Authored By: Jagriti Garg
University of Birmingham
ABSTRACT
The world fashion and luxury industry is facing an increased threat of intellectual property infringement, particularly in the fields of counterfeiting and infringement of trademark laws in the virtual world. Intellectual property is an essential tool for the survival of the luxury fashion industry. However, the development of virtual world marketplaces and the use of various social media platforms have seen an exponential rise in the sale of counterfeit goods in the virtual world. The objective of the research article is to assess the effectiveness of the trademark law in the safeguarding of the luxury fashion industry. The article assesses the various international intellectual property laws that govern the various rules and regulations of the trademark law, such as the TRIPS Agreement and the Paris Convention. The article assesses the various international organizations that play an essential role in the safeguarding of the intellectual property laws, such as the WIPO. The article assesses the various case laws that govern the infringement of the trademark law in the case of the luxury fashion industry. The research conducted in the article reveals that the international intellectual property laws are not effective in the safeguarding of the intellectual property laws, particularly the luxury.
INTRODUCTION
Fashion and luxury have grown into one of the most powerful industries in the world economy. Luxury brands symbolise creativity, prestige, and cultural identity. Fashion designers and brands spend heavily on creating individual brand identities in terms of logos, designs, patterns, colors, etc. This allows consumers to easily identify original luxury products with certain brands.
But the achievement of luxury fashion brands has made them common victims of intellectual property theft. Counterfeit luxury products are being created in large numbers across the world, especially through online stores. This has harmed the economic interests of luxury brands. It has also affected consumer trust in original products.[1]
As a result, intellectual property law has a significant role to play in the protection of the commercial value and originality of fashion brands. For example, the law of trademarks protects the identifiers of brands, while copyright and design law may protect the artistic aspects of fashion products.[2] Additionally, international law provides a framework for the enforcement of the minimum standards of intellectual property rights in all countries.
However, the enforcement of intellectual property rights is still a major problem. Globalization and the rise of the Internet have made counterfeiting easy, and the culprits are operating at a global level, which is beyond the jurisdiction of national laws.[3] This article will discuss the effectiveness of the law of trademarks and international intellectual property law in the enforcement of the rights of luxury fashion brands against counterfeiting, together with the relevant case law and the effectiveness of the law in dealing with the challenges in the fashion industry.
BACKGROUND AND CONCEPTUAL FRAMEWORK
Fashion law has been developed as an area of law that incorporates elements of intellectual property law, commercial law, and international trade law. Intellectual property rights are the main mechanism that is used to safeguard creativity in the fashion industry.
Trademark law is an important area in the protection of luxury brands. Trademark law is defined as “any sign capable of distinguishing the goods or services of one enterprise from those of another.” Luxury brands in the fashion industry rely on trademark law to protect their brands. Famous marks such as the Louis Vuitton monogram design or the interlocking logo of Chanel have become synonymous with quality products. They have been recognised as symbols of authenticity.[4]
Trademark law has provided protection to famous marks under the doctrine of trademark dilution. Dilution is defined as weakening of the distinctiveness of an famous mark by the use of a mark that is similar to the famous mark.[5]
Artistic works, such as graphic designs, textile patterns, and artistic embellishments used in apparel, are protected by copyright law. However, since clothing is regarded as a functional item rather than a purely artistic creation, many jurisdictions restrict copyright protection for clothing designs.[6]
Another layer of protection is afforded by industrial design law, which safeguards the shape, ornamentation, and pattern of a product. Fashion designs enjoy varying levels of protection under both registered and unregistered design rights in the UK and the EU.
At the international level, the enforcement of intellectual property rights is facilitated by a number of significant agreements. These include the Paris Convention for the Protection of Industrial Property, which lays the foundation for the principles of national treatment and priority rights.[7] The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is another significant international convention that requires the member countries to ensure the enforcement of a certain level of intellectual property rights.[8]
International organizations that oversee international trademark registration systems and encourage collaboration between states include the World Intellectual Property Organization (WIPO).[9]
LEGAL ANALYSIS
While intellectual property law provides many avenues for the protection of fashion brands, the enforcement of these rights in the fashion industry faces many challenges. Firstly, the fast pace of the fashion cycle is a major problem. Fashion trends are always changing, and new fashion is introduced in the market with the change of seasons. By the time the fashion design is registered, the fashion may have gone out of style.
Trademarks are the most potent legal remedies available for the protection of luxury brands. People buy luxury goods not only for their quality and utility value but also for the status symbol of the brand name. Thus, the brand identity is the most valuable asset of a luxury company.[10]
Counterfeiting is one of the major challenges for the luxury fashion industry. Counterfeiting involves the creation of similar products to the original ones in order to enjoy the goodwