The fashion industry is booming and highly profitable worldwide. How can fashion designers protect their trends from being replicated while reaping the benefits of their ideas and inventions that take months to create, prepare and produce? The answer lies in the law of Intellectual Property and the different forms of protection it has to offer.
Well-known designers who have applied for protection of their designs include Jimmy Choo, Gucci, Rolex, Chanel, Christian Dior, Marc Jacobs, Prada, Louis Vuitton, Holster and Nike.
For example, Jimmy Choo obtained a design patent for the oval feature on the side of its sunglasses which was used in more than one fashion line. Jimmy Choo obtained another design patent for an ornamental design for their heels in footwear. The design patent protected the five inch plexi-glass heel which was introduced in 2010 and then re-introduced in 2011. Alexander Wang obtained a design patent for metal corners on handbags.
The importance of deterring infringers was clearly displayed in the recent infringement case between Sketchers and Steve Madden. Sketchers took action against Steve Madden for infringing seven patents that Sketchers owns in its ‘Go Walk’ collection. The infringing patents referred to the woven elastic upper and moulded rubber bottom of the sneakers. Steve Madden had been selling a very similar looking sneaker to wholesale customers and others distribution channels in which Sketchers’ Go-Walk collection was sold. The parties settled out of court by coming to an agreement but the mere existence of this case emphasises the importance of obtaining protection and thereafter enjoying the benefits thereof.
In South Africa, Nike applied to register a number of designs in order to protect the side portions of its shoes. Similarly, Holster applied to register a number of designs relating to the upper part of its sandals, thereby protecting the shape and/or configuration and/or ornamentation and/or pattern thereof.
… the main advantages of applying for a design patent or a design is the protection of the designer’s rights while simultaneously building their brands and reputation…
A designer seeking protection in South Africa would apply to have his article registered as a design. South African design law distinguishes between two forms of registered designs.
Firstly, a functional design emphasises and protects the necessary features required for the design to function in a specific manner. The requirements include the design to be new and not commonplace.
Secondly, and oppositely, an aesthetic design emphasises and protects the actual features that appeal to the eye. The requirements include the design to be new and original. The South African aesthetic design is the equivalent to a design patent in the United States. Design patents provide protection upon establishing the requirements of being new, original, and ornamental. Therefore, design patents and aesthetic designs protect the appearance of an article.
In order to answer the above question on whether it is worth applying for protection if trends come and go, one should not overlook the long term advantages that Intellectual Property has to offer. The greatest asset a designer has is their creativity.
Intellectual Property rights offer an economically feasible and effective way to protect their creative works. A designer must consider and decide whether a specific article or portion of article, like the oval shape in Jimmy Choo sunglasses, serves as a specific design worth protecting while having a strategy in re-introducing this article at a later stage. Therefore, the main advantages of applying for a design patent or a design is the protection of the designer’s rights while simultaneously building their brands and reputation.
Nicole van der Merwe (@Nicole_vdmerwe) is a candidate attorney De Beer Attorneys (@beer_ip).
