Riassunto Fashion and Intellectual property law

WHAT IS INTELLECTUAL PROPERTY?

Keyword: invention. Patent for invention (=brevetto). In fashion, the brand is a concept that derives from

marketing, but if we want to focus our attention on law, we can talk about a trademark (=marchio). It is a very

strategic topic.

intellectual property (IP) refers to creations of the mind, such as inventions; literary and

Definition: à

artistic works; design; and symbols, names and images used in commerce

. our attention is on the

economic field, strictly related to the activities of the enterprises in the fashion industry.

® IP is protected in law by, for example, patents, copyrights and trademarks, which enable people to earn

recognition or financial benefit from what they invent or create. By striking the right balance between the

interests of innovators and the wider public interest, the IP system aims to foster an environment in which

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creativity and innovation can flourish. we tend to say that the trademark is an instrument in the hand of the

brand owner to gain financial benefits, but on the other hand it is also an instrument to ensure to the customer

to find in the market products with a certain quality, and the competition and the democratic asset of the market

itself, because there are a lot of trademarks in the markets.

Ø Copyright: we can find it in books and websites for example;

Ø Patent: related to the concept of technological innovation and we can

find it in products;

Ø à

Trademark: difference between the two symbols R means

registered trademark, so that it has been registered in a particular place

where the trademark is used. TM can have 2 meanings: it is an

unregistered trademark, so a kind of minor protection compared to the registered one; or it is a

trademark waiting for registration, because when I want to register a trademark, the first step is to fill

an application and we have to wait on average 8 months or 1 year or more to have registration. In the

meanwhile, I can use TM, because I don’t have the registration yet;

Ø Design: a very important kind of intellectual property right for the fashion industry, maybe the most

important one.

THE VENETIAN PATENT STATUTE (MARCH 19, 1474)

We tend to consider that IP rights are somehow strictly connected with the present economic assets we live

nowadays, but this is not true, and we have come historical examples that are very old and that can help us to

somehow understand better what is behind those rights.

The Venetian Patent Statute of March 19, 1474, established in the Republic of Venice the first statutory patent

system in Europe, and may be deemed to be the earliest codified patent system in the world. The Statute is

written in old Venetian dialect. It provided that patents might be granted for "any new and ingenious device,

not previously made", provided it was useful. By and large, these principles still remain the basic principles of

patent law.

“[T]here are in this city, and also there come temporarily by reason of its greatness and goodness, men from

different places and most clever minds, capable of devising and inventing all manner of ingenious

contrivances. And should it be provided, that the works and contrivances invented by them, others having seen

them could not make them and take their honor, men of such kind would exert their minds, invent and make

things which would be of no small utility and benefit to our State. Therefore, decision will be passed that, by

authority of this Council, each person who will make in this city any new ingenious contrivance, not made

heretofore in our dominion, as soon as it is reduced to perfection, so that it can be used and exercised, shall

give notice of the same to the office of our Provisioners of Common. It being forbidden to any other in any

territory and place of ours to make any other contrivance in the form and resemblance thereof, without the

consent and license of the author up to ten years. And, however, should anybody make it, the aforesaid author

and inventor will have the liberty to cite him before any office of this city, by which office the aforesaid who

1

shall infringe be forced to pay him the sum of one hundred ducates and the contrivance immediately destroyed.

Being then in liberty of our Government at his will to take and use in his need any of the said contrivances and

instruments, with this condition, however, that no others than the authors shall exercise them.”

• à

“Clever minds, capable of devising and investing all manner of ingenious contrivances” something

strictly related to technology and the inventor is the person capable to invent new technologies. It was very

important at that time but also for us today, to have people capable of ensuring a good level of technology.

That’s why all the legislation related to patents is very important and we can use them as an indicator of

the level of technology of a state;

• à

“Things which would be of no small utility and benefit to our State” the Republic of Venice decided to

afford protection to patents because they focused their attention to utility;

• à

“New ingenious contrivance, not made heretofore in our domination” in order to obtain a patent it is

necessary that there is something new compared to the past. Talking about a product or a process. I have

to change something I the pre-existing technology;

• à

“Give notice of the same to the office of our Provisioners of Common” this is more or less what we call

today registration: if we want to obtain a patent today, we have to go to a specific office and fill an

application, in order to have a registration. This sentence says exactly the same;

• “It being forbidden to any other in any territory and place of ours to make any other contrivance in the

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form and resemblance thereof” forbidden. Here we find what is called the “scope of protection”, so

what is the content of the patent right, so to forbid everyone to do the same product as mine;

• à

“Without the consent and license of the author” very important part: the two words “consent” and

