From mainstream brands to luxury fashion houses, retail businesses are often hoping to be the owners of and associated with the latest ‘iconic’ design; be that an historic ‘classic’ handbag shape, an infamous dress in an instantly-recognised fabric, or a hugely popular new shoe silhouette. But having such an iconic design, which is likely to be copied around the world, means that protecting it, often for as long as possible, becomes even more important.
This is usually where legal intellectual property rights (IPRs) step in, with the majority of fashion businesses being well-versed in using UK and EU design rights (both registered and unregistered) to keep the market clear of copycat products. However, this is not necessarily the extent of the role of IPRs. Design rights sometimes do not last long enough, or – being relatively easy to obtain – are quickly challenged by potential defendants. As a result, courts both in the UK and across Europe are continuing to grapple with what other IPRs might be available to the designer to protect against copying of a mass-produced design, like a handbag. Indeed, a recent decision in the Court of Milan held that the design of Longchamp’s iconic Le Pilage bag was protectable as a 3D shape trade mark but not as a copyright work.
In this article, we look in more detail at the Italian legal decision and consider, more widely, the options available to the owner of an iconic design and how best to approach product imitation in the marketplace.
The law in Italy and the wider EU
When it comes to protecting an iconic fashion accessory, like a handbag, from infringement or copying, the Italian legal system – with EU law as its backbone – provides a number of useful tools:
- Shape trade mark: if the shape of a handbag is distinctive enough to differentiate it from other handbags sold on the market, it is possible to file such shape as a trade mark in Italy (or as an EU registration). In particular, the registration of a shape trade mark provides the registrant with the exclusive right to use said shape trade mark and to prevent third parties from exploiting it without its prior consent. Consequently, any unauthorised use of the registered shape trade mark will constitute a counterfeit.
- Industrial design: industrial design rights protect the appearance of the handbag, which is the combination of shape, colour and material of the design. Designs that present the novelty and individual character requirements may be protected following registration for a period up to 25 years. EU law also grants unregistered design protection up to three years.
- Copyright: a handbag may also be eligible for copyright protection if it presents creative and artistic value. Through copyright, the creator of an intellectual work is granted a series of rights, including moral rights (concerning the protection of the author’s personality) and economic rights (concerning the exploitation of the creative work). Copyright protection starts immediately from the moment the creation has come into existence, without any need for registration.
- Unfair competition: if a company slavishly imitates elements of a competitor’s handbag that are distinctive for the consumer and/or creates confusion with the products and/or activity of its competitor and/or avails directly or indirectly of any other means which do not conform with the principles of correct behaviour in the trade, the injured party may sue in Italy for unfair competition.
Corresponding rights are available across the EU thanks to harmonisation of IP law across Member States; and to a large extent, the UK also offers similar avenues – although, post-Brexit, the level of deviation is likely to increase.
The role of copyright – what Longchamp tells us
Notably, one of the areas where there is the greatest variation between EU countries is the availability of copyright protection for these kinds of designs or works. Traditionally, the threshold to benefit from copyright has been high, and a degree of artistic quality has been required; the rationale being that mass produced/industrial designs are separately protected under design right law (which provides much shorter terms of protection) and to apply copyright to such designs would undermine design rights and mean that a designer would have an unfairly long monopoly right via copyright (the life of the designer plus 70 years).
In 2019, the famous French fashion house Longchamp, owner, among others, of the European word and shape trade mark “Le Pliage”, decided to sue, before the Court of Milan, a company who had been selling handbags that were almost identical to Longchamp’s handbags, in particular, the very popular Le Pliage 1623 Nylon. Specifically, Longchamp claimed the counterfeiting of the shape trade mark, and unfair competition; but it also ran copyright infringement claims.
Recently, the Court ruled in favour of Longchamp – declaring that the handbag models commercialised by the defendant constituted an infringement of the trade marks owned by Longchamp, as well as an act of unfair competition for slavish imitation of Longchamp’s designs. The defendant was ordered to cease its dealings in the items. However, while those aspects of Longchamp’s claim succeeded, the claim of copyright protection was rejected. The Milan Court concluded that the handbag in question lacked the “artistic value” required, and that Longchamp’s burden of proof to establish copyright had not been met.
