By Patrick Van Eecke and Julie De Bruyn (Brussels)

The concept of 3D printing no longer needs an introduction. The sky is the limit when it comes to the possibilities 3D printing (often referred to as additive manufacturing) has to offer, both to consumers and businesses. The added value for and influence in the fashion and retail sector is undeniable, and many organizations consider welcoming 3D printing into their business model – whether acting as a 3D print shop, software provider, 3D printer or ink manufacturer, template developer, intermediary offering 3D printed products, product user or rights holder. As with any technological development however, there are legal considerations.


Continue Reading

By John Wilks and Charles Harvey

UK IP legislation is changing.

First, the Enterprise and Regulatory Reform Act 2013 (which received Royal Assent on 25 April 2013), has just been published, and modifies UK copyright law (though not as drastically as some would have liked).

Secondly, the Government announced in the Queen’s Speech that it will be introducing an Intellectual Property Bill to make changes to the law of design and patents.


Continue Reading

Repost from Intellectual Property and Technology News (US) – Q1, 2013

By Darius C. Gambino 

Trade dress protection has existed for more than a hundred years in the United States, but for a long time took a back seat to patents, trademarks and copyrights in the intellectual property pantheon. Then came the US Supreme Court decisions in Two Pesos, Wal-Mart and Traffix Devices, raising the profile of trade dress and altering the public’s perceptions. In the 15 years since then, the number of applications filed with the US Patent and Trademark Office seeking trade dress protection has increased dramatically, and so has litigation over trade dress claims. Because trade dress litigation is, in most cases, significantly cheaper than patent litigation, it may soon become a major competitor to patent litigation as a means of resolving disputes.


Continue Reading

By John Wilks

This year’s conference of Marques, the European brand owners’ association, took place in the European Union’s most troubled and ancient capital, Athens, under the lamentably resonant strapline “Sign of the Times”.  Among the many interesting topics shoe-horned under this banner, one theme seemed to keep resurfacing: the challenge of locating internet infringers.

This is by no means a new problem: IP infringers have for obvious reasons always sought to cover their tracks.  But the advent and continuing expansion of the internet and social media have dramatically increased the scope for anonymous infringements from cyberspace.  The impending arrival of over 1,000 new gTLDs- including many for common generic terms, threatens to further expand the possibility for anonymous infringement.


Continue Reading

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Radiance A. Walters (Washington, DC)

Red-soled stilettos for only $39.99?  French luxury shoe designer Christian Louboutin continues the fight to protect its iconic “Chinese red” soles.  This past August, a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision that questioned the validity of Louboutin’s red-sole trademarkOn October 17, 2011, Louboutin’s lawyers appealed that decision to the U.S. Court of Appeals for the Second Circuit.  Shortly thereafter, premier jeweler Tiffany & Co. filed an amicus brief in support of Louboutin, furthering the fight to protect color as a trademark.  The International Trademark Association (INTA) also filed an amicus brief on November 14, 2011 taking the position that the District Court erred in rejecting the U.S. presumption of validity attendant to Louboutin’s federal trademark registration.  Further, INTA argues that the District Court incorrectly construed the Louboutin’s registration as a broad claim to the color red instead of the narrower claim to “lacquered red sole on footwear,” which is what the registration actually covers.  The Court of Appeals is left with the daunting task of determining whether and when color may function as merely a design element versus a source-identifying trademark.  


Continue Reading

LALM fall cover.bmpThe Autumn Edition of Law à la Mode is now available online: click here to view the e-magazine.