“licence” open the door to what we call today “licence agreement”. You cannot produce a patented product

without the consent and licence. But, if you ask a licence, of course you can and you can see how modern

this definition is, because it is already provided that a patent can be subject of a specific agreement called

“licence agreement”;

• à

“Up to ten years” patents at that time had a duration of 10 years. Nowadays, it is 20 years and after

that, the patent falls in public domains, so everybody can produce that particular product without any kind

of limitation. so, a patent is a valuable instrument to ensure the technological progress, because after 20

years all the knowledge for that technological invention becomes common for everyone, and others can

go ahead with technological progress;

• à

“Author and inventor will have the liberty to cite him before any office of this city” the inventor has the

right to sign the infringement before the judgment of the public and in case of infringement it is possible

for the author to obtain money as a kind of restore to what was lost;

• “Who shall infringe be forced to pay him the sum of one hundred ducats and the contrivance immediately

destroyed”.

500 years ago, in Venice it was already very important to protect patents and they were able to write a very

comprehensive and modern definition of it that is more or less the same respect to the definition we use today.

IP RIGHTS IN A SNEAKER: design, logo and brand (like Nike), particular technology for the sole for

example or other parts. So, we are talking about the technological aspect, that we have to consider. Can

copyright be involved in the business of sneakers? Nike is very famous for the commercials: all the advertising

campaign related to the promotion of this product is protected by copyright. SO, we can understand that IP

rights can also be used together to protect the same product under many different aspects.

v Patent protects the technology used to develop the shoe

v Design protects the “look” of the shoe

v Trademark distinguishes the shoe from similar products from other manufacturers and protects the

“reputation” of the shoe (and of the company that produces it)

v Copyright protects every artwork and audio-visual creation used to advertise the shoe. 2

IP RIGHTS

a. PATENTS

They are related with innovation and technology. From a legal point of view, a patent is an exclusive right

granted for an invention. Generally speaking, a patent provides the patent owner with the right to decide how

- or whether - the invention can be used by others. In exchange for this right, the patent owner makes technical

information about the invention publicly available in the published patent document.

b. (INDUSTRIAL) DESIGN

An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may consist of three-

dimensional features, such as the shape of surface of an article, or of two-dimensional features, such as patterns,

lines or colours.

c. TRADEMARKS

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other

enterprises. Trademarks date back to ancient times when artisans used to put their signature or “mark” on their

products.

d. COPYRIGHT

Copyright is a legal term used to describe the rights that creators have over their literary and artistic works.

Works covered by copyright range from books, music, paintings, sculpture and films, to computer

programmes, databases, advertisements, maps and technical drawings.

Now, under the copyright, we also have the protection of kinds of works that are currently used in commerce

or economic activities of the company, like the databases, advertisements, computer programmes. So, also the

copyright law has to be considered as a part of the instruments that a company has to protect their rights.

e. GEOGRAPHICAL INDICATIONS

Geographical indications and appellations of origin are signs used on goods that have a specific geographical

origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of

origin. Most commonly, a geographical indication includes the name of the place of origin of the goods.

In the food sector we have DOC, DOP, IGP, DOCG and so on. But also “Made in Italy” can be considered as

a geographical indication and there are some rules that regulate the conditions for this kind of expression (see

in the next lessons).

f. TRADE SECRET

Trade secrets are IP rights on confidential information which may be sold or licensed. The unauthorized

acquisition uses or disclosures of such secret information in a manner contrary to honest commercial practices

by others is regarded as an unfair practice and a violation of the trade secret protection.

In the food and beverage, I cannot register the receipt with a patent. And I can only use the trade secret (like

Cola-Cola). Because if I want to prevent the others to copy the receipt, I need the trade secret. It is a neglected

category because you apply it when you cannot obtain a patent protection, but it is very important as well.

Sometimes the companies, even in presence of the chance to register a patent, they consider very carefully the

situation and they decide to maintain the secret.

Also, the list of the clients can be considered as a trade secret, because it takes years for a company to have a

huge list of clients, and it would be a problem is this list goes in the hands of a competitor. 3

FASHION LAW

Fashion law is a specific field of law that deals with legal issues that impact the fashion industry. Fundamental

issues in fashion law include intellectual property; business and finance, with subcategories ranging from

employment and labour law to real estate; international trade and government regulation, including questions

of safety and sustainability; dress codes and religious apparel; consumer culture; privacy and wearable tech;

and civil rights. Fashion law also includes related areas such as textile production, modelling, media, and the

cosmetics and perfume industries.

https://www.qmul.ac.uk/law/media/law/docs/undergrad/03-Buchalska.pdf

Fashion law is the legal specialty that addresses the legal issues typically faced by fashion companies and

fashion designers. As with other specialties at the intersection of business law and intellectual property…

fashion law is actually a compilation of legal disciplines. Thus, fashion law incorporates relevant concepts

from intellectual property contracts, corporate law, commercial sales, real estate, employment, advertising law

and international trade and customers, among others.

