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Holger Gauss practices in all fields of intellectual property law, with a focus on trademarks and designs, including their prosecution, litigation, and enforcement. He has experience in cross-border litigation, tradeshow actions, border measures, and license agreements. He can be reached at firstname.lastname@example.org. Boriana Guimberteau has experience in the creation, maintenance, and enforcement of trademarks, designs, and copyright, with particular expertise in the fashion area. She can be reached at email@example.com. Simon Bennett has an extensive fashion law practice advising on the creation, maintenance, and enforcement of fashion brands, designs, and copyright. He can be reached at firstname.lastname@example.org. Lorenzo Litta advises on the creation, maintenance, and enforcement of fashion companies’ brands, designs, and copyrights. He can be reached at email@example.com.
Brands like Ralph Lauren and Abercrombie & Fitch are very popular throughout the European Union (EU)—and are often copied by counterfeiters, who are increasingly addressing European consumers. EU laws offer remedies for protecting apparel, handbags, shoes, watches, and jewelry, namely Community trademarks and Community designs that can be registered and enforced EU-wide.
The European Court of Justice (CJEU) has rendered several decisions highly relevant for the fashion industry, for example the Dior decision, in which the court held that the producer of luxury goods can oppose further commercialization of original goods via a discounter, even if these products were put on the market in the European Economic Area with the producer’s consent.1 The background is that discounted sales damage the reputation of luxury brands. Other fashion-related decisions address the validity and scope of protection of the Adidas trademarks2 and exhaustion of perfume-related trademarks.3
Nonetheless, the European Union is still an alliance of 27 member states with territorially limited national intellectual property rights and independent jurisdictions. Copyrights and unfair competition laws are only partly harmonized and are often handled differently depending upon the country in which action is taken. Therefore, this article will give U.S. practitioners an overview on the regulations and case law of the most “fashionable” EU countries, namely France and Italy, as well as the biggest markets, namely Germany and the United Kingdom (U.K.).
The strength of European intellectual property law lies in its harmonized legislation and unified titles, which are effective throughout the European Union, i.e., in 27 countries. Indeed, the EU system provides owners with useful weapons to act against infringers:
There are two types of Community designs: Unregistered Community Design (UCD) and Registered Community Design (RCD) rights. UCDs are defined in the same way as RCDs; they must be new and have individual character, and both rights can be enforced in the entire European Union.
However, there are also some differences between UCD and RCD rights:
UCDs are useful rights for the fashion industry, where the life of a product can be short and the large number of products created for each season cannot all be protected through registration. In this regard, there are an increasing number of decisions that illustrate the use of UCDs. For instance, the Paris Court of Appeal recently confirmed UCD protection of the Dior Soft handbag. It considered that Christian Dior Couture filed sufficient evidence to demonstrate the first date of use of this design in the European Union and ruled against Versace France and Gianni Versace SpA on the basis of breach of copyright and UCD infringement.4
Also, again in a Christian Dior Couture case but this time for a shoe model, the Paris First Instance Court ordered that any sale and import of infringing goods was prohibited throughout the European Union.5
To be valid, Community trademarks (CTMs) have to be distinctive and not describe the product’s characteristic. If a CTM does not comply with this requirement, it can be canceled either by OHIM or by member states.
In this respect, one interesting decision of the French Supreme Court concerns a CTM consisting of Alberto Korda’s portrait of Che Guevara. The French Supreme Court considered that the portrait could not validly be registered as a trademark. The court stated:
[C]onsumers of the products and services listed in the registration, notably clothings, publications, cultural activities, will perceive the Community Trademark at stake not as a sign which designates the origin of the products or services they are interested in, but as a reference made, for political or artistic purpose, to the work of Korda which magnifies Che Guevara.6
As we shall see later in this article, Community trademarks and designs coexist with national registrations that holders make in different European countries, both for trademarks and designs. They can combine these different types of registrations with copyright protection (provided certain criteria apply) to ensure their IP rights are fully protected throughout the European Union.
In France, the fashion industry is a powerful one—more than 70 percent of the legal disputes based on breaches of copyright concern fashion products. Fashion goods can be protected by copyright, design rights, or trademarks. When these means of protection appear to be inefficient, it is also possible to base an action on unfair competition and parasitism (a form of passing off under French law) to protect a company’s investments against the unfair acts of a third party.
As a preliminary comment, it should be noted that trademark, copyright, and design owners have the option, prior to any action on the merits, to obtain ex parte court orders to proceed with a seizure in the premises of a potential infringer of his or her rights. The seizure is a very efficient means of gathering information and proof of the infringement directly from the infringing party. It is performed by a bailiff, who is generally accompanied by the police and who has access to the invoices and available stock; the bailiff can hear all personnel located in the premises of the infringer and can seize products to be used further in the proceedings. The seizure and the subsequent bailiff’s report are usually the milestone of an infringement action in France.