With a Belgian editorial team for this edition, we wanted to give a flavour of an up and coming fashion capital in the heart of Europe. With a mix of cultures from Europe and beyond, Belgium is fast becoming a key location for new design and innovation in fashion. More than just moules, frites and beer, we are fortunate enough to have some of the most renowned fashion academies in Antwerp and Brussels generating internationally known designers such as Dries Van Noten, Ann Demeulemeester, Martin Margiela and Olivier Theyskens. 
As Belgium is also the hub of EU policy development and creation, we share with you our thoughts on the trends around policy making – steering you through the agenda and potential activity (page 4).
Sustainability being the buzz word of the moment in relation to product development, we have an insight from our UK team on the interplay between the sustainability debate and the fashion industry (page 5).
In the wake of the global financial crisis, this season our US team evaluates what a shift in the wider economic market has meant for franchising activities in the US (pages 6-7), and we discuss the impact of the climate on the UK retail market (pages 12-13).
With more of a focus than ever on the ability to effectively market products to consumers, our experts analyse the finer details of production techniques for cosmetic advertising (page 8) and present our new 10 commandments for online retailers originating from the EU (pages 10-11). We also look into the new EU Regulation on textile labelling, which will impact on all designers (page 9), and a recent CJEU judgement focussed on the liability of online market places where users offer infringing goods (page 14). 
In our regular “A word from the Industry’s Mouth” we share an in-depth insight from a leading Chinese brand hoping to broaden its global fashion image (pages 15-16). And last, but not least, our series devoted to fashion and social media in which our US team evaluates the developing role of social media in the fashion retail space (pages 17-18).
If you have any comments please get in touch with the FRD Group via our email: fashion@dlapiper.com
We hope that you enjoy browsing through this season’s collection of articles.

With a Belgian editorial team for this edition, we wanted to give a flavour of an up and coming fashion capital in the heart of Europe. With a mix of cultures from Europe and beyond, Belgium is fast becoming a key location for new design and innovation in fashion. More than just moules, frites and beer, we are fortunate enough to have some of the most renowned fashion academies in Antwerp and Brussels generating internationally known designers such as Dries Van Noten, Ann Demeulemeester, Martin Margiela and Olivier Theyskens. 

As Belgium is also the hub of EU policy development and creation, we share with you our thoughts on the trends around policy making – steering you through the agenda and potential activity (page 4).

Sustainability being the buzz word of the moment in relation to product development, we have an insight from our UK team on the interplay between the sustainability debate and the fashion industry (page 5).


Continue Reading

Fashion designers and companies can seek to protect their jewelry and other accessory designs through copyright, trademark and/or design patent registrations. Copyrights, trademarks, and patents are separate and independent forms of law and protection; therefore, protection can be obtained in one or all of the three ways discussed in more detail below. 

 
First, a trademark registration protects jewelry and other accessory designs (“accessory” meaning handbags, belts, watches, hats, etc.) that are inherently distinctive or have acquired distinctiveness/secondary meaning in the marketplace. In other words, the design must function as a source identifier. For example, Gucci holds a U.S. registration (Reg. No. 3238962) covering wallets, purses, handbags, shoulder bags, clutch bags, tote bags and clothing apparel for its distinctive horse bit design pictured below.
                                                                                                                                   
                                                                                                                        
Trademark protection, of course, also extends to the product’s name and appearance. The registration process typically takes about one year. 
 
Second, a copyright registration protects designs that are sufficiently creative and artistic. Copyrightable works include logos, artwork, or design elements that are stitched, imprinted or embossed onto fabric; and ornamental aspects of jewelry, watches, belts, and handbags. For examples, see Registration Nos. VA000111813 (artwork on handbags), VAu000699898 (belt and buckle collection) and VA0001664539 (Marquis Loop Necklace and Earring Set). Aspects that are not copyrightable include style, shape, cut, pattern or material of clothing articles and basic utilitarian aspects of jewelry, watches, belts, handbags and other accessories. On average, the registration process takes about three months to one year. 
 
Lastly, a design patent registration protects  the overall aesthetic appearance of a design (i.e., the ornamental aspects of jewelry, watches, belts, hats, handbags, rings, etc.). Specifically, the designs must be new and sufficiently different from all prior designs. For example, Louis Vuitton owns a design patent (Patent No. D466,689) for the “ornamental design for a handbag” and Tag Heuer owns a design patent for the “ornamental design for a watch” (Patent No. D413,815). The registration process takes about one to two years.
 
As a side note, utility patents, which protect how an object operates or functions (meaning, its functional/utilitarian features), usually cannot be used to protect jewelry or accessory designs unless the design includes some type of mechanical improvement. 


Continue Reading