Yves Saint Laurent has won an eight year-long legal battle with Swedish fast fashion giant, Hennes & Mauritz (better known as H&M). The action stems from YSL’s Tribute Tote, a sleek shoulder bag with a “Y”-emblazoned luggage tag, which rose to “it” bag status in 2007 or so, a year after Yves Saint Laurent SAS filed to protect the design via an application for registration of a Community design with the Office for Harmonisation in the Internal Market (“OHIM”). Enter: H&M. In April 2009, the Swedish retail giant filed an application for a declaration of invalidity with respect to YSL’s Tribute designs, claiming that the bag has no individual character, as required by the corresponding European Council Regulations. (Articles 4 to 9 of Regulation No 6/2002 and on Article 25(1)(c) to (f) or (g) – in case you were wondering). H&M pointed to an unrelated design that was created prior to YSL’s designs as evidence that the YSL designs lacked the “individual character” required to qualify for Community design rights protection, and as a result, asserted that the OHIM should revoke the design protections that had been granted in connection with YSL’s designs.
In a ruling late last week, dismissing appeals brought by H&M, the Court of Justice of the EU (CJEU) confirmed a lower court’s ruling that YSL’s registered Community design rights in the Tribute designs (pictured above) are, in fact, valid. While the CJEU held that some features of the YSL designs are similar to features of the design referenced by H&M, the court held that there are still “significant” differences between that earlier design and the YSL Tribute designs. Those differences were significant to the extent that the similarities in the YSL and H&M-referenced designs are “insignificant in the overall impression which they produce.” As a result, the court upheld the OHIM’s ruling that the YSL designs “produced an overall impression on the informed user which was different from that produced by the earlier design” and are validly protected designs.
According to intellectual property expert David Woods of Pinsent Masons, the ruling is significant, as it “confirms that it may not be necessary for designers to come up with something radically different to what is already available on the market to qualify for Community design rights protection, and this is especially the case where there are statutory or technical constraints on products that limit the extent of freedom designers have when creating their designs.”
IMAGE COURTESY OF YSL