Protecting Fashion with Design Rights in the United States and European Union

• Date: 01 March 2024
• Author: Davide F. Schiavetti

Published in Landslide, Volume 16, Number 3, 2024. © 2024 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. Protecting Fashion with Design Rights in the United States and European Union I ntellectual property (IP) rights are ubiquitous, encountered in all walks of life and industry. In the fashion industry, design rights are an often overlooked source of protection for creativity. This article provides a comparison of the U.S. design patent process with the EU’s registered Community design system, highlighting differences and analyzing implications to the fashion industry. U.S. Design Patents A design patent is available to “[w]hoever invents any new , original and ornamental design for an article of manufacture .” 1 The invention must also overcome the nonobvious inquiry laid out in 35 U.S.C. § 103. In sum, there are five substantive requirements for U.S. design patents: the design must be (1) new, (2) original, (3) ornamental, (4) nonobvious, and (5) for an article of manufacture. If these elements can be met, there are certain procedures that applicants must also follow to apply for a design patent with the U.S. Patent and Trademark Office (USPTO). Obtaining a design patent gives its owner the right to exclude others from making, using, selling, or importing the article embodying the patented design for 15 years. 2 Substantive Requirements New. The design must be new, commonly described as “novel.” The standard for novelty is the “average observer test.” 3 In the eyes of an average observer, the overall appearance of the design must be different from the appearance of any other single prior design. 4 For example, a design sufficiently new to obtain design patent protection would be a watch face devoid of all hour indices except for a dot at the twelve o’clock position. Original. Originality bars patents for designs derived from any source or person other than the named inventors. Any simulation of known objects, persons, or naturally occurring forms will not pass. Nevertheless, a design can be original even if it is the result of a “reassembling or regrouping of familiar forms and decorations.” 5 Davide F. Schiavetti Published in Landslide, Volume 16, Number 3, 2024. © 2024 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. 17 Ornamental. This requirement is a murky, hotly debated topic. Early 20th century courts held that “ornamentality” requires the design to be aesthetically pleasing, attractive, the product of an artistic conception, “embellished or adorned, or distinguished by its grace or symmetry of form.” 6 Since that time, U.S. jurisprudence has broadened that definition: today, “[t]o qualify for protection, a design must [simply] present an aesthetically pleasing appearance that is not dictated by function alone.” 7 The design cannot be essential to the use of the article. Perhaps the best way to put it is this: A blue teapot does not have to be blue to brew, boil, or pour; but it looks nice. To continue the watch analogy, the patent could not claim the function of the dot at the twelve o’clock position, but only the dot itself and its appeal to the eyes. Nonobvious. The relevant standard for nonobviousness is whether a designer of ordinary skill of the articles involved would have found the design to be obvious at the time of invention. 8 This may involve two routes of inquiry: (1) pointing to “something in existence, the design characteristics of which are basically the same as the claimed design,” will render a design obvious; 9 or (2) if no comparable article existed at the time of invention, showing that the claimed design is an obvious combination of previously known elements, which requires a finding of “some teaching or suggestion whereby it would have been obvious to a designer of ordinary skill to make the particular selection and combination,” will render a design obvious. 10 For example, when comparing two loafers and even setting aside any similarities as to the overall shape and design, a pair of shoes made of calf hair as opposed to knitted material is not considered obvious. Secondary considerations, such as commercial success, may rebut obviousness. However, “evidence of commercial success must clearly establish that the commercial success is attributable to the design, and not to some other factor, such as a better recognized brand name or improved function.” 11 An invention’s commercial success may demonstrate significant qualitative differences over the prior art. If the claimed invention had been obvious to one of ordinary skill in the art, there is a presumption that someone else would have brought it to the market sooner. 12 To rely on commercial success as evidence of nonobviousness, the patent owner must show a connection (often referred to as a nexus) between the commercial success and the novel aspects of the claimed invention. 13 Article of manufacture. An article of manufacture is a tangible object made by humans. The design must be inherent in, or applied to, a...