The French Intellectual Property Code protects works of the mind that are original, i.e., reflect the personality of their author. Intangible, intellectual works are protected without any registration, by the mere fact of their creation. The “creations of the seasonal industries of dress and articles of fashion” are expressly listed by the French Intellectual Property Code as works of the mind.7 However, the difficulty is to demonstrate their original character, because a fashion article often follows the trends and styles of the moment.
The courts tend to appreciate more strictly the original character of creations and do not hesitate to refuse copyright protection to creations that could be considered commonplace. This has been recently the case for a dress from Vanessa Bruno8 and a skirt from the company Céline,9 both having started infringement actions against Zara France.
Frequently, the fashion products are created internally by the designers of the company that will later sell the products. In this case, the company benefits from the presumption that it is the copyright owner provided that the new product is first disclosed by the company.10
The conditions benefiting from this very useful presumption were clarified by the French Supreme Court in two recent decisions: (1) in 2010, the court stated that a company is presumed to be the owner of the copyright toward the infringer unless a claim is brought by an author;11 (2) however, the company has to prove that it has used the creations in which it claims copyright protection commercially.12 This proof has to be unequivocal. The court considered that the sale of swimming suits under a trademark (which is not the name of the company claiming the copyright protection) was not sufficient to prove the rights on the basis of copyright. Indeed, the ownership of a trademark under which the products were sold does not automatically generate ownership of the copyright on the creations.13 Documents such as catalogs, press releases, and sworn affidavits by the manufacturers of products must be provided.
The scope of copyright protection in France is quite broad, and the question regarding protection of a fragrance has resulted in various debates. It could be argued that the fragrance reflects the personality of its author and could therefore be protected as a work of the mind. However, the French Supreme Court ruled otherwise after several decisions of the first instance and appeal courts favorable to the protection. Regarding a possible infringement of the perfume Trésor of Lancôme, the Supreme Court decided that “the fragrance is the result of the simple implementation of a know-how and does not constitute a creation that may benefit from copyright protection.”14 Despite this decision, the court of appeal in Aix-en-Provence whose initial decision was rejected by the Supreme Court in the above-mentioned judgment, maintained its position restating that fragrances could benefit from copyright protection.15 Therefore, the position does not appear to be settled in France.
Under French law, in order to benefit from the provisions of the French Intellectual Property Code, a design has to be new and present an individual character. A French design has to be filed and/or registered in order to be validly used against third parties.
New creations could benefit from two separate intellectual property rights: copyright and design. As a result, several decisions mix the condition of novelty with the one of originality. Often, decisions confer either protections of both copyright and design, or none at all.
In this respect, the Paris Court of Appeal ruled that a model of shoes was original but also new and with an individual character because no identical model had been disclosed to the public and the entire impression it produced on the consumer differed from other models disclosed to the public.16
However, right owners tend to use copyright more frequently as a ground of action than designs. For example, in several decisions, the infringement of the “Pliage” bag of the company Longchamp was used for breach of copyright, whereas it is also protected as a design.17
Nevertheless, judges have recently imposed a stricter test on determining the original character of a creation. Indeed, there is an effort to distinguish and disassociate copyright and design protection. Thus, protection of a creation may be refused under copyright law but accepted as a valid design.18 The French Supreme Court confirmed this trend in a recent decision19 in which it rejected the protection of a shoe that reproduced the same characteristics as a preexisting product, whereas the design protection was granted because the prior model was not identical.
Trademarks are frequently used to protect brands and products from competitors in the fashion industry. While the general issues affecting trademark registration are also relevant to fashion products, some additional issues can arise from the filing of figurative trademarks, position trademarks, or three-dimensional trademarks.
One recent example concerns the famous red sole of Louboutin, which has been protected in France since 2000.When Zara decided to sell shoes with red soles, Louboutin issued a claim against Zara based on trademark infringement and unfair competition. In 2011, the Paris Court of Appeal rejected Louboutin’s claim and annulled its trademark, stating that “neither the form or the colour of the trademark application are determined with enough clarity, accuracy and correctness to be distinctive and to allow the origin of the shoe to be identified.” This analysis was confirmed by the French Supreme Court in 2012.20
Another interesting recent decision concerns a trademark of Christian Dior Couture, also protected as a design covering the handbag “Lady Dior.” Despite the arguments of the other party, the Parisian Court ruled that the trademark was valid and stated that there was an infringement of the handbag’s trademark, design rights, and copyright.21
Unfair competition is sanctioned in France on the basis of articles 1382 and 1383 of the Civil Code. It sanctions acts contrary to fair trade practices made with the view to harm a competitor. Unfair competition may extend to parasitism and would thus sanction wrongful acts performed not only by a competitor but by any third party who tries to improperly benefit from the investments and efforts made by a company.
