"luxury and intellectual property" - course done at hec, paris

HEC Luxury Certificate – 26 May 2014

Intellectual property & the fight against counterfeiting in the luxury sector

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How and why is intellectual property (IP) the foundation of a sound luxury business?

Intellectual property & the fight against counterfeiting in the luxury sector

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What are intellectual property (IP) & IP rights?

Author

Creativity/

Innovation

Society

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Which IP rights are available to luxury houses?

PATENT

CONFIDENTIAL INFORMATION

TRADE MARKS

PASSING OFF

COPYRIGHT

MORAL RIGHTS

UNREGISTERED DESIGN RIGHTS

REGISTERED DESIGN

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What are the remedies for IP infringement?

REMEDIES

FINAL REMEDIES

PECUNIARY

ACCOUNT OF PROFITS

DAMAGES

NON PECUNIAR

Y

DECLARATION

DELIVERY UP

COURT ORDER REVEAL

RELEVANT INFO

INJUNCTION

INTERIM REMEDIES

INTERIM INJUNCTION

S

EX PARTE ORDERS

SEARCH ORDER

FREEZING INJUNCTION

WITHOUT OR ON NOTICE

PROCEEDINGS

CRIMINAL SANCTIONS

THREATS

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How do these IP rights get used in the luxury goods sector?

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Patent law

Katerina Plew v Victoria’s Secret

PATENT

INVENTION

NOVELTY

INVENTIVE STEP

INDUSTRIAL

APPLICATION

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Trade mark law

• Conventional trade marks• Non-conventional trade

marks

TRADEMARK

CLEAR

PRECISE

SELF-CONTAI

NED

EASILY ACCESSIBL

E & INTELLIGIB

LE

DURABLE

OBJECTIVE

• Christian Louboutin v Zara• Christian Louboutin v Yves

Saint Laurent

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Trade mark law

Unfair advantage?

Detrimental?

Yes!

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Passing off

• Goodwill• Misrepresentation• Damage

Rihanna v. Topshop

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Copyright law

• The idea/expression dichotomy

• Originality• Fixation & tangibility

COPYRIGHT

LDMA/PRIMARY WORKS

LITERARY WORKS

DRAMATIC WORKS

MUSICAL WORKS

ARTISTIC WORKS

ENTREPRENEURIAL/

SECONDARY/DERIVATIVE

WORKS

SOUND RECORDING

S

FILMS

BROADCASTS

TYPOGRAPHY RIGHT

• Thierry Berthelot v Van Cleef & Arpels

• Ownership of copyright & the employee author

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Design law

• European directive on the legal protection of designs (1998)

• European regulation on community designs (2002)

• North American Innovative Design Protection Act (IDPA)

REGISTERED

DESIGNELEMENTS•DESIGN•NOVELTY•INDIVIDUAL CHARACTER

•EXCEPTIONS TO REGISTRATION

INFRINGEMENT

PROTECTION OF SPARE

PARTS

SECONDARY

DESIGN RIGHT

REQUIREMENTS•A DESIGN•QUALIFICATION OF THE DESIGN

•ORIGINALITY•DESIGN MUST BE RECORDED

•DESIGN MUST NOT BE EXCLUDED

OWNERSHIP

INFRINGEMENT• PRIMARY• SECONDARY• EXCEPTIONS

REMEDIES

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Position statement

Is it preferable for luxury goods companies to protect their IP rights from the inception of their newly created products & services?

Should luxury businesses allocate substantial resources for the registration of appropriate trade marks, patents, designs, copyrights, etc.?

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Case study: Gucci v Guess

Intellectual property & the fight against counterfeiting in the luxury sector

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The dark side of success: counterfeiting, the fight against it, regulating e-commerce & consumer protection

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Counterfeiting: a problem?

What?

Where?

By whom?

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Does counterfeiting cause any damage?

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How does a luxury house keep products from being counterfeited?

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How to address the sale of counterfeits online?

Best practices

for Marketplac

e Sites

Best practices

for Shopping

SitesBest

practices for Search

Sites

Best practices for Payment Service Providers (PSPs)

Best practices for Trademark Owners

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Position statement

Do you agree with Patrizio Bertelli, Prada CEO and Miuccia Prada's husband, that counterfeiting organisations are good for business, because they create jobs and also give additional fame and appeal to companies which goods are counterfeited?

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Conclusion

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IP law & luxury course @ HEC Luxury Certificate:

Intellectual property & the fight against counterfeiting in the luxury industry

Annabelle Gauberti

Founding partner

annabelle.gauberti@crefovi.com

@Crefovi on Twitter