the paradox of fashion - franco-british lawyers society...the paradox of fashion nathalie dreyfus...
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The paradox of FASHION
Nathalie DREYFUS
Dreyfus CEO
Trademark attorney
Expert to the WIPO Center of Arbitration and Mediation
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris, France1
Design and copyright in France• France is one of the countries that gives the highest level of protection to creators.
• France is one of the foremost countries for the filing of designs.
• 856 international Designs (4th country).
• 3rd applicant country
for Community Designs.
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris2
Infringement in the world
• A few statistics:
– 103 million counterfeit articles stopped
at EU borders in 2010
– 8% of these articles were labels, tags
and emblems
– 7% related to clothes
– Tens of millions of articles are transported by
EU citizens who are not aware that they actively
participate in counterfeit trafficking
This is why fashion needs protection for its investment!
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris3
Looking for the 7 differences
• Common belief: 7 differences between the designs = no infringement
• False: counterfeiting is determined by the similarities between the designs and not by the differences.
– Copyright: Paris Court of Appeal, February 8th 2013, Ash Distribution v. Christian Dior Couture
– Design: Paris Court of Appeal, February 27th 2013, My Pant’s v. Mango France
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris4
CA Bordeaux, June 17th 2013, CREA MODE DISTRIBUTION v. Coline diffusion:
CREA’MODE DISTRIBUTION distributes a saroual with loops of different colors under the «YokiiAccessoiries» trademark. In 2008 COLINE DIFFUSION filed a saroual design at INPI without different colors for the loops (DAYTONA model).
CREA’MODE DISTRIBUTION sued COLINE DIFFUSION before the Bordeaux regional court for design infringement.
VS
Looking for the resemblances and not the differences
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris5
France: Copyright and Design Law regulation
Copyright
Texts :
French Intellectual Property Code: First book
- The Berne Convention: September 9th 1886
- Agreement in trade-related aspects of intellectual property rights (TRIPs): January 1st
1995
Design
Texts :
French Intellectual Property Code: Fifth book
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
- The Locarno Agreement: October 8th 1886- The Union of Paris Convention: March 20th 1883- EU Community Designs Regulation 6/2002 & EU Regulation 2245/2002- TRIPs- La Haye Agreement for the registration of Community designs: November 6th 1925
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Copyright
What is protected:
Intellectual work (independently of its form or stage of completion)
Work mediums
Ideas and creations that are purely functional cannot be protected by copyright.
Design
What is protected:
Shape and appearance of innovative products
Two dimensional designs: sketches, drawing…
Three dimensional models: clothes, shoes…
Copyright and Design Law in France
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris7
Copyright
Conditions of protection:
Original work (no protection for ideas)
What kind of protection?
Against plagiarism by considering the common points between the two creations
Against any complete or partial performance or reproduction made without the consent of the author or of his successors
The same shall apply to adaptation or transformation, arrangement or reproduction by any technique or process whatsoever.
Design
Conditions of protection:
- Novelty
- Individual character
What kind of protection?
Against Designs that are identical (copying)
Against Designs with minor differences which do not create a different overall impression
overall impression is taken into account
Copyright and Design Law in France
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris8
France: Copyright v. Design
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Copyright
Formalities:
Copyright protects intellectual work automatically from its creation
Protection at low cost without formality
Design
Formalities:
Filing of Designs at the French Trademark Office (INPI)
Filing and renewal costs
The simplified application procedure
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Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Copyright Design
Patrimonial rights Representation right: the communication of the work to the public by any means
Reproduction right: the fixing of the work in a material form
There are Moral rights
Right to present
Right of "paternity" of the work
Right to the integrity of the work
Right of withdrawal
Copyright and Design Law
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Copyright and Design Law
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Copyright
Fashion is protected undercopyright:
Protection lasts for the lifetime of the author and continues for 70 years after his death.
Design
Fashion is protected underregistered Designs:
Protection for 25 years per 5-year period
Fashion is protected under unregistered Designs:
Protection for 3 years
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How is infringement assessed? Judges take into account the likelihood of confusion for the
consumers
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Copyright
Who is the consumer?
Average consumers
Paris Court of Appeal, February 6 2013, MEDIA 3000
Design
Who is the consumer?
Qualified consumers who can perceive the similarities between two designs or models, more aware than average consumers
Supreme Court (Cour de Cassation), April 3 2013, Coline Diffusion:
Greater attention to detail for theseconsumers
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How to defend fashion through Copyright in France?
• What do I need to prove in order to defend my rights
Copyright
- Proof of existing rights
- Proof of originality
- Presumption of the author’s identity
- Proof of the existence of similarities between models.
In defense, it must be proven that the similarities existing between the two models arise fromeither:
- A chance meeting
- Recollections from a common source of inspiration
- Current fashion trends
- The public domain
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris13
• Yves Saint Laurent sued Ralph Lauren, accusing thecompany of copying a black tuxedo dress that Mr. SaintLaurent first created in 1966 and showed again during thehaute couture autumn collections for 1991-92.