Unfair competition may be used as an additional claim to an infringement action started on the basis of trademark, copyright, or design rights. In this case, the plaintiff has to prove facts that are different from those alleged for the infringement. It may be difficult to find different facts, and the unfair competition action could be easily rejected by the court, especially since the courts started scrutinizing different facts more carefully.
For example, the Paris First Instance Court rejected the validity of a registered design for a swimming suit and also rejected the claims based on unfair competition for lack of different facts.22 On the contrary, it has been ruled that reproducing the interior layout and design of a store could be considered unfair because it largely recreates a competitor’s store and therefore influences the consumers through confusion.23
It is also possible to start a separate action on the basis of unfair competition. There are several decisions concerning the products of Sonia Rykiel, who claims protection under unfair competition over the multicolor stripes she uses on her products. Indeed, no other specific protection may be used because the colors may differ. Different decisions have both condemned other companies24 and also rejected the claim of unfair competition because no confusion in the public’s mind was clearly identified.25
In Italy, “fashion” is a key word of economy, and therefore the approach of legislative bodies, courts, and enforcement authorities has been protective of fashion houses. Nonetheless, the influence of the different provisions coming from the European Union has been crucial in the development of the Italian Industrial Property Code (CPI) of 2005, as well as the Enforcement Law of 2006. Meanwhile, the Italian Copyright Law (LDA)—notwithstanding several recent updates—has barely changed since 1941, when it was first adopted.
The LDA grants protection to “works of the mind having a creative character and belonging to literature, music, figurative arts, architecture, theater or cinematography, whatever their mode or form of expression, shall be protected in accordance with this Law,” and “[i]n particular, protection shall extend to . . . industrial design works that have creative character or inherent artistic character.”26 The latter provision therefore covers double protection of a design under copyright law. Notwithstanding the above, and as is the case in many other EU countries, copyright protection cannot be easily obtained.
The CJEU, in its landmark decision Flos v. Semararo (Case C-169/08), addressed article 17 of Directive 98/71, which states:
A design protected by a design right, whether registered in a Member State or in the same in accordance with the provisions of this Directive, shall also be eligible for protection under the copyright rules of that State from the date on which the design was created or fixed in any form. Each Member State shall determine the scope and the conditions under which such protection is granted, including the level of originality required.27
The court held that once the law was different in Italy, copyright protection for a design would not depend on having been registered. This is a milestone for protecting fashion products that became “icons” and had not been originally registered as designs. According to the LDA, fashion designers could very well apply to an Italian court to obtain an ex parte interim injunction to access and seize any copy of their design having creative and artistic value, and subsequently request a permanent injunction and damages.
Copyright registration is not necessary, but sometimes it could be recommended, in particular for catalogs of those fashion products like sunglasses and garments that are mostly seasonal and for which the design registration may be too expensive or not cost efficient. The LDA is also applicable via the Berne Convention for the Protection of Literary and Artistic Works. The main advantage of registration consists in the reversal of the burden of proof. The enforcement of registered catalogs is a useful instrument for counterfeit cases where there are no trademark or design rights. Italian Customs (particularly large ports, such as Naples and Genoa) are very diligent in checking whether the designers have registered copyright protection for catalogs before carrying out seizures.
The CPI protects designs that are registered with the Italian Patent and Trademark Office (IPTO), as well as international designs that also cover Italy. The protection of fashion products through design registration is most common for those items which are, since creation and before reaching success in the market, considered important by their designers. The IPTO has been very generous in allowing protection to new designs, and in the past some infringers used the design to protect infringing logos. Many fashionable products are protected by registered design rights—for example garments, shoes, jewelry, and also the patterns of a texture, which was very common in the 1990s.
The general rules are similar to those of other EU countries, because Italian law has been completely revised since EU Directive 98/71 was transposed into national law. This eliminated the requirement of “aesthetic value” in registering designs. Today, the CPI grants protection to designs that are novel and meet the requirement of individual character. The applicant can ask the IPTO to postpone the publication of a design for up to 30 months and also enjoy a grace period of one year.
UCD rights are also very helpful, together with copyright law, in order to protect seasonal goods.
Trademark registration is still the most common instrument to protect fashion products, in particular for those characteristics that are considered unique and for which fashion makers seek a broader protection. Both word marks and logos are protected for the company’s brand and main collections, and patterns are still more frequently registered by fashion makers as trademarks than as designs.
The IPTO historically has been very generous in allowing protection to unconventional trademarks. In several cases, some companies have tried, with success (notwithstanding this fact is continuously debated), to obtain and enforce these registrations of fashion products themselves or of some of their details. For example, it has been possible to obtain trademark protection for the whole shape of the product, such as for handbags or perfume bottles.
