ialci's presentation at Tranoi NYC in September 2015, on IP rights in the fashion industry - a comparative view US/EU

1. IP in the Fashion
Industry: USA and EU
Amy B. Goldsmith, Esq.
Tarter Krinsky & Drogin LLP
New York, New York
agoldsmith@tarterkrinsky.com
Philippe Laurent
Marx Van Ranst Vermeersch & Partners
Brussels, Belgium
Philippe.laurent@mvvp.be
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2. USA: What is a Trademark?
• A distinctive word or symbol, i.e. logo, is used by an individual or business to indicate
to consumers that the products or services bearing the trademark originate from a
unique source, and to distinguish the entity’s products or services from those of other
entities.
• To be legally protectable, a mark needs to be:
o distinctive
o used in commerce
• Mark can be inherently distinctive or acquire distinctiveness through extensive use in
commerce.
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3. USA: Choosing a Trademark
• Fanciful, arbitrary and suggestive marks are inherently distinctive.
• Descriptive marks require acquisition of secondary meaning.
• Generic marks are not protectable.
• Fanciful – Aeropostale
• Arbitrary – Tiffany, Gucci, Armani, Louis Vuitton
• Suggestive – Blue-ray
• Descriptive – American Apparel
• Generic – Aspirin
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4. USA: From Search to Registration
• Why register – nationwide rights, third parties presumed to have notice of the
registered mark, presumption of secondary meaning.
• Unregistered common law marks – rights exist only in places where secondary
meaning exists, actual notice required, in a dispute, secondary meaning needs to be
proved and will likely be challenged.
• What is required to file an application – the mark (if a design, the final version of the
design) and description of the goods and services.
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5. Uniquely American: Use in Commerce Before
Registration
• Use must be in commerce, i.e. in connection with the actual offering of goods and services to
others, before registration. NO USE, NO REGISTRATION (unless you have a foreign registration
upon which you rely, but use in the USA is required to renew your US registration and to enforce
the trademark in the USA)
• The use cannot not be an internal use. Common law use provides rights without registration.
• What constitutes use - mark must be used on or in connection with the offering of goods or
services. For trademarks, advertising is not enough. A domain name in and of itself is not a
trademark/service mark use.
• Examples of trademark use – on packaging, instruction manuals, product, sales displays,
websites where product can be purchased (in the US)
• Examples of service mark use – advertising, signs, websites, menus, forms used in provision of
services
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6. Europe: What is a Trademark?
• any sign distinguishing the goods or services of one undertaking from those of other
undertakings
• word, personal name, design, letters, numerals, shape of goods, packaging,…
• inherent or acquired distinctiveness
• conditions & validity requirements
• REGISTRATION (national TM/ Community TM)
• 10 year renewable
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7. Europe: What is acquired distinctiveness?
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8. USA: Copyrights
• “Pictorial, graphic, and sculptural works” include two-dimensional and three-
dimensional works of fine, graphic, and applied art, photographs, prints and art
reproductions, maps, globes, charts, diagrams, models, and technical drawings,
including architectural plans.
• author’s life plus an additional 70 years
• Joint authors: 70 years from death of last surviving author
• Company (work for hire): 95 years from first publication or 120 years from creation,
whichever is shorter
• Essential to File: within 3 months from the first publication date to ensure ability to
request attorney’s fees and statutory damages; otherwise, infringer’s profits or
copyright owner’s actual damages (not discretionary: winner often receives some
monetary compensation).
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9. USA: Copyrights: what isn’t useful?
• Prints and patterns, but not silhouettes, are protectable
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10. Europe: Copyright
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• Protects original works (not the underlying ideas)
• No registration / free / automatic protection
• (non-mandatory) filing systems for evidence purposes
• Protects original authors (natural persons)
( ! mandatory clauses in assignment contracts !)
• Duration = 70 years after death of the -last- author

11. Europe: Copyright
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12. Europe: Copyright
originality can lie in
the combination of
(otherwise banal)
characteristics
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13. USA: Design patents in the world of fashion
• “New, original and ornamental design for an article of manufacture.”( 35 U.S.C.A. §
171)
• Visual ornamental characteristics embodied in, or applied to, an article of manufacture.
• Visual – manifested in appearance
• Ornamental – configuration or shape, surface ornamentation applied to an article
• Article of manufacture – a product
• Distinguish your products in a recognizable way
• Prevent copying
• Design patents: alternative when copyright is not available
• Term: 15 years from the issue date
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14. Bottega Veneta “THE Veneta”
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15. Jimmy Choo “WITH A TWIST”
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16. NIKE
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17. Europe: Design/Models
• “appearance of the whole or a part of a product resulting from the features of the lines,
contours, colours, shape, texture and/or materials of the product itself and/or its
ornamentation”.
• Must be new & have an individual character
• Unregistered Community Design (3 y.)
• Registered Community Design (max 5*5y.)
• // national designs
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18. Europe: Design/Models
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