Now fashion week is over, what is next for your designs?

We’ve watched the new collections strut down the runway, but now that fashion week is over, what should designers be thinking about in terms of IP protection?

One of the most important things to note about registered design protection is that in the UK, you must get your application filed within 12 months from the date you first disclosed your design on the market – a catwalk show would satisfy this test and start the 12-month clock running. So if you first disclosed your designs at fashion week, then the window for obtaining valid design protection in the UK will expire 12 months from the date on which your catwalk show took place.

If the designs were disclosed prior to the catwalk show i.e. in marketing materials or advertising, then the 12 months will start from that date instead.

Unregistered design protection happens automatically from first disclosure, but offers a different scope of protection and comes with different timescales.

It is also worth noting that once your design is disclosed in the UK, it might also prevent you from obtaining registered design protection in other territories if the design regime in those countries does not allow for disclosure of designs prior to filing. One of these territories is China. China doesn’t have a grace period like the UK. So, if you are planning on manufacturing here then this is something to be aware of. Other countries may also have the same rules as China, or have a shorter disclosure window, so it is always worth bearing in mind when creating designs. If in doubt, think about contacting an attorney for clarification.

If you require design protection in China, you should ensure you file your application before disclosing your design anywhere in the world.

Disclosure

1. If you first disclose your design in the UK at London Fashion Week, this will trigger the 12-month window to register your design in the UK. However, this will also trigger the 12-month window in other territories. Disclosure is more industry specific than geographical. Meaning that once your design walks the runway in London Fashion Week, not only does the timer start for the UK, but any other territory where it is feasible that your design may have been viewed by people within the fashion sector. To make sure that you are protected in territories of interest, it is important to look into disclosure windows before disclosing your design that you wish to seek registered protection of (especially if those territories have the same disclosure rule as China).

2. Unregistered design rights are generated automatically in the UK and are more geographical. If you show your design in the UK, then you obtain unregistered UK design rights. If you show your design in the EU, then you get unregistered EU design rights. However, if you disclose your design online, it is debatable what territorial protection you have, and there is an argument that you would have both.

3. UK unregistered design rights exist from the date of creation or from when first sold. They are only for 3D designs, and not for surface decoration.

4. Supplementary unregistered design rights exist from the date you make the design public in the UK. This protects the appearance of a design which can be 2D or 3D – such as the shape, colours, texture and ornamentation.

As we said before, disclosure can be different in different territories. Not everywhere has the same rules as the UK. So, it is always best to bear this in mind (and talk to an attorney if necessary) when thinking about design protection.

Even brands get it wrong sometimes

Even well-established brands can get tripped up by disclosure, resulting in them losing their registered design protection. One such example is Puma.

On 26 July 2016, Puma SE filed a Registered Community Design (RCD) for the Puma ‘Creeper Sneaker’ for “shoes”. This was registered and the company obtained registered protection for the design in the EU.

However, in 2019, the Dutch B2B company Handelsmaatschappij J. van Hilst BV (Handelsmaatschappij) filed invalidation proceedings against the registered design claiming that the design lacked novelty and individual character due to the application for the trainer design not being filed within the 12-month window.

This particular shoe had been designed in collaboration with Rihanna. Therefore, there had been a lot of hype and social media marketing pre-launch. Handelsmaatschappij submitted images from Rihanna’s Instagram account as evidence of the shoes being disclosed outside of the 12-month window. These images showed Rihanna wearing the shoes on 16 December 2014 at an event announcing that she had been appointed creative director of Puma.

Handelsmaatschappij’s challenge was successful, resulting in Puma’s design being declared invalid. This means they lost their registered rights to the design.

This case is an important reminder to keep an eye on the date of first disclosure and remember that pre-launch marketing can count as disclosure for the purposes of registered design protection. It is also important to note that it doesn’t have to be you as the designer who discloses the design: it could be an influencer, a fellow co-designer etc. In a world where everything is online, it's more important than ever to make sure you know when the design is disclosed and obtain protection as soon as possible after this date.

In fact, ideally, we would advise clients to register the designs before they are disclosed. The designs can be kept off public record by deferring publication, so if they need to be kept confidential, this can be done but at least the design is protected before any disclosure has taken place.

Registered protection

As we mentioned before, a design must (1) be novel and (2) have individual character. Although the UK Intellectual Property Office (UKIPO) does not check applications for these things, third parties are able to file invalidation actions against registered designs on this basis.

Design protection is not afforded to aspects of products which are solely technical. The more your design stands out in the industry, the easier it is to protect it as a design and to successfully enforce the design right against third party products which create the same overall impression.

If you choose to obtain design protection, we advise seeking professional assistance to ensure you file the correct designs. Although design applications are not examined, and so are easily obtained, if you do not include the correct images you could end up with a registration which is not able to stand up to test when you come to enforce it.

The UKIPO and EUIPO have guidance on what to file, but it is always best to get an attorney to check these over.

Unregistered protection

Registered design rights are easy to prove, as you have a registration certificate, but what about unregistered protection? The key to this, as with most unregistered IP rights, is evidence!

To prove that you have unregistered design protection you need to have evidence showing;

• When the design was created;
• That you own the unregistered rights;
• The date and place of first disclosure; and
• That the design was novel and not commonplace in the industry at the time of creation.

When it comes to protecting your unregistered design rights, on top of the above you also need to have evidence showing;

• That the relevant industry would have been aware of your unregistered design once disclosed; and
• How the other party has copied your design.

This is easier said than done, and evidence needs to be gathered from the outset. Some designers choose to get designs signed and dated certified; others choose to keep bundles of the design process until the protection ends.

The length of protection depends on the type of unregistered design, so it is important to check what your rights are. And as we mentioned before, there is also a caveat in the UK which states you must allow other people to use your design in the last five years of protection if they ask (“licence of right”).

However, although unregistered design rights are hard to rely on, they can be beneficial because you can define the scope of your unregistered design right to deal with the specific infringement at issue – such as just electing part of a product, whilst a registered design is limited to the scope of the registration. With unregistered design rights you can claim rights on any aspect of your design - so this does make it a flexible right.

As with all IP, it's always good to talk to a professional when it comes to protection.