Copying has long been viewed as part and parcel of the fashion industry. But as the downturn bites, designers and retailers are increasingly taking action to protect their brands.
Copying in the fashion industry is certainly not a new phenomenon. What is new is the growing trend in litigation against copiers. Whereas in the past designers seemed generally to accept copying and only rarely took action to prevent it, they are now beginning to assert their rights. In a series of well-publicised actions, fashion houses have been suing high street retailers, and high street retailers, supermarkets. The trend is due to changes in the fashion industry and the law.
The traditional wisdom is that in tough times companies will increasingly litigate to protect their rights. But traditional wisdom in the finance industry seems recently to have failed and it may not hold good here either. Whether it does or not, there are good reasons for thinking that copycat fashion litigation will be here to stay.
Although the fashion industry is based on style and innovation, in a sense nothing is ever new. ‘Fashion’ is by definition cyclical and most designs are, to a greater or lesser extent, derivative. It is, therefore, perhaps not surprising that only limited legal protection has been available to fashion designers, or that, for the most part, they have chosen to ignore copiers and focus on next season’s styles.
Consumers have come to expect copying. Regular features such as “Get the catwalk look for less” and “Splurge v Steal” appear in popular fashion magazines. And every year, copies of the designer dresses worn by the stars to the Oscars receive almost as much publicity as the originals. It takes little more than 48 hours for LA designer Allen Schwartz and his ABS company to have copies well underway.
The industry is, however, changing – and with it the attitude of designers. Mass-manufactured, high-quality copies now reach the market very soon after, and sometimes even before, the originals and high street retailers are introducing new ranges every few weeks. Designers can no longer afford to sit back and watch copies of their designs being sold in large quantities.
There are various IP laws potentially relevant to the fashion industry: copyright, passing-off, trademarking and registered and unregistered design. However, it is design law, particularly unregistered designs, that is likely to be most useful.
An EU-wide registered design system was introduced in 2003, providing quick and relatively inexpensive Europe-wide protection. However, it seems that the scope of protection is relatively narrow. In The Procter & Gamble Company v Reckitt Benckiser (UK) Ltd, the Court of Appeal found that Procter & Gamble’s design had not been infringed because, even though the products were similar, the overall impression created by the defendant’s product was different. Designers are likely to conclude from this that in most cases design registration is not worthwhile.
More useful will be the unregistered design system, and in the UK two separate unregistered design rights exist. The European right, lasting for three years, was introduced in 2002; the UK right, lasting for 10 years, has existed since 1988. Although both may be relevant, the European right is generally thought to give more protection. For example, certain matter – including surface decoration – is excluded from protection under the UK right.
Importantly, both sets of rights apply to parts of products as well as to products. This is likely to be particularly relevant to the fashion industry, where the distinctiveness will often be held to reside in a particular feature, such as the clasp on a bag.
Copycat fashion actions have recently been on the increase, with eye-catching headlines such as “Trashed, the £9 M&S bags that look too much like a £495 Jimmy Choo” and “Next sues Asda in copycat fashion design row” reflecting the fact that it is not only the fashion houses that are taking action against retailers. Retailers themselves are taking action against their high street rivals for copying their designs.
After several successful actions, Jimmy Choo recently enforced its rights in a handbag design, relying on both registered and unregistered European design rights, and obtaining summary judgment in the High Court (J Choo v Towerstone (2008)). Also relying on unregistered community designs in a case brought in the High Court of Ireland, Karen Millen succeeded in preventing the sale of an infringing top and two shirts and was awarded an account of profits. Another design company that has been actively asserting its rights is Chloé, which has brought actions against Kookai, Warehouse and Tesco – all resulting in confidential settlements.
Retailers take action
An interesting development is that as well as being on the receiving end of these actions, high street retailers have themselves gone on the attack. In 2004 Monsoon brought an action against Primark for copying a top. The action was settled with Primark paying £23,000 in damages. The following year Monsoon launched another claim against Primark, alleging the copying of six further items of clothing. This claim resulted in a confidential settlement, as did another claim against Primark made by H&M.
Although many of these actions have resulted in confidential settlements, the indications are that designers are finding it is worth taking action. And while some aspects of the relevant design laws are still to be tested, legal protection is now available for fast-moving designs such as fashion and the industry is beginning to take advantage of it. That being so, copycat fashion litigation is likely to continue to hit the headlines. The extent to which it will increase because of the present economic downturn, however, remains to be seen.
Karen Fong is managing partner and Tom Grek a lawyer at Rouse Legal