Victor Caddy, director at IP specialist Wynne-Jones, advises a fashion designer/illustrator from outside the UK on how to protect their IP in the EEA or EU.
The licensing sector is all about IP and brand extensions, many of which are creative and warrant protection.
Every business has some IP (defined as unique creations of the mind) and some of that can be protected legally by copyright, registering a trade mark or a design right, as well as by filing a patent.
However, the whole area of IP can be a confusing minefield for business leaders because it’s presided over by a niche legal profession, is a specialised business area and, by its very nature, intangible.
IP specialist Wynne-Jones has been listening to many industry queries over the past year or so – and in partnership with LicensingSource.net – it is now launching The IP Surgery, to help answer those burning questions. We want your questions, so we can provide the answers.
Today’s question: How can a fashion designer and illustrator from outside of the UK establish and protect their IP to be licensed in the EEA and EU?
Victor says: “Once upon a time, there was a beautiful girl named Cinderella. Cinderella wanted to go the ball… I don’t know if you believe in fairy godmothers, but you should!
In the world of intellectual property, design registration is the Cinderella right. Patents and trade marks get all the attention (like ugly sisters, you may say, but I couldn’t possibly comment). Designs get left at home. This was because, for a long time, designs were plain and unappreciated. But, with one wave of a wand, the registered design system in the EU and the UK has been transformed, glass slippers and all. In fact, it is almost perfect for fashion designers and illustrators.
Here’s why.
Firstly, design registration is quick. Apply to register a design today and it can be registered tomorrow – or at least by the day after. With fashion in particular, this is important. If you have a new seasonal collection, you want protection now, not when you are already on to the next collection.
Secondly, it is cost effective. Unusually among intellectual property, EU and UK design applications can cover multiple designs. So, you can protect a whole collection of clothes or drawings in one application.
Thirdly, in the EU and the UK, there is a 12-month grace period, so, if you forgot to register a design before you publicise it, you can still protect it.
In general, fashion designs and drawings may qualify automatically for protection by copyright and/or by unregistered design right in the EU and the UK. However, these are rights to prevent copying only (the clue is in the name – ‘copy right’). Design registration is a monopoly right, which means that someone infringes your design registration if they have a design that is too similar to it, regardless of whether they copied your design or not. So design registration is better.
Also, with design registration, you get a design number and a registration certificate. This means you have a peg on which to hang a licence (or a ball gown).
In so many ways, design registration is a good fit.
But be careful not to trip.
The European Economic Area (EEA) includes the (now) 27 member states of the EU, plus Iceland, Liechtenstein and Norway. It does not include either the UK (any more) or Switzerland. If protection is needed in Iceland, Liechtenstein and Norway besides the EU and the UK, it will be necessary to file for design registration in those countries. There is an international treaty that can help with simplifying the process of design registration in Iceland and Norway, but Liechtenstein needs a separate application.
And this leads on to one final, but vital point (no, no… Don’t worry about the clock striking midnight).
For design registrations in different territories to all be valid, they must run from the same date. The more territories, the more difficult this is to coordinate, but it can be done. If you don’t register your designs and you choose instead to rely on unregistered design right, you need to make sure you disclose your designs on the same day in every territory of importance to you and you also may not qualify for protection in all the countries in question.
So, we keep coming back to design registration. If the slipper fits…”
If you would like to ask the team at Wynne-Jones a question to appear in The IP Surgery, please email Samantha Loveday by clicking on this link.
