image: Louis Vuitton image: Louis Vuitton

In the past year or so, Yves Saint Laurent has been issued 27 design patents. Louis Vuitton has been issued at least 17, and Balenciaga 10. Since Raf Simons took the helm of Christian Dior (and subsequently left 3 and a half years later), Dior was granted 17 garment/accessory-specific patents; this number does not take into account patents issued in connection with its fragrance collection. Bottega Veneta has been issued 8 in recent years; Celine, 5.

The use of design patent protection is certainly not a new tactic, as brands have been utilizing such protection for decades. However, it seems that many have begun to rely significantly on this form of protection, which extends to the “new, original, and ornamental design for an article of manufacture,” only in relatively recent years.

In short, design patents protect the appearance of a functional item, such as a purse or shoe, but not the functional item itself. Because neither trademark nor copyright law tends to extend to garments and accessories in their entirety, copying is almost entirely legal in the U.S., save for this protection afforded by design patents. Hence the increasing reliance on this form of protection, which provides the owner with the right to prevent others from making, using, or selling a product that so resembles the patented product that an “ordinary observer” might purchase the infringing article, thinking it was the patented product.  Such protection lasts for between 14 and 15 years, depending on the date of filing.

While the Gucci brand, for instance, has long relied on legal protections to ward off copiers of its designs, (including design patents, some of which date back to the 1970’s), Kering, as a whole, has been somewhat less aggressive in its protectionist tactics than rival conglomerate LVMH, which has been particularly hard-hitting in its protection and litigation efforts. In connection with the Louis Vuitton brand, for instance, LVMH has been coined by many as a “trademark bully” as a result of its determined efforts to address and prevent the unauthorized use of its valuable intellectual property rights, which include a significant array of design patents, in addition to the more common copyright and trademark protections.

While certainly viewed as less controversial protectors of their intellectual property rights, it is worth noting that traditional luxury companies, such as Rolex, Hermes, Tod’s, and Cartier, as well as more fashion-oriented brands like Christian Louboutin (which is actually a rather aggressive enforcer of its IP rights, considering the war it waged against YSL in 2012), Alexander Wang, and Balenciaga, have been particularly active in the design patent arena in the past five years or so.

Kering has, of course, begun to grow its holdings, as well. The newly issued YSL design patents join a larger roster of patents that YSL, Gucci, Bottega Veneta, and Balenciaga – the latter of which acquired one of its first patents in 1977 and was quite vigilant in protecting its design during Nicolas Ghesquiere’s tenure – have acquired in recent years. This growing patent portfolio highlights Kering’s increasing reliance on this form of protection to supplement its existing trademark and trade dress protections in the U.S.

As for why, exactly, the conglomerate – and Saint Laurent, in particular – has opted to begin building its design patent portfolio somewhat aggressively in recent years in the U.S., Aude de Margerie, General Counsel of Saint Laurent, says that increasing success and global visibility has called for a greater need for expanded forms of protection: “Our brand has been more and more successful in the last years. We have been faced with more and more IP infringements and hence have had to increase our legal protection and actions – on a worldwide scale. IP protection is evidently key in such a challenging moment for our Brand.”

Certainly worth considering is the fact that with the corporatization of such fashion brands, largely under the watch of the well-known industry conglomerates, comes increased international growth and the need to utilize protections that are fit with the various regional protections schemes. In the U.S., this means taking into account the relative lack of protection provided for useful articles, such as garments and accessories, that is offered under the umbrella of copyright law.

De Margerie says this is very much a part of YSL’s protection strategy: “In the U.S., relying on registered designs is a highly efficient and often immediate means of protection to enforce our rights. Unlike in Europe, there is no equivalent legal grounds of action based on unregistered design and/or ‘parasitisme’/unfair competition, which allows us to defend our House against systematic copies or other imitations of our products. Moreover, as you certainly well know, the Berne Convention [an international agreement governing copyright protection] protecting authorship rights (‘droits d’auteur’) is not very well used in the U.S., whereas in Europe and more specifically, in France, it grants a strong protection on any creation reflecting its author’s personality.”

Finally, Kering’s acquisition activities – including those with Bottega Veneta, Balenciaga, Stella McCartney, Alexander McQueen, Puma, Brioni, Christopher Kane, Ulysse Nardin, all of which occurred within the past 15 years – have spurred increased reliance on IP protections. “Our adoption of new brands a few years ago has been of course a strategic decision which implied strong IP protection actions worldwide notably to prevent as much as possible fraudulent TM registering/use among other legal challenges,” say de Margerie.

While statistics are not available for fashion-related design patents alone, design patent filings as a whole have been increasing since the 1960’s. In the past several years, the number of design patent filings has been growing by at least 1,400 filings each year, with a particularly notable rise of 3,719 filings between 2014 and 2015.

It is also worth noting that while design patents have proven useful for some, and have garnered attention in recent years due to the high-profile, high-stakes legal battles between Apple and Samsung over smartphones and tablets, industry leaders in the U.S. have continued to push additional forms of protection that are easier and cheaper to obtain. Such efforts have come in the form of seeking expanded copyright protections, as demonstrated by the various proposed bills in the vein of the Innovative Design Protection Act and its predecessors and the lobbying efforts of the Council of Fashion Designers of America (“CFDA”) and the American Apparel and Footwear Association. More recently, the amicus brief filed on behalf of the CFDA in the Star Athletica v. Varsity Brands case, pushes for increased copyright protection for fashion designs.

(Note: Professor Sarah Burstein’s blog, Design Patent Lookbook chronicles recently issued design patents).