“Artistic Value”: an unresolved debate
Italian copyright law establishes that an industrial design may be eligible for copyright protection only when said design, in addition to meeting the general creativity requirement, also meets the “artistic value” requirement. In the absence of a specific definition provided by the law of the term “artistic value”, it has been the Court’s role to try and come up with a meaning that could be objectively verifiable by the Court.
Over the years, the Court of Milan has developed a very specific approach for the evaluation of protectability of industrial design through copyright. That approach was upheld in the Longchamp decision. In short, it has been established that industrial designs have artistic value only when they present certain objectively verifiable indicators, such as:
- recognition by cultural and institutional circles of the aesthetic and artistic qualities;
- display in exhibitions and museums;
- publications in specialised magazines;
- awarding of prizes;
- acquisition of a relevant market value that unrelated to its functionality or the fact that the design was created by a well-known artist.
Based on this approach, the Court of Milan refused to grant copyright protection to the iconic Longchamp Le Pliage handbag, since the maison had not provided sufficient elements indicating that the design was characterised by artistic value.
EU law: copyright in designs
The Court of Milan’s decision, however, does not take into account the latest rulings made by the Court of Justice of the European Union (CJEU) on industrial design copyright protection, particularly the “groundbreaking” Cofemel case (C-683/2017). With the Cofemel case, the CJEU established that as long as a design meets the originality requirement, Member States may not exclude copyright protection. Moreover, according to the CJEU, any Member State, such as Italy, setting additional requirements for copyright protection is not conforming to EU law.
However, it should be noted that the interpretative judgments of the CJEU are not directly applicable to all the Member States. These judgments only apply directly to the national court that referred the question to the CJEU in the first place, even if these judgments are relevant case law that national courts could and should take into account. It is because of this, that there are diverging conclusions as between the CJEU in Cofemel, and the Court of Milan in the Longchamp case. For certainty going forward, in Italy at least, the only way to solve the “artistic value” conflict will be through the intervention of the Italian legislator.
UK law: copyright in designs
The position in the post-Brexit UK is different again. In a 2020 decision in the English Courts, it was accepted that a pattern on a mass-produced fabric was capable of constituting a work of “artistic craftsmanship” and therefore protectable by copyright.
Whilst some commentators suggest this might come to be an ‘outlier’ decision, it certainly shows judicial willingness in the UK to lower the threshold for copyright protection in terms of artistic value. It is plausible to imagine that the Longchamp case, if pursued in the UK, would have had a slightly different outcome when it comes to copyright protection.
Conversely, UK courts have proven themselves less willing in the past to support or find protection via shape trade marks. Indeed, the courts of England and Wales have on more than one occasion invalidated shape mark registrations (be that for a traditional taxi, or a many-pronged chocolate bar for example) when these have been asserted in trade mark infringement cases. It is not clear how successful a claimant relying on a shape mark to enforce a handbag design would be, against that background.
Helping designers to protect their iconic designs
As this article shows, it is important that owners of iconic designs take pro-active steps to ensure they have enforceable rights in their most iconic designs; and that they do not necessarily rely solely on unregistered rights (unregistered designs, or copyright) but that they consider other avenues of protection, best suited both to the jurisdictions in play, and the item or good itself. Longchamp’s ability to rely on the 3D shape mark that it had pro-actively registered was pivotal in obtaining a positive outcome against the copycat seller. In other scenarios, in other countries, it could well be a well-evidenced copyright claim that gets results.
At Deloitte Legal, we have teams of expert IP lawyers, in multiple jurisdictions, who can assist you in identifying protectable elements of your iconic designs – be that in the fashion or luxury world, or more mainstream consumer goods. We aim to ensure that you are ready and able to protect your designs from copycat sellers in the real world, online and even in the ‘metaverse’. We can advise on protection strategies incorporating designs, trade marks and copyright, and maximise the value of your IPR via global filing approaches, and enforcement programs.
Another significant problem we see for the owners of iconic designs is how they identify and track down how and where copycat products are being sold given the explosion in e-commerce and online marketplaces. To assist clients in tackling that very problem, we have developed Dupe Killer, an award winning tool that uses image recognition and AI technology to identify copycat products sold online.
If you would like to know more about how we can assist or would like to discuss any of the above, please do reach out to the authors: Emily Nuttall-Wood, Richard Reeve-Young, Rachael Barber (Deloitte Legal UK) or Diego Gerbino (Deloitte Legal Italy).