FASHION LAW Top 10 Tipsto Protect Your Footwear Designs
Hannah Steggles, Intellectual Property Associate at Howes Percival LLP how footwear manufacturers can protect their designs from infringement.
verybody knows that footwear design is big business but in today's market, protecting designs is becoming more and more important. As financial pressures increase there is a temptation to cut down on design costs and to purchase cheap shoes from the Far East without thinking about where that design came from in the first place. You may have spent thousands of pounds on creating your designs, so why should you tolerate unauthorised reproductions?
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Here I share my top ten tips for protecting your footwear designs from copycats who can cause significant damage to your business:
1. Are your designs capable of protection? This means checking that your designs are "new" and have "individual
character". If these boxes are ticked, the appearance of your designs will be protected throughout Europe by the Community Design Regulations.
2. Know your market: go shoe shopping! Make sure you are fully familiar with the designs which are currently on the market so that you can ensure that your design is different and has individual character when compared with existing designs.
3. Record every step Make sure that you date and retain all of your design drawings (including
all drafts and rough notes) so that you can show the providence of your design. Leading brands understand the importance of this and record their designs as a matter of course.
4. Inspiration not imitation. Whilst it is entirely natural to take inspiration from successful designs, that is as far as you should go. The safest way to ensure that you do not stray into the realms of imitation is to ensure that you do not have samples or images of other designs lying around during the design process and review your new design against those you took inspiration from.
5. Check your contracts are tightly laced up Make sure that the contracts you have in place with any third parties who might have access to your designs (such as manufacturing companies and sales agents) specify that you own all rights in those designs and make sure they know that copying is not permitted.
6. Know your designers It might sound simple but it is important to know exactly who is creating
your designs. The general rule is that the designer owns the design, not the person who commissioned the work. However, if the designer is an employee then, provided the design is created in the course of their employment, the employer will be the first owner of the design.
7. Watch your dates Provided it meets the requirements for protection, a Community design
attracts automatic protection for 3 years from the date it is first made available to the public in the European Community (provided it is first made available to the public in the EC). It is therefore important not to 'accidentally' make your designs available to the public before you are ready and to make sure that when they are first made available it is within the EC!
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8. What about registration? If you think that your design is likely to have staying power and you would
like to protect it for more than 3 years you should consider obtaining a registered Community design. This allows you to protect your design from copying for up to 25 years!
9. Policing There is no point in spending considerable time and money creating your
own designs if you simply allow your competitors to copy them without taking steps to stop them. By copying your designs your competitors can obtain a price advantage as they do not have the increased costs of employing a design team. If you fail to police your designs they are effectively worthless and
imitations will spring up everywhere! Keep your eyes peeled for imitations so that you can stop copycat brands at an early stage, before they get out of control.
10. Build relationships Build relationships with your local trading standards and specialist
Intellectual Property solicitors so that if an issue arises you know exactly who to speak to. I know my clients well and understand how they operate from the initial design through to the finished product. This all contributes to obtaining a swift resolution with minimal disruption to their businesses.
Case Study Mary Jane is a talented shoe designer who works for Shiny Blue Shoes
Ltd. One day at work she comes up with the idea for a new winter boot. Nothing like this has ever been seen before! The boots are a huge success but the following winter their sales drop. When Mary Jane is out Christmas shopping one day, she notices an exact replica of the boots for sale in "No Sole Shoes" for half the price of the Shiny Blue Shoes original. Shiny Blue Shoes Ltd is angry about this and instructs their solicitor to write to No Sole Shoes to inform them that their boot is an infringement of their design right and to demand that they remove the infringing product from sale. No Sole Shoes refuses to stop selling the boot and in any event argues that Shiny Blue Shoes' boot is not "new" and does not have "individual character" (there are lots of boots like it on the market that season) so does not qualify for protection under the Community Design Regulations.
At trial, Mr Justice Loafer held that Shiny Blue Shoes Ltd's design was valid and infringed. The following factors influenced his decision:
• Shiny Blue Shoes Ltd produced design documents dated from last winter to show that their boot pre-dated No Sole Shoes' version;
• Shiny Blue Shoes Ltd knew its market very well so could produce evidence to show that there was nothing like their boot on the market when it was launched;
• No Sole Shoes' designer admitted under cross examination at trial that her daughter in fact owned a pair of Shiny Blue Shoes Ltd's boots.
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