Crefovi's founding partner and ialci president, Annabelle Gauberti, tought the MBA and master students of HEC's luxury certificate the relationship between luxury and intellectual property. Check it out there!

1. HEC Luxury Certificate – 26 May 2014
Intellectual property & the
fight against counterfeiting
in the luxury sector

2. 2
How and why is intellectual property (IP) the foundation of a
sound luxury business?
Intellectual property & the fight against counterfeiting in the luxury sector

3. 3
What are intellectual property (IP) & IP rights?
Intellectual property & the fight against counterfeiting in the luxury sector
Author
Creativity/Innovation
Society

4. 4
Which IP rights are available to luxury houses?
PATENT
CONFIDENTIAL INFORMATION
TRADE MARKS
PASSING OFF
COPYRIGHT
MORAL RIGHTS
UNREGISTERED DESIGN RIGHTS
REGISTERED DESIGN
Intellectual property & the fight against counterfeiting in the luxury sector

5. 5
What are the remedies for IP
infringement?
Intellectual property & the fight against counterfeiting in the luxury sector
REMEDIES
FINAL
REMEDIES
PECUNIAR
Y
ACCOUNT
OF
PROFITS
DAMAGES
NON
PECUNIAR
Y
DECLARATIO
N
DELIVERY
UP
COURT ORDER
REVEAL
RELEVANT INFO
INJUNCTIO
N
INTERIM
REMEDIES
INTERIM
INJUNCTION
S
EX PARTE
ORDERS
SEARCH ORDER
FREEZING
INJUNCTION
WITHOUT OR ON
NOTICE
PROCEEDINGS
CRIMINAL
SANCTIONS
THREATS

6. 6
How do these IP rights get used in the luxury goods sector?
Intellectual property & the fight against counterfeiting in the luxury sector

7. 7
Patent law
Katerina Plew v Victoria’s Secret
PATENT
INVENTIO
N
NOVELTY
INVENTIV
E STEP
INDUSTRIAL
APPLICATION
Intellectual property & the fight against counterfeiting in the luxury sector

8. 8
Trade mark law
• Conventional trade marks
• Non-conventional trade marks
TRADEMAR
K
CLEAR
PRECIS
E
SELF-
CONTAI
NED
EASILY
ACCESSIBL
E &
INTELLIGIB
LE
DURABLE
OBJECTI
VE
Intellectual property & the fight against counterfeiting in the luxury sector
• Christian Louboutin v Zara
• Christian Louboutin v Yves
Saint Laurent

9. 9
Trade mark law
Unfair
advantage?
Detrimental?
Yes!
Intellectual property & the fight against counterfeiting in the luxury sector

10. 10
Passing off
• Goodwill
• Misrepresentation
• Damage
Intellectual property & the fight against counterfeiting in the luxury sector
Rihanna v. Topshop

11. 11
Copyright law
• The idea/expression dichotomy
• Originality
• Fixation & tangibility
Intellectual property & the fight against counterfeiting in the luxury sector
COPYRIGHT
LDMA/PRIMAR
Y WORKS
LITERARY
WORKS
DRAMATIC
WORKS
MUSICAL
WORKS
ARTISTIC
WORKS
ENTREPRENEU
RIAL/SECONDA
RY/DERIVATIVE
WORKS
SOUND
RECORDINGS
FILMS
BROADCASTS
TYPOGRAPHY
RIGHT
• Thierry Berthelot v Van Cleef &
Arpels
• Ownership of copyright & the
employee author

12. 12
Design law
• European directive on the legal
protection of designs (1998)
• European regulation on
community designs (2002)
• North American Innovative
Design Protection Act (IDPA)
Intellectual property & the fight against counterfeiting in the luxury sector
REGISTERED
DESIGN
ELEMENTS
•DESIGN
•NOVELTY
•INDIVIDUAL
CHARACTER
•EXCEPTIONS TO
REGISTRATION
INFRINGEMENT
PROTECTION
OF SPARE
PARTS
SECONDARY
DESIGN
RIGHT
REQUIREMENTS
• A DESIGN
• QUALIFICATION OF THE
DESIGN
• ORIGINALITY
• DESIGN MUST BE
RECORDED
• DESIGN MUST NOT BE
EXCLUDED
OWNERSHIP
INFRINGEMENT
• PRIMARY
• SECONDARY
• EXCEPTIONS
REMEDIES

13. 13
Position statement
Is it preferable for luxury goods companies to protect their IP
rights from the inception of their newly created products &
services?
Should luxury businesses allocate substantial resources for
the registration of appropriate trade marks, patents, designs,
copyrights, etc.?
Intellectual property & the fight against counterfeiting in the luxury sector

14. 14
Case study: Gucci v Guess
Intellectual property & the fight against counterfeiting in the luxury sector

15. 15
The dark side of success: counterfeiting, the fight against it,
regulating e-commerce & consumer protection
Intellectual property & the fight against counterfeiting in the luxury sector

16. 16
Counterfeiting: a problem?
What?
Where?
By whom?
Intellectual property & the fight against counterfeiting in the luxury sector

17. 17
Does counterfeiting cause any damage?
Intellectual property & the fight against counterfeiting in the luxury sector

18. 18
How does a luxury house keep products from being
counterfeited?
Intellectual property & the fight against counterfeiting in the luxury sector

19. 19
How to address the sale of counterfeits online?
Best
practices for
Marketplace
Sites
Best
practices for
Shopping
Sites
Best
practices for
Search Sites
Best practices for
Payment Service
Providers (PSPs)
Best practices for
Trademark Owners
Intellectual property & the fight against counterfeiting in the luxury sector

20. 20
Position statement
Do you agree with Patrizio Bertelli, Prada CEO and Miuccia
Prada's husband, that counterfeiting organisations are good
for business, because they create jobs and also give
additional fame and appeal to companies which goods are
counterfeited?
Intellectual property & the fight against counterfeiting in the luxury sector

21. 21
Conclusion
IntIntellectual property & the fight against counterfeiting in the luxury sector

22. 22
IP law & luxury course @ HEC Luxury Certificate:
Intellectual property & the fight against counterfeiting in
the luxury industry
Annabelle Gauberti
Founding partner
annabelle.gauberti@crefovi.com
@Crefovi on Twitter
Intellectual property & the fight against counterfeiting in the luxury sector