United Kingdom: Legal Protections for Fashion

The Copyright, Designs and Patents Act of 1988 (hereinafter, “CDPA”) protects “original literary, dramatic, musical or artistic works, sound recordings, films [F1 or broadcasts], and the typographical arrangement of published editions.” (Legislation.Gov). Aspects of a fashion design can be protected under section 4 of the CDPA as an artistic work, more specifically as a graphic work, which includes paintings and drawing. (See CDPA; “Artistic Works” is an enumerated category in the list of protected subject matter through copyright, and includes “sculptures … irrespective of artistic quality” and “works of artistic craftsmanship.”). Thus, if an original work appears on a garment or accessory, that work (whether it be a print or a pattern) is granted copyright protection. Moreover, textile and fabric designs benefit from copyright protection.

The actual design of a coat or dress, however, in its entirety as a garment does not receive protection under the CDPA. Thus, much like the Copyright Act in the U.S., the CDPA does not protect garments in their entirety. The World Intellectual Property Organization describes the disparity in protection, stating, “Logically, a work of fashion should be an original artistic work. Case law, however, does not favor this argument as garments and other works of fashion do not fall neatly into any of the listed sub-categories of artistic works.” (WIPO).

The landscape for protection for fashion designs in the UK changed quite a bit in the late 1990’s and the early 2000’s as a result of the passage of two European Union regulations: the Directive 98/71/EC of the European Parliament and of the Council 13 October 1998 (hereinafter “European Designs Directive”), which harmonized standards for eligibility and protection of most types of registered design, and the Council Regulation 6/2002/EC of 12 December 2001 on Community Designs (hereinafter “Community Designs Directive”), which introduced a unified system of industrial design rights for both registered and unregistered designs throughout the European Union.

Under the European Designs Directive, a design is defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.” (Directive 98/71/EC of the European Parliament and of the Council 13 October 1998, Art. 2). Such designs may only be protected if they meet the novelty and “individual character” requirements. (Id. at Art. 3(2) (“A design shall be protected by a design right to the extent that it is new and has individual character.”)). Under this standard, “individual character” is gauged by whether “the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before.” (Id. at Art. 5(1)). Moreover, “the degree of freedom of the designer in developing the design shall be taken into consideration.” (Id. at Art. 5(2)). If a design meets these requirements, it is entitled to protection for a term of five years, which may be renewed up to a maximum total of twenty-five years. (Id).

The Community Designs Direction, which was enacted in 2002, allows for the protection of unregistered designs, as well as registered designs, thereby, creating a unitary system for designers in the UK and the EU as a whole. In accordance with the Community Designs Direction, a design is protectable in two different ways: as a registered Community design (“RCD”) or as an unregistered Community design (“UCD”). (OAMI). Protection under the UCD system is automatic (and vests in an original work much like copyright protection in the U.S. vests automatically in an original work that is fixed in a tangible medium), whereas protection as a RCD requires registration with the Office for Harmonization in the Internal Market (“OHIM”). In addition to practical differences in terms of obtaining protection between the UCD and RCD systems, the duration of protection varies between the two. UCD protection lasts three years “from the date on which the design was first made available to the public within the Community.” (See Community Design Regulation, art. 11(1) (titled “Commencement and Term of Protection of the Unregistered Community Design”)). A design that is registered in accordance with the RCD system enjoys protection for a renewable period of 5 years, with a maximum duration of 25 years from filing the corresponding application. (Id. art. 12 (titled “Commencement and Term of Protection of the Registered Community Design”)).

Under this system, both UCD and RCD protected designs are defined as “the appearance of the whole or a part of a product resulting from the features of . . . the lines, contours, colours, shape, texture […] or its ornamentation.” (Emma Yao Xiao). Such “design rights” are afforded designs that are: 1) “novel,” meaning that there are not any identical designs on the market, and 2) have “individual character,” which is gauged by whether “the overall impression, from an informed user’s point of view, is different from other designs available to the public.” (See Council Directive 1998/71, art. 5, at 30. 1998 O.J. (L 289) 28, 30 (EC)).

Practically speaking, this protection coupled with the “establishment of specialized courts in every European member state that have exclusive jurisdiction in respect of Community trademark and design infringement, and can make decisions that cover the entire European Union,” enables garments and accessories to be afforded protection in their entirety, differentiating this standard from any potentially similar protection afforded in the United States. (ABA). As such, under this system, designers may file lawsuits against copyists with are ripping off their work. For instance, in 2005, UK-based retailer, Monsoon was able to file suit against fast fashion retailer Primark, for allegedly copying an array of its original designs, including two skirts, swimwear, trousers, a scarf, and patterned socks, which were protected as unregistered designs. (Hemphill, Suk). In 2007, Karen Millen won its lawsuit against Dunnes Stores & Anor, in which Millen alleged that the defendant copied the unregistered designs of three women’s shirts. (Karen Millen Ltd. v. Dunnes Stores & Anor. 2007 No. 15 P, 2007 No. 16 P, 2007 No. 20 COM, 2007 No. 21 COM (21 December 2007)).

Changes Post-Brexit

The Withdrawal Agreement covers the changes set out above in relation to RCDs and International Trade Marks (EU). Other changes were made to UKlegislation on designs and trade marks for the effective administration and implementation of re-registered designs and comparable rights. The primary UK legislation on registered designs is The Registered Designs Act 1949. There is also secondary legislation, mainly contained within the Registered Design Rules 2006, together with amending and standalone regulations. RCDs and UCDs are defined by Council Regulation (EC) No 6/2002 on Community designs, PDF 150KB. Registered and unregistered Community designs both have effect in the UK. The Community Design Regulation has been amended to apply the Hague System for the international registration of industrial designs to the EU. Separately, the Registered Designs Act has been amended to apply the Hague System to the UK as an individual country. UK legislation on trade marks is primarily contained in the Trade Marks Act 1994. Secondary legislation appears in the Trade Marks Rules 2008 and other amending and standalone regulations.