So you’ve put your blood sweat and tears into a design for a new style of wedding dress, you may have spent hours hand stitching pearls and sequins onto the garment and have successfully marketed the product and sold the design. Some time later you spot an imitation dress on the market, this may seem illegal and certainly immoral to you, but can you do anything about it under Intellectual Property (IP) Law? This blog is going to examine that issue and briefly touch on the intellectual property rights that may attach to your design.
The short answer is that unfortunately it will be very hard to bring a successful action for copying the design, unless your garment is truly unique and the copycat version uses the key elements without too many design changes made, even then it may be hard to rely on the IP laws available. This is in part due to the very nature of the clothing industry in which designs are imitated, tweaked and modernised on a constant basis so that many pieces are recycled from existing, or older designs. However, this comment may be less true in the world of wedding dress design than for the fashion industry generally, as more handiwork will be required and there is no ‘standard’ shape, or style of wedding dress. The problem is that there is no obvious fit in intellectual property law to protect the work that has gone into a design because of various quirks in the law.
All designs will start out as an idea that may have taken considerable time and energy to develop, yet a mere idea is not protectable in its own right. Where those ideas are put down on paper, copyright will automatically subsist in the design drawings. Any copying of the drawings, or a substantial part of them, can classify as a copyright infringement. This includes reproducing the drawings in a material form and making a three dimensional garment from them. However the design drawings must be original and you would need to show that the copycat design is the same or substantially similar to yours and that the reason for the similarities is because the defendant had access to your design.
If yours was on the market first this may lead to an inference of copying, however the defendant is likely to say that they were not aware of your design and have merely been inspired by the general body of design in the public domain and have made an original contribution themselves so that any similarities are coincidental. Clearly the more elaborate and unusual the design the easier it will be to prove copying but if there are similar dresses to your design already out there and if the defendant has made some changes/flourishes of their own, copying is going to be very hard to prove.
Moving on from the sketching process, once a prototype design or pattern is created design rights will exist, whether registered, or unregistered, UK or EU. UK unregistered design rights exist automatically and protect any aspect of the shape or configuration of an original design; however surface decoration is not protected. This clearly is problematic for wedding dress designers as the beading, diamantes and any other surface decoration will not be protected.
Various attempts have been made to bring features of clothing into the UK design regime but these have mostly been unsuccessful. For example an attempt to protect the selection of colours and their application to a tracksuit top was unsuccessful as the court said this was not part of the shape or configuration of an article. Similarly an action for infringement of copyright and design rights in respect of designs for a shirt, jumper and cardigan was turned down as the Court of Appeal ruled that copying the essential shape and overall dimensions of the garments did not constitute design right infringement. Again these cases occurred in the high volume, transient realm of the fashion industry and did not involve wedding dresses but unless your item is bespoke it will be hard to rely on unregistered design rights if your shape/style of dress has been made before or even if the ‘copycat’ looks like your design but has been modified. Even if substantial parts of the design have been copied, the imitation design could still be original if, taken as a whole, it is new, significantly different to your design and the result of the independent work of the other designer.
You could seek to register your one off dress design as a UK (or even Community) registered design and this will give you the exclusive right to use the design but does involve costs. Each new design would need to be separately registered with its own registration fees. It should also be noted that the design should not be disclosed to the public before an application for registration has been made and so this does involve some pre-planning.
Registered design rights protect the appearance of the whole or part of a product, in particular the lines, contours, colours, shape, texture, or materials of the product/garment itself or its ornamentation so surface declaration can be protected. Both mass produced products and handcrafted ones can be protected. To be capable of registration the design must be new so no identical design should have been made available to the public before the application was made, or any design that differs in only immaterial details. The design must also have “individual character” i.e. it must produce a different overall impression on the informed user than any earlier design considering the nature of the product to which the design is applied, the industrial sector to which the product belongs and the degree of freedom of the designer in developing the product.
So to successfully register a wedding dress the design should be clearly different from any other dress previously made available. It must also produce a different impression on the informed user i.e. someone who has an awareness of wedding dress design and knows about the degree of design freedom available to all designers. So again unless your design is truly unique or bespoke it may not qualify for protection. Even if you do manage to get the design registered and then seek to rely on it if the design is copied, the defendant is likely to attack the validity of the design in any court proceedings so will try to argue that it is not new and has no individual character to invalidate the design and allow them to keep producing their rival/imitation product.
Design rights have been used by a number of fashion houses, including Jimmy Choo and Chloe to protect their designs and remove cheap copy versions from the market, however, there is very limited case law on the use of these rights to stop copycat designs.
In terms of wider issues it is possible to register your company or product name, logo or key brands as trade marks so that you have the exclusive right to use them within the sector specified in your application. Even without registration it may be possible to rely on the law of passing to protect your rights in a brand where someone is trading off the goodwill and reputation that you have created but this will help to protect the wider company or product name, rather than an individual dress design.
So unfortunately IP laws will not get you very far in protecting your design, ultimately you will need to rely on creativity, quality and design innovation to make sure that it is your garment that would be brides want to buy.
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