However, protection of these kinds of marks in Italy is becoming increasingly difficult because Italian courts are following the restrictive approach of the European Union. Possibly in light of this restrictive approach, fashion companies have tried to protect other kinds of “untypical marks,” in particular the so-called “position marks.” A good example of a big campaign on position marks is Prada because it has filed several marks for its characteristic “red line” placed on the box of the shoes and on the bottom of its shoes.
The IPTO is now more restrictive with registration of untypical marks and often rejects such trademark applications. It has argued in several cases that consumers don’t consider traditional shapes of products as an element that allows consumers to repeat their choices, and therefore these marks do not fulfill the main requirement of each mark indicating the origin of the product. It is possible to overcome the objections by proving that the marks indicate the origin for consumers with expensive campaigns—these are often based on proving the distinctiveness for consumers who perceive the sign as a real trademark.
The unfair competition remedies are considered the final and most extreme remedy under Italian law to protect the unlawful exploitation of a competitor’s work. The unfair competition provisions are not included directly in the CPI but are part of the Italian Civil Code. In light of this, unfair competition is always considered supplementary to the other remedies but is typically invoked in most claims as the final remedy. This is when the imitation itself is not sufficient and where there are additional facts coming into play, leading to unfair behavior.
This kind of protection, in any case, is supplementary—this means that it can be invoked when there is a clear infringement of registered rights. It is also independent, meaning that it can be invoked also as the unique claim for consumer deception or for the exploitation of the “allure” of products that have obtained a certain degree of notoriety in the market.
The main concern of courts in allowing remedies for the unlawful exploitation of a competitor’s work is for abuse of right. The courts therefore consider the scope of protection of the fact at issue and in particular the margin of creativity and tendencies of the market.
In the other areas of intellectual property, the more special the original trademark/design/copyright is, the lower the requirements are as regards the scope of imitation and the additional circumstances leading to illegality.
Claims based on passing off were granted, among others, for Bulgari’s modular jewels in the 1980s, with a number of civil (and criminal) seizures carried out in Florence at the Ponte Vecchio bridge. Very good examples of cases of passing off are the dozens of claims filed all over Italy for infringement of the design of handbags that don’t bear any trademark and have not been protected as designs. For example, certain fashion designers that have created iconic products (such as Hermès for its Kelly and Birkin bags, Bottega Veneta for its stranded fabric, and Balenciaga for the Classic family of bags) have successfully enforced their rights in passing off actions.
Like many creative industries, the fashion industry in the United Kingdom invests huge sums to create and develop innovative designs for each season. Despite this investment, many designers in the United Kingdom remain unaware of the legal weaponry at their disposal (both under U.K. and EU law) to protect their brands and designs. Some also associate such protection as a financial burden—however, unregistered forms of protection can arise in the United Kingdom that offer some security, particularly given the transient nature of fashion trends.
The types of intellectual property that can be used to protect fashion designs in the United Kingdom are as follows:
We will provide a brief overview of the IP rights detailed above as they apply to the United Kingdom, and this should highlight the differences to the other country regimes set out in this article.
A fashion item will arguably be more memorable and easily distinguishable if it carries, and is sold by reference to, a name or a distinctive logo. How can this be displayed on apparel?
Under U.K. law, such names or logos can benefit from:
Under the Trade Marks Act 1994 (TMA), a trademark can only be registered if it is capable of being graphically represented, and allows consumers to identify and distinguish its origin from other goods or services.
U.K. registered trademarks are valuable commercial assets because they confer monopoly rights on a given sign and act as a deterrent to people from using the same or similar brand—crucially though, they can last indefinitely provided renewal fees are paid. Conversely, the difficulty and expense involved in protecting unregistered marks means that registration is important for the protection of a fashion brand.
What Qualifies for U.K. Registration?
The type of trademark varies. It could be a word, a device or logo, a shape, a sound, or even a smell. As fashion relies on consumers’ selection and purchasing of clothing items, so it will invariably be that the visual and conceptual elements of a mark have the greatest influence in determining the success of an application for registration.
With such wide-ranging benefits accruing from trademark registration, it is perhaps unsurprising that the scope of the U.K. registration system is being continually challenged. For example, subject to the issue of graphical representation, a single color combination in the abstract may be registered as a trademark—however, and as is the case for shapes, it will often be harder to prove that a color is distinctive due to the difficulty of expecting the general public to associate colors with a commercial origin. However, this is possible—for example, Christian Louboutin successfully registered the color red as applying to the sole of a shoe.28
Some other fashion brands have not been so successful in protecting shapes and colors through trademark applications. For example, Longchamp failed to register the shape of its classic handbag as a trademark. It was held not to have distinctive character—high sales figures were also deemed to be irrelevant in determining whether the shape of the bag had distinctive character or not.