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Conclusion of the article The subject-matter of this presentation is to answer the question: “is fashion law

a new approach?”. It is incontestable that fashion law has a huge impact on our economy and society. The

fashion industry is an industry of contradictions; it is both creative and derivative, artistic and commercial,

innovative and nostalgic. In that sense, although a creative industry, it is still an exceptionally commercial

industry, driven by consumer demand across a wide spectrum of tastes, behaviours and income levels.

FASHION LAW & IP

The fashion industry is a global phenomenon with an international language understood by millions of people.

Fashion is one of the world’s most creative and inventive industries around the world.

WIPO: WORLD INTELLECTUAL PROPERTY ORGANIZATION

It is an international organisation, an agency incorporated under the United Nations. The headquarter of WIPO

is in Switzerland but with worldwide competences. à

- https://www.youtube.com/watch?v=qzKjahXHm80 from the UK intellectual property office.

Nowadays for everyone is a good strategy to have a trademark to promote his/her activity on a social

media for example. It doesn’t matter the dimension of the company, but it is very important to have a

knowledge of the use of the IP rights if you want to start up even a small business. In particular in the

fashion sector it is crucial to start with a clear strategy about the protection of the IP rights. Just to give

you an example, before adopting a trademark today, it is very important to make “availability searches”

in order to observe if a trademark is available, because if you start adopting a trademark which is

overlapping with another trademark, or with a one that can create confusion with your trademark, it

can be very dangerous for you and for your activity, because the owner of the earlier trademark has

the right to stop your use of the trademark and to obtain from a judge an injunction to order you to

stop using that trademark and to adopt a different one. 4

COPYRIGHTS PATENTS TRADEMARKS + (INDUSTRIAL) GEOGRAPHICAL TRADE

DOMAIN NAME DESIGN INDICATIONS + SECRETS

+ COLLECTIVE APPELLATIONS

AND OF ORIGIN

CERTIFICATION

TM

CHARACTERISTICS Rights that Innovation Regulation EU Ornamental or Sign used on goods IP rights on

creators have and 2017/1001: any sign aesthetic aspect that have a specific confidential

over their literary technology, (letter, number, of an article geographical origin information

and artistic works it is an colour, shape and possess which may

(books, music, exclusive packaging, sound), qualities, reputation be sold or

database, adv, right granted capable of or characteristics licensed.

computer for an distinguishing the essentially Neglected

programmes) invention good or services of attributable to that category,

one enterprise from place of origin. you apply it

those of competitors Commonly includes when you

and being the name of the cannot

represented on the place of origin of obtain a

Register of EU the goods. patent

trademarks enabling DOC, DOP, IGP, protection.

authorities to DOCG, Made in List of

determine the Italy. clients.

matter of

protection. Do not

describe what you

sell. Help produces

to retain their

customers, making

themselves

recognizable. So

legal rights and

marketing tool.

IP RIGHTS No registration, it Registration Registration + n Registration + No

is sufficient the non registered TM non registered registration

creation of the design

work

WHEN IP ARISES Creation of the When I fill when I fill the When I fill the Control of

work the application for application for information

application registration + I start registration + I

for using the TM for start using it for

registration unregistered TM unregistered

ones

MAIN Original, Absolute Relative novelty, absolute novelty, Information

REQUIREMENTS fixed in a novelty (prior distinctive individual under the

tangible medium art), character (not character (= control of

of expression inventive origin of a product), inventive step), the owner,

(tangible work of step lawfulness (not visibility Information

art) (specification infringe the law) (applied on not

of novelty) external part) disclosed

industrial

applicability

(no work of

arts)

TERMS OF 70 y from the 20 y from the 10 y from the 25 y for Until the

PROTECTION death of the application, application, registered information

author no not renewable design, remains

renewable, 3 y for non secret

public registered design

domain after from when first

30 y made available

to the public 5

IP RIGHTS When we see a circular shape, we are talking

about a kind of right that doesn’t need

registration, like copyright and trade secrets.

When we see the rectangular shape, we need

registration, like patents (that need

registration without any doubts), trademarks,

where the most part of the area is the

registered one, but we also have a circular

shape inside, for non-registered trademarks.

In the scheme we also have another category:

the domain name. Today, every company has

the need to have a website and it is very

common that the word to access that website is the same as the trademark, and it is called domain name. It is

the technological version of the trademark and it is very important for every company to have an identity on

the Internet. So, when we c