No protection for the common features: buttons, pockets ordecorations
«The originality of Yves St Laurent’s creations is the style oftheir cut»
Paris «Tribunal de commerce», 18 May 1994, Yves StLaurent v. Ralph Lauren
France: Example of protection by Copyright Law
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris14
How to defend fashion through Designs in France?
• What do I need to prove in order to defend my rights
Designs
Proof of rights ownership for the design
Proof of the novelty of the design
Proof of unique character for the design
Proof of the reproduction of essential technical characteristics
Proof of the existence of the same overall impression
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris15
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
France: example of protection by Design law
Paris High Court, May 23 rd 2013 Société Carven vs. Société Prada
CARVEN: owner of a model of shoes registered in 2011
Counterfeit claim against PRADA / PRADA demanded the nullity of the CARVEN model
VS
Carven model Prada model
On the validity of the CARVEN model:- Novelty recognised- Unique character recognised
On the counterfeit claim:
The overall visual impression produced by these two models of shoes is therefore deemed to bedifferent and CARVEN’s claim for counterfeit was not upheld.
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Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Recap
Combination is possible: Copyright , Designs and Trademark protection.
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Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Is the Know-how protectable?Paris Court of Appeal, September 14th 2012, World Tricot v. CHANEL:
Recognition of owner’s rights on embroidery
Acts of CounterfeitThe visual comparison of the sample of the original model and the CHANEL jacket. The purpose ofthe jacket: a straightforward copy of the sample!
Chanel was sentenced for "counterfeiting" the patternof a small subcontractor, World Tricot. The decisionfinalizes a seven-year showdown between the WorldTricot small business and the luxury giant on the issue ofintellectual property of the manufacturers.
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Protection of fashion through Trademarks• Trademarks have different functions and help to distinguish the
brand:
They are proof of a product’s origin
They guarantee the quality
They help promote the brands
They give the trademark owner, an exclusivity on the sign
• Trademarks stay in consumers’ minds and enhance “selling power”: they make consumers “want” to buy the products.
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris19
Protection of fashion through Trademarks?
• Counterfeiting has an effect on the most important functions
• However, protection through trademarks is not absolute
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris20
• French High Court, May 30 2012, Louboutin v. Zara
Christian Louboutin registered trademark representing a "red sole of a shoe" in 2001
The French Supreme Court held that the French Designer Christian Louboutin’s trademarkregistration was invalid and rejected the argument of confusion.
• Federal Court of United States, September 5th 2012, Louboutin vs YSL Greater flexibility in appreciating the validity of the sign
Red sole may be protected by trademark if it contrasts with the color of the shoe itself.
Protection by trademark
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris21
Who can act to defend Fashion in France?
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Copyrights
– Author, co-author, his/their rights holders
– The company which initiated the creation
Designs
– Creator, transferee, co-authors, licensee
– Presumption of ownership for the design user
Trademarks
– The applicant
– When co-ownership, each owner must act in conjuction with the others the absence of particular co-ownership rules
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Where to initiate an action in France?• Before which jurisdiction?
Principle for Trademarks, Designs and Copyright
High Court of Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Fort-de-France and Strasbourg (implementing decree n° 2010-1369 of November 12th 2010).
Exception for Community Designs and Patents:
High Court of Paris, regardless of the counterfeiting
location
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris23
Fashion on the Internet
• Be careful of your presence on the Internet
Social networks can be seen as showrooms for creators but they are also an open window for counterfeiters
Google Adwords can be used by counterfeiters to misdirect consumers to websites selling counterfeit products and to benefit from reputation and goodwill.
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris24
Fashion and the new gTLDs Success of the new gTLDs program
1,930 applications
Every continent, every sector of activity, every type
Hundreds of new actors should communicate even more about the new gTLDs program during the 2nd semester of 2014
- The number of TLDs available for registration will at least double in 2014.
A very great number of new gTLDs could be of interest for a fashion brand. To register a domain name like these could be a key opportunity to develop your fashion business through the Internet.
Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris25
Conseils en Propriété Industrielle 78, avenue Raymond Poincaré, 75116 Paris
The Trademark Clearing House (TMCH)
The Trademark Clearing House (TMCH) is a general database for registered trademarks open since March 26th 2013.
TMCH has 2 important functions:
Sunrise period
Trademark Claims Service
AN IP specialist will help you redefine your strategy and prioritize steps to take
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Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Recap and strategy
A balance between protection and defense
• Awareness of the cybersquatting infringement: watch the new internet landscape
Dreyfus offers monitoring services on its internet platform Dreyfus IPweb®
• New approach regarding cybersquatting as new gTLDs have a meaning:
SEO (Search engine optimization) opportunities
Business opportunities
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Trademark attorneys 78, avenue Raymond Poincaré, 75116 Paris
Thank you for your attention
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