Also, WORLD’S FIRST REVERSIBLE JEANS was refused registration for “denim pants.” Similarly, common names (either forenames or surnames) and geographical names may also be refused registration—BELLAGIO was refused registration, as the mark indicated that its goods had originated in the Italian town of the same name.
Every fashion item, whether apparel, shoes, handbags, or other accessories, starts out as an idea—that is, an inspiration that requires the creative output, time, and thought to produce the end product. This output, normally of a designer in the fashion industry, can often attract U.K. copyright protection as an original “artistic” work. “Artistic” works include graphic works, photographs, sculpture, or collage, irrespective of artistic quality and works of artistic craftsmanship. Unlike other countries, such as Germany, the threshold for protection is low and does not require skill or labor.
In the United Kingdom, copyright protection arises automatically—accordingly, there are no registration requirements. Having said this, designers should always include a copyright notice to accompany their designs. While people intent on copying designs will inevitably find a way to do so, copyright notices may deter some third parties from attempted infringements.
How can fashion designers benefit from this automatic protection?
Once afforded, protection will last 70 years after the death of the author; this is reduced to 25 years where a fashion design is put into production using an industrial process.
Fashion garments, patterns, sketches, prototypes, and computer-generated graphics are all capable of protection as design rights. In the United Kingdom, Sarah Burton’s creative design of Kate Middleton’s wedding dress is one such example. U.K. design rights are concerned with protecting the appearance of the product itself, as opposed to its function or underlying concept.
What Is Protected as a U.K. Unregistered Design Right?
To be protected, a design must:
Protection for such designs is limited to the lesser of 10 years from the first marketing of articles generated from the design or 15 years from creation of the design document. This differs from the EU unregistered design right, which confers protection for only three years from the date of first marketing. In the last five years of this protection period, the design is subject to a “license of right”—this confers a right on third parties, who are free to use the design for which they must pay the owner a reasonable royalty.
How Wide Is the Scope of the U.K. Unregistered Regime?
As with trademark registration, various attempts have been made to widen the scope of design features falling under the U.K. regime.
For example, the courts considered whether unregistered design rights could subsist in a particular combination of colors in the landmark case of Lambretta Clothing Co. v. Teddy Smith (UK) Ltd.29 The court decided that the color combination was not an aspect of shape or configuration of the apparel and therefore did not fall within the U.K. unregistered regime—the colors were also expressly excluded from protection for being “surface decoration,” despite the fact that the color was dyed through the material, rather than simply being a layer on its surface. The position may have been different had Lambretta been able to rely on the EU regime, which, unlike that of the United Kingdom, confers protection on features of color (article 3(a) of the Community Design Regulation) and which also protects surface decoration.
U.K. and EU Registered Design Rights
In order to qualify for U.K. registration, a design must be new and have individual character—as opposed to the “original” creation requirement for unregistered designs—which will then provide protection for up to 25 years. This has, however, been unpopular with fashion designers, mainly due to the costs involved with the registration process.
In contrast, the EU regime has proved to be far more popular. This is understandable, particularly given the wider scope of protection it offers. As with the U.K. registered regime, the designs must be new and have individual character. However, the EU regime also provides designers with a 12-month “grace period” after marketing a new product to decide whether it has traction for the long-term future and therefore justifies the registration fee. Not only this, but the protection offered to designers extends across all EU member states—Jimmy Choo30 has successfully enforced its RCDs to remove cheap copies of its designs from the U.K. and wider EU markets. As with the U.K. registered system, EU registered designs are protected for up to 25 years provided renewal fees are paid every five years, although unregistered protection lasts for three years (invariably long enough to protect many designers’ collections).
There are various other tools available to fashion designers to protect their rights. Actions for passing off can be brought to prevent (and deter) people from damaging the goodwill and reputation of all ways in which a trader’s product or business can be identified. The elements of goodwill, misrepresentation, and damage must all be established by an aggrieved party to succeed in the U.K. courts. Other actions, such as breach of confidence, also exist to protect the creative output of fashion designers in the United Kingdom.
In Germany, many fashion-related conflicts were decided on the basis of “passing off” under the German Act Against Unfair Competition. Yet, claims and remedies are comparable to “classical” IP right infringements. For example, claims for injunctive relief can be enforced in ex parte preliminary injunctions without an obligation to provide a bond.
