Are Fashion Designers Better Protected in Continental Europe than in the United Kingdom? A Comparative Analysis of the Recent Case Law in France, Italy and the United Kingdom

• DOI: http://doi.org/10.1111/j.1747-1796.2009.00389.x
• Date: 01 May 2010
• Published date: 01 May 2010

Are Fashion Designers Better Protected in

Continental Europe than in the United

Kingdom? A Comparative Analysis of the

Recent Case Law in France, Italy and the

United Kingdom

Estelle Derclaye

Associate Professor and Reader in Intellectual Property Law

This article shows that despite a vast harmonization programme in the field of copyright

and registered design right, the degree of protection of designers in the European Union

still differs greatly. This is owed to the lack of harmonization in copyright and unfair

competition laws. The article shows that not only is there a difference in the

scope of protection between the common law and civil law countries but also between civil

law countries. The countries chosen for the comparison are the United Kingdom, France

and Italy. The article concentrates on the case law of the last 5 years and concludes that

there is a need for further harmonization in the fields of copyright law and unfair compe-

tition law, as well as guidance from the European Court of Justice on the test of infringement

for registered designs as it has been interpreted very differently in at least two member

states.

Keywords designs; copyright; unfair competition; Europe

Since the beginning of the 1990s, the European Union (EU) has undertaken a vast

programme of harmonization in the field of copyright and designs. However, such

harmonization work has not (yet) encompassed all areas of copyright and even

though the directive on the legal protection of designs

1

has harmonized most of the

aspects relating to designs, some of its important concepts have been interpreted

differently by the national courts. Aspects of products can be protected across

Europe, not only by design right and copyright but also by unfair competition. As

most of unfair competition law is still governed by national law,

2

it is readily

apparent that the degree of protection can vary depending on the member state

where protection is sought. This article shows that despite the almost sterling

harmonizing results achieved by the Design Directive, the EU’s piecemeal harmo-

nization in the two legal fields of copyright and unfair competition law has led to

rather important differences between European countries in the scope of protection

for designs of products (and this article does not touch upon the protection of

designs by trademarks, which renders the situation even more complex). As a result,

designers are better protected in the EU’s civil law jurisdictions in comparison with the

United Kingdom. Furthermore, the analysis reveals that some civil law jurisdictions

The Journal of World Intellectual Property (2010) Vol. 13, no. 3, pp. 315–365

doi: 10.1111/j.1747-1796.2009.00389.x

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protect designers better than other civil law jurisdictions. The article focuses mainly

on the protection of designs of fashion articles and accessories (i.e. clothes, patterns,

shoes, hats, fashion shows, belts, bags, jewellery). France and Italy have been

chosen because they are undoubtedly, with the United Kingdom, the European

fashion capitals and an abundant body of case law has already developed in this

field. The article focuses on the recent case law, i.e. that of the last 5 years, as it

coincides roughly with the beginning of the litigation on the new design laws at

national and Community levels (the Design Directive had to be implemented by 28

October 2001 and the Regulation came into force on 6 March 2002).

3

The

discussion concentrates on the important features concerning the degree of protec-

tion designers can receive, namely the subject matter and protection requirements,

rights

4

and infringement. There is virtually no recent case law on the issues of

defences and authorship/ownership. As to duration, owing to European harmoni-

zation, there are no differences between the countries reviewed and the United

Kingdom, although there are some small idiosyncrasies in Italy and the United

Kingdom. When discussing statutory laws on designs, as they are all inspired from

the Design Directive, reference will only be made to provisions that are dissimilar to

their UK equivalents or provisions that left room for interpretation. Nonetheless,

from time to time, examples from the case law will be given to illustrate similar

rules. The article concentrates only on current substantive law. It is, however,

recognized that the present disharmony between member states laws in the field of

design protection dates back a long time and results from different legal cultures

and development. Therefore, a historicolegal analysis of the reasons behind the

current disharmonized state of the law is beyond the scope of this article but would

deserve to be undertaken. The article is divided into three sections: copyright law,

design law and unfair competition law. Each section is further subdivided by

country, examining the legal situation first in France, then in Italy and finally in the

United Kingdom. The last section makes comparisons and draws conclusions. As

the Design Directive is a relatively new and purely European instrument, it is briefly

introduced before the first section for the benefit of the many non-European readers

of this journal.

Preliminaries: The Design Directive in a Nutshell

In the EU, design law is regulated by national laws on copyright and unfair

competition, and also by two Community instruments, the Design Directive and the

Design Regulation. The latter is substantially identical to the former so that a

presentation of the Design Directive is sufficient for the purposes of this article. The

Design Directive aims to protect the ‘‘appearance of the whole or a part of a

product resulting from the features of, in particular, the lines, contours, colours,

shape, texture and/or materials of the product itself and/or its ornamentation’’. This

is how ‘‘design’’ is defined in the directive’s first article. Designs are protected if they

are new and have individual character. For complex products (those that can be

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Are Fashion Designers Better Protected in Europe than in the UK?Estelle Derclaye

assembled and disassembled), each component part must have these two character-

istics and, in addition, must be visible during the normal use of the product (article

3). Novelty means that the design must differ in material details from designs that

have been made available to the public before the date of filing of the application for

registration or, if priority is claimed, the date of priority (article 4). Paragraphs 1

and 2 of article 5, respectively, state that:

1. A design shall be considered to have individual character if the

overall impression it produces on the informed user differs from the

overall impression produced on such a user by any design which has

been made available to the public before the date of filing of

the application for registration or, if priority is claimed, the date

of priority. 2. In assessing individual character, the degree of freedom

of the designer in developing the design shall be taken into

consideration.

Article 6 defines what is meant by disclosure for the purposes of assessing

novelty and individual character. Article 7 excludes certain designs from protection,

those solely dictated by their technical function and those of interconnections (but

those designs of interconnections that allow multiple assembly or connection of

mutually interchangeable products within a modular system can obtain protection).

Designs contrary to morality and public policy are also excluded from protection

(article 8).

The scope of protection, which, in other words, is the test for infringement,

includes ‘‘any design which does not produce on the informed user a different

overall impression’’ (article 9). Designs are initially protected for 5 years from the

date of filing, a term that can be renewed up to a maximum of 25 years (article 10).

Article 11 lists the grounds of refusal or invalidity of designs, among which one

finds, for instance, that the design is not a design, that it is not new, that it breaches

a copyright or a trade mark right, etc. Finally, articles 12 and 13 deal with rights

and exceptions. The right holder has the exclusive right to use the design and to

prevent any third party not having his consent from using it. This includes but is not

limited to ‘‘the making, offering, putting on the market, importing, exporting or

using of a product in which the design is incorporated or to which it is applied, or

stocking such a product for those purposes’’. In this respect, article 15 provides for

the application of the exhaustion of rights. The last two substantial provisions

concern the relationship between registered design and other laws. Article 16 allows

the cumulation of national registered design rights with unregistered design

rights (UDRs), trade marks or other distinctive signs, patents and utility models,

typefaces, civil liability or unfair competition, both at national and Community

level where relevant. Article 17 forces member states to cumulate copyright

protection with design protection if the conditions of the two intellectual

property rights are both met, something some member states’ laws did not allow

previously.

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Are Fashion Designers Better Protected in Europe than in the UK? Estelle Derclaye