By Mina Kaway
Despite the perception that the fashion industry is an industry based solely on inspirations and trends, intellectual property law plays a vital role in this competitive and profitable industry by ensuring the exclusivity of fashion designs. Intellectual property can protect fashion in a vast array of forms (from the trademark of the brand to the apparel design, fabric prints, and embellishments) that together shape a fashion brand. In actuality, fashion law’s foundation is in intellectual property law, a field of law that protects and encourages creativity and innovation.
This article will provide an overview of fashion law by comparing key points in the fashion law of the United States and Brazil, two large countries with very creative and lucrative fashion industries, but where the legal systems do not explicitly afford protection to fashion designs, leaving fashion houses and designers to rely on complex legal strategies when seeking to protect their creations.
The Inadequacy of Patent and Copyright Protection
Brazil and the United States have similar patent law systems, and in theory, patent law could be an option for protecting fashion in both countries. However, the high standards of the novelty test and the functionality criteria present in both countries’ patent systems prevent the fashion industry from utilizing patent laws frequently or effectively.
When it comes to copyright law, both Brazil’s and the United States’ legal systems afford copyright protection to drawings, jewelry, photographs, and fabric prints, but not to the appearance of an article of apparel. This is primarily because clothing normally fails the non-functionality test. In the United States, where fashion law is more developed, the Innovative Design Protection Act (IDPA) currently being discussed in the U.S. Congress aims to extend copyright protection to fashion designs. If the U.S. Congress approves the IDPA bill, it will be a significant milestone for fashion law not only in the United States, but worldwide, as it will most certainly be an important paradigm for the development of fashion law in other countries such as Brazil.
Due to uncertainties and a lack of copyright and patent law provisions that specifically protect fashion designs, fashion houses in both the United States and Brazil tend to primarily rely on trademark law for protection. In United States and Brazil, trademarks have a duration of ten years and can be renewed for the same term indefinitely, which makes trademark protection quite attractive to fashion companies. A trademark can be applied to all garment pieces in a collection and can even extend to footwear, accessories, cosmetics, and fragrances (in contrast, seeking protection for each new design in a collection, every season, would be time and cost prohibitive for a fast paced industry like the fashion industry). This explains why, in the fashion industry, the identity of the product (the brand) is often more important than the product itself.
The main difference between Brazilian and American trademark law is in the establishment of a trademark. Whereas in the United States, a trademark is established by use in commerce, regardless of whether it is registered (although registration is highly recommended), in Brazil the Industrial Property Law (IPL) states that the ownership of a mark is acquired by means of a validly granted registration, and proof of use in commerce will only be necessary in the event of a forfeiture request by a third party. Nevertheless, the Brazilian IPL does provide a few exceptions to the registration rule. The right of prior use establishes that any person who in good faith has, at the date of priority or of the application, been using an identical or similar mark for at least six months in Brazil, to distinguish a product that is identical, similar, or akin, is entitled to a preferential right to registration. Brazilian law also grants special protection to well-known marks in their field of activity, independently of whether they have been previously filed or registered in Brazil.
At this point we may wonder: if patent and copyright law are not practical options for protecting fashion, and if trademark law does not protect a garment itself, but rather the identity of the fashion house, how can fashion law actually protect an article of apparel? The answer is: trade dress.
Despite being the most difficult form of intellectual property to secure (due to the non-existence of any kind of “trade dress certificate”), trade dress is the form of intellectual property that is utilized most frequently by fashion lawyers trying to protect fashion articles.
In the United States, to obtain trade dress protection for a piece of apparel, the fashion lawyer must demonstrate that the product in question has secondary meaning – in other words, that consumers undoubtedly associate the product in question with that specific company or designer. This product-company association can be proven through sales numbers, advertising and promotional materials, and budgets. Establishing secondary meaning is usually easier for well-established companies, as opposed to new and independent designers.
In Brazil, the concept of trade dress has historically primarily been utilized to protect store layouts and concepts (i.e. franchising), as well as product packaging. However, an important landmark court decision in 2008 granted for the first time trade dress protection to the designs of a children’s clothing company after the designs were blatantly copied by a competitor. It is relevant to note that Brazilian law does not provide specific provisions regarding trade dress, and does not explicitly require proof of secondary meaning. Nevertheless, the Brazilian IPL unequivocally prohibits a company or a person from using fraudulent means to divert, for its own or for a third party’s benefit, a competitor’s clientele. Accordingly, it is through unfair competition mechanisms, such as the above, that Brazilian fashion lawyers have to seek trade dress protection.
Although it is clear that fashion law is much more developed in the United States (where it is already included in some law school curriculums and where a bill drafted specifically to protect fashion designs is currently being discussed in Congress), Brazilian attorneys and law students are increasingly recognizing the relevance of fashion law, a specialized field that caters to the specific needs of a complex and valuable industry.
Mina Kaway is an intellectual property attorney, specializing in fashion law, and the author of the blog Fashion Law Notes. She has a Bachelors degree in Law (LL.B) from the Santa Catarina Federal University, in Florianópolis, Brazil; a Master degree (M.A.) in International and Intellectual Property Law from the Graduate Institute of International and Development Studies (IHEID), in Geneva, Switzerland, with the dissertation “The International Protection of Fashion.” She is a member of the Innovation, Intellectual Property and Enforcement against Piracy Commission of the Brazilian Bar Association, state of Santa Catarina, and a member of the International Trademark Association (INTA).