The German Copyright Act (UrhG) also protects “works of applied art,” i.e., copyrightable works serving a certain purpose, including furniture, jewelry, and apparel. However, German courts are rather conservative and require a high threshold of originality for affirming copyright protection. If the product can be protected by design patent registrations, German case law demands that the creation “considerably surmounts typical creations in the relevant product sector.”31
As a consequence, copyright protection cannot be obtained easily. Nonetheless, copyright protection was held to exist in paper patterns and models32 (among others) for an evening dress depicting deer-belling artistic patches on a denim jacket and also for an artistically created armlet or a ring with a clamped diamond.33 In contrast, protection was refused for an ear clip in the arrangement of silver thistles.34 If the requirements for copyright protection are met, the right holder has the exclusive right to reproduce and distribute the work and can also prohibit adaptations of the original work.
Registration of the copyright is not necessary—even marking is not required. U.S. copyright holders can base claims on copyright infringement if the work has been first published in Germany or within 30 days after first publication outside Germany. Further, the UrhG is also applicable via the Berne Convention for the Protection of Literary and Artistic Works, which was ratified by the United States in 1989. Copyrights can be enforced by preliminary injunctions. For example, in December 2009, the District Court of Munich preliminarily prohibited the airing of a music video clip featuring two U.S. superstars on the basis of alleged infringement of a copyright protecting the combination of white Picasso-styled lingerie with black and white bracelets and a pair of untypical sunglasses.35
The German Design Rights Act protects designs that are registered with the German Patent and Trademark Office (GPTO), as well as international designs covering also Germany. Many fashionable products are protected by registered designs—for example, the Bulgari B-Zero jewelry series.36
Besides pictures or drawings depicting the design, one can also file patterns of a texture. The applicant can ask the GPTO to postpone the publication of the design up to 30 months and thereby gain a priority date for the application without disclosing its content to competitors.
German designs must meet the same requirements as Community designs, namely novelty and individual character. They also enjoy a grace period of one year as regards the own publications of the right holder. The major requirement to be met is individual character of the design, which is typically denied for seasonal goods following a certain fashion trend. German case law has affirmed design patent protection among others for a ladies’ jacket, a blackberry-styled pattern, a floral pattern, the arrangement of buttons, watches with motives, watchcases, and key chains.37 Recent decisions have focused on the violation of nonregistered Community designs for the imitation of various men’s shirts.38
German designs grant protection in view of creations creating the same overall impression on the “informed user,” whereas the scope of protection depends on individuality of the original.39 In preliminary injunction procedures, the plaintiff must provide prima facie evidence of the novelty and the individual character of the design.40 In contrast, validity of the design is assumed in a lawsuit unless the defendant proves the contrary.
German trademark courts are in line with the case law of the CJEU. Of particular note are German decisions relating to perfumes and jewelry. For example, German case law confirmed that producers of luxury watches like Rolex must not accept the commercialization of customized watches furnished with diamonds.41 Further, the German Supreme Court repeatedly confirmed that selling perfumes with over-labeled or removed security codes infringes the rights of the producers and also violates unfair competition law.42
Besides word marks and logos, the German Trademark Act grants protection for “untypical” marks with high relevance for the fashion industry, namely three-dimensional marks, color marks, and position marks. In line with cases decided by the CJEU, the GPTO rejects such trademark applications, arguing that consumers typically see arrangements or shapes of products not as indicators of origin and that marks displaying only variations of typical arrangements cannot be registered.43 It is possible to overcome the objections by proving that the product arrangement has become an indicator of origin in Germany, which is difficult. Typical evidence for secondary meaning is a cost-intensive opinion poll.
As a consequence, protection for the isolated shape is typically only possible if the product is famous. Three-dimensional German trademarks have been registered among others for the Hermès Kelly bag and the flat Rado watches.44
There are German position marks protecting the rubber cabs of the Adidas “Superstar” sneakers and the red Levis Tab.45 Trademarks combining the shape of a product with logos or word elements are easier to obtain, whereas the scope of protection of such marks is limited to almost identical imitation. An example is a mark protecting the Rolex Oyster Perpetual Day-Date featuring the Rolex logo.46
For enforcing marks or protecting the shapes or colors of products, the holder must prove that they are also recognized as source indicators within the arrangement of the infringing products, especially when used in combination with word marks and logos. Typically, the plaintiff files opinion polls and statements proving that German consumers see the original shape as a source indicator.
The supplementary protection provided by the German Act against Unfair Competition (UWG) prohibits the unlawful exploitation of a competitor’s work and comes into play if there are additional circumstances apart from the imitation leading to an unfair behavior. Passing off can apply even if the product is or has been protected by trademarks or designs.47 Typical circumstances are consumer deception and exploitation of the fame of the original product.
The original product must have obtained a so-called “competitive character,” which is affirmed if the arrangement or features of a product indicate to consumers its origin or uniqueness. It is not necessary that consumers know the exact name of the producer provided they know that there is one unique producer.48 A new creative combination of previously used features can be sufficient.49 To assess the scope of protection, German courts evaluate the prior art and arrangements of other products offered in Germany. In contrast, products not being marketed in Germany are of no relevance.
