, or perform an original ‎literary or artistic work. A copyright does not need to be registered in order to receive protection ‎under the Copyright Act, as the protection is granted automatically upon the creation of the work. ‎However, practically speaking, registration of a copyright creates a rebuttable presumption of ‎ownership, and can be useful to have if you end up in a dispute over ownership. Copyright ‎protection lasts for the lifetime of the author plus 50 years (as of December 30, 2022 this has ‎been extended to 70 years for any new works not already in the public domain).‎

While haute couture and high-concept fashion could be argued to be artistic works, copyright ‎generally does not apply to the physical design of fashion or clothing. There is a specific ‎exception in the Copyright Act that disallows a claim for infringement of copyright in the case of ‎a “useful article” that is intended to be produced more than 50 times, which includes clothing. ‎The reason for this exclusion under the Copyright Act is because these types of items are ‎protected instead under the Industrial Design Act, as mentioned above. This also applies to ‎sewing patterns for garments. A sewing pattern cannot be protected by copyright, however, if ‎specific graphics or text instructions accompany your pattern, you may copyright those, as ‎further detailed below.‎

There are still many applications of copyright that are useful for fashion designers and retailers, ‎such as with designed graphics. For example, the Tommy Hilfiger flag and the Tommy Hilfiger ‎crest are examples of copyrighted designs. In the early 2000s, Tommy Hilfiger brought a suit ‎alleging copyright infringement of their crest against another clothing retailer that was selling ‎shirts and pajama sets with a crest that was substantially similar to the Tommy Hilfiger crest. The ‎suit was successful with regards to the pajama sets, but unsuccessful regarding the shirts. This ‎was because the shirts were produced prior to the registration of the copyright; therefore, the ‎defendant clothing company could not have knowledge that the similar crests were infringing on ‎Tommy Hilfiger’s copyright when the shirts were produced and sold.‎

Another example of a copyrighted design is patterns printed on fabric. As the Copyright Act ‎gives the holder of the copyright exclusive rights to produce items, the copyright holder of a ‎printed pattern would have exclusive rights to use the pattern. Some examples of copyright in ‎patterns are J.L. de Ball and Louis Vuitton. J.L. de Ball, a corporation that produced patterned ‎velvet coats, has copyrighted a number of designs used to decorate velvet fabric. Louis Vuitton ‎owns the copyrighted monogram designs that are used to decorate luggage and handbags.‎

Yet more application of copyright comes outside of the fashion products themselves. ‎Advertisements, websites and commercials all have layers and layers of copyright inherent in ‎their artistic creation.‎

Both the examples of Tommy Hilfiger and Louis Vuitton demonstrate the potential overlap in ‎intellectual property rights. In both cases, trademarked logos were used to create copyrightable ‎designs and patterned fabrics, providing multiple layers of protection against potential ‎infringement. In fact, the best protections often come from relying on a combination of ‎intellectual property regimes to protect various different aspects of your product and process. ‎

Patents

A patent may be granted for an invention, such as a particular product or process, which is both new and useful, and may include new and useful improvements on existing inventions. Once an invention has been patented, the inventor (or other rights-holder) is granted the right to prevent others from using or selling the invention for 20 years. This exclusive grant is made in exchange for you (the inventor) publishing the details of your invention. Qualifying as something "new and useful" is a key aspect of a patentable invention, but is not necessarily a particularly high bar.

Patents are routinely granted for various new inventions within the fashion industry. For example, patents have been issued for the invention of technical fabrics, fabrics made from renewable sources or in renewable ways, as well as the process by which certain fabrics are woven. Patents have also been issued for items ranging from waterproof gloves and a new way to construct a sleeve, to insect repellent fabric and a process for stripping colour from dyed wool.

Much like trademarks, patents are only enforceable in the jurisdictions in which they are awarded, so planning around key jurisdictions and treaty-based linking of patent applications is key. Patents can also take a significant amount of time to be registered and are therefore neither the fastest nor the least expensive way to protect intellectual property rights. However, if you have a truly new and inventive product or process, a patent is the best way to ensure your exclusive right to use your invention.

As patents are publicly available and necessarily include details of the construction of the product or the manufacturing process, you will need to consider whether a patent offers you the best protection, or whether your IP is better protected as a trade secret.

Trade secrets

A trade secret is any piece of business information that has commercial value based on its secrecy. There is no formal method for registering trade secrets, and the protection lasts as long as the secret is kept a secret or otherwise properly protected through enforceable confidentiality obligations, though certain jurisdictions do have laws pertaining specifically to trade secrets.

Many fashion and luxury goods companies may overlook trade secret protection as it is widely perceived as an IP right specific to technology-driven businesses. However, trade secrets are also commonly present in the fashion industry in everything from protecting methods used in manufacturing of products, to lists of key suppliers and/or buyers, to software tools for fashion design, or to logistic management. For instance, Nike utilizes a variety of trade secrets in their shoe developing and manufacturing process, while Zara has a trade secret information technology system used to shorten their production cycle from identifying a new trend to delivering the finished product.

There is no formal method of registering your trade secrets as that would defeat the whole point of it being a secret. The only real way to protect a trade secret is to keep it secret. Make sure you take appropriate precautions such as only disclosing the secret to trusted personnel and outside partners who have a specific need to know, and when you do, requiring a legally enforceable non-disclosure agreement (NDA) and managing access through secure channels.

Conclusion

Intellectual property is omnipresent in the fashion industry, and goes beyond merely ensuring that a particular monogram is not being copied by another retailer. Brand protection is instead one of the integral aspects of the business and using the various intellectual property protection regimes to do so is part of the every day process. Each element of IP protection may come to bear in a different manner for different brands. A brand that manufactures and sells rock climbing gear, for example, may seek industrial design protection for its unique seaming methods, trademarks for its name and logo, copyright protection for its ads and graphic appliques on the clothing, patent protection for its unique, technical fabrics, and trade secret protection around its development and production methods. It may then use IP protection to license valuable IP to third parties, a concept which will be discussed in part two of this series, or to prevent competitors from using its IP.

Your intellectual property strategy is a key part of your business plan. It is important to seek professional legal advice in starting your fashion-related company to ensure you have the right protections in place.