Fashion Law Series – Part III: Design Patents – A Nice Fit With Fashion

Until recently, design patents were not a form of protection regularly used in the fashion industry. However, given that design patents protect the look and feel or the ornamental aspects of a design, they can be a nice fit with fashion. Like utility patent protection, in order to receive design patent protection, the design must be novel and not obvious. Design patents differ from utility patents though in that the design must be non-functional or ornamental, and design patents are typically faster to obtain than utility patents (i.e., less than 1 year). Even though design patents can issue quickly, it is not typically a recommended form of protection for seasonal or limited-run designs, as the patent may not issue until the design is no longer in the marketplace.

In the United States, a design patent application is not publicly available until it is granted so one can file and not worry about competitors accessing the design too early, especially if the filing is done before the design is formally released in the marketplace. When a design patent is granted, the patent holder has the right to exclude others from making the same or similar design, and not all elements of a design must be protected with a single design patent; a patent holder may receive multiple design patents which may provide more of a thicket of protection than a single design patent may provide.

If the design also may be relevant to Europe, it may be wise to seek a European design registration. European design registrations allow a design owner to file a single application to get design patent protection throughout the European Union. These registrations may protect the appearance of the whole or a part of a product resulting from the features of the lines, contours, colors, shape, texture and/or materials of the product and/or its ornamentation so it can often be a broader form of protection than is permitted under some national systems. Registrations also may be obtained for logos, computer icons, and fictional (e.g. cartoon) characters. Protection is granted for 5 years at a time with four 5-year renewal terms. In contrast to the United States, there is no substantive examination for novelty so it can be fast and simple to get the registration. But like the United States, a European design registration provides the holder an exclusive right to use the design and prevent third parties from using the design without the holder’s permission.

Demonstrating design patent infringement in the United States involves the “ordinary observer” test. The patent holder must show that an ordinary observer would be deceived into believing that the accused product is the same as the patented design. Accordingly, there is infringement if the ordinary observer would be two designs are substantially the same so as to deceive him/her into purchasing one supposing it to be another. So it is the appearance of a design as a whole that is considered when determining infringement and may involve a side-by-side comparison of the designs.

So who is taking advantage of design patent protection in the fashion industry? Perhaps the better question is who is not taking advantage of it. From high-fashion designers such as Christian Louboutin to athletic footwear and apparel designers such as Skechers and Lululemon, the fashion industry is finding design patent protection to be a good fit.

For more information on this topic, please visit our patent service pages.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the patent law firm and its patent attorneys may be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.

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