The more special a product design is, the lower the requirements are as regards the scope of imitation and the additional circumstances leading to illegality. Additionally, consumer deception requires that the original has achieved certain awareness among the public. As a result, passing off protection for brand new fashion items that have not been introduced to a broader audience is mostly excluded. Claims based on passing off were granted among others for sweatshirts, the unique appearance of a pair of jeans, silk shirts and blouses, parkas and a traditional jacket, and lingerie,50 as well as for Longchamp and Hermès bags and Rolex watches.51
The term of protection differs in view of the product category and is rather short for seasonal fashion. As regards design classics like Cartier’s panther jewelry, protection is still possible for more than 20 years even though the original is not actively marketed anymore, as it is still known by the public.52 Passing off claims are limited to the advertising, bringing into commerce, and selling products in Germany. Courts can prohibit neither production nor possession of counterfeits. In preliminary injunction procedures, one can enforce claims for injunctive relief but also for information as regards the source of the infringements.
EU law and the national laws of all four member states provide effective measures for combating counterfeits in the fashion field. Besides “typical” trademark infringements, the shapes, arrangements, and colors of fashionable products can be protected against imitations. Community trademarks and Community designs can be enforced EU-wide. However, in view of the different requirements for protecting fashion in France, Italy, the United Kingdom, or Germany and the differing procedural systems in these countries, it is highly advisable to consult local national counsel for enforcing your client’s rights to a maximum. n
1. Case C-59/08, Copad SA v. Christian Dior Couture SA, 2009 E.C.R. I-3421.
2. Case C-102/07, Adidas AG v. Marca Mode CV, 2008 E.C.R. I-2439; Case C-408/01, Adidas-Salomon AG v. Fitnessworld Trading Ltd., 2003 E.C.R. I-12537; Case C-425/98, Marca Mode CV v. Adidas AG, 2000 E.C.R. I-4861.
3. Case C-324/09, L’Oréal SA v. eBay Int’l AG, available at http://curia.europa.eu/juris/liste.jsf?language=en&num=C-324/09#.
4. Cour d’appel [CA] [regional court of appeal] Paris, July 6, 2012, Christian Dior Couture v. Gianni Versace SpA (Fr.).
5. Tribunal de grande instance [TGI] [ordinary court of original jurisdiction] Paris, Jan. 27, 2011, Christian Dior Couture v. Ash Distribution (Fr.).
6. Cour de cassation [Cass.] [supreme court for judicial matters], 1e civ., July 12, 2011, No. 09-16188 (Fr.).
7. Code de la propriété intellectuelle [C. prop. intell.] art. L112-2(14) (Fr.).
8. CA Paris, Oct. 17, 2012, Vanessa Bruno v. Zara France (Fr.).
9. CA Paris, Feb. 27, 2013, Céline v. Zara France (Fr.).
10. C. prop. intell., supra note 7, at art. L113-1.
11. Cass., Nov. 15, 2010, Edéna v. PGM and Mr. Alaux (Fr.).
12. Cass., Jan. 6, 2011, TRB Int’l v. Auchan (Fr.).
14. Cass., 1e civ., Jan. 22, 2009, Argeville v. Lancôme Parfums et Beauté (Fr.).
15. CA Aix-en-Provence, Dec. 10, 2010, Argeville v. Lancôme Parfums et Beauté (Fr.).
16. CA Paris, June 3, 2011, SAS Chaussea v. SARL Menport (Fr.).
17. TGI Paris, Mar. 29, 2012, Cassegrain v. Société Günter Andersen (Fr.); CA Paris, Jan. 20, 2012, SARL Any Diffusion v. Cassegrain (Fr.).
18. TGI Paris, June 10, 2011, Christian Dior Couture v. Versace France (Fr.).
19. Cass., 1e civ., Apr. 5, 2012, J-M Weston v. Manbow (Fr.).
20. Cass., com., May 30, 2012, No. 11-20724, Société Louboutin v. Zara (Fr.).
21. TGI Paris, Sept. 11, 2012, Christian Dior Couture v. Marion Rossini Moda (Fr.).
22. TGI Paris, Apr. 13, 2010, Création Méditerranée v. SAS Antigel (Fr.).
23. CA Paris, Apr. 16, 2010, ZV France v. Davimar (Fr.).
24. Tribunal de commerce [TC] [trial court for commercial matters] Paris, May 22, 2012, Rykiel v. Simmons (Fr.).
25. CA Paris, May 16, 2008, Sonia Rykiel Création et Diffusion de Modèles v. BCBG Max Azria (Fr.).
26. Legge d’autore [LDA] 22 aprile 1941, n. 633, pt. I, ch. I (It.).
27. Council Directive 98/71, art. 17, 1998 O.J. (L 289) 28 (EC).
28. OHIM Board of Appeal, June 16, 2011, No. R2272/2010-2.
29. Lambretta Clothing Co. v. Teddy Smith (UK) Ltd.,  EWCA Civ 886 (Eng.).
30. A.P. Alicante, June 18, 2007 (No. 241) (Spain).
31. Bundesgerichtshof [BGH] [Federal Court of Justice] June 22, 1995, Case I ZR 119/93 (Ger.).
32. BGH Dec. 14, 1954, Case I ZR 65/53 (Ger.).
33. Landgericht [LG] [District Court] Leipzig Oct. 23, 2001, Case 5 O 5288/01 (Ger.) (evening dress); Oberlandesgericht [OLG] [Appeal Court] Hamm Feb. 16, 1989, Case 4 W 163/88 (Ger.) (patches); OLG Frankfurt Mar. 22, 2005, Case 11 U 49/03 (Ger.) (armlet); OLG Dusseldorf May 30, 2005, Case I-20 U 4/99 (Ger.) (ring).
34. BGH June 22, 1995, Case I ZR 119/93 (Ger.).
35. LG Munich Dec. 18, 2009, Case 7 O 24178/09 (Ger.).
36. International designs DM/057664 (filed Nov. 6, 2000) and DM/046913 (filed Feb. 19, 1999) also enjoy protection in Germany.
37. OLG Hamburg June 12, 2002, Case 5 U 38/01 (Ger.) (ladies’ jacket); BGH Jan. 27, 1983, Case I ZR 177/80 (Ger.) (blackberry pattern); LG Munich Jan. 13, 2000, Case 7 O 10515/99 (Ger.) (floral pattern); LG Bielefeld June 9, 1988, Case 16 O 44/88 (Ger.) (buttons); LG Munich Feb. 18, 1999, Case 7 O 5178/98 (Ger.) (watches); BGH June 1, 1988, Case I ZR 22/86 (Ger.) (watch cases); OLG Dusseldorf Oct. 16, 1984, Case I-20 U 119/83 (Ger.) (key chains).
38. OLG Dusseldorf Dec. 21, 2010, Case I-20 U 144/10 (Ger.).
39. BGH May 19, 2010, Case I ZR 71/08 (Ger.).
40. OLG Hamburg Apr. 23, 2008, Case 5 U 101/07 (Ger.).
41. BGH Feb. 12, 1998, Case I ZR 241/95 (Ger.).
42. BGH Feb. 21, 2002, Case I ZR 140/99 (Ger.).
43. See Case C-136/02, Mag Instrument Inc. v. OHIM, 2004 E.C.R. I-9165; BGH July 9, 2009, Case I ZB 88/07 (Ger.).
44. Three-Dimensional Mark of Hermès International Société en Commandite par Actions, Registration No. 30057468.1, Filing No. DE30057468 (filed Aug. 2, 2000) (Ger.); IR00640196 (Rado).
45. Brand of Adidas AG, Registration No. 302009069917.8, Filing No. DE302009069917 (filed Nov. 26, 2009) (Ger.); Brand Image of Levi Strauss & Co., Registration No. L39038, Filing No. DE2914002 (filed Jan. 1, 1995) (Ger.).
47. BGH Apr. 30, 2008, Case I ZR 123/05 (Ger.).
48. BGH Sept. 15, 2005, Case I ZR 151/02 (Ger.).
49. BGH Nov. 6, 1997, Case I ZR 102/95 (Ger.).
50. LG Dusseldorf Sept. 28, 1988, Case 34 O 76/77 (Ger.) (sweatshirt); BGH Sept. 15, 2005, Case I ZR 151/02 (Ger.) (jeans); OLG Hamburg Feb. 24, 2005, Case 5 U 66/04 (Ger.) (lingerie); OLG Munich Mar. 24, 1994, Case 29 U 5679/92 (Ger.) (parka); BGH Nov. 6, 1997, Case I ZR 102/95 (Ger.) (traditional jacket); OLG Hamburg Nov. 17, 2005, Case 3 U 88/05 (Ger.) (blouse); OLG Karlsruhe Dec. 8, 1993, Case 6 U 100/93 (Ger.) (silk shirt).
51. BGH Nov. 1, 2007, Case I ZR 198/04 (Ger.) (Hermès); OLG Cologne Mar. 24, 2006, Case 6 U 115/05 (Ger.) (Longchamp); BGH Nov. 8, 1984, Case I ZR 128/82 (Ger.) (Rolex).
52. OLG Frankfurt Apr. 24, 2007, Case 11 U 45/06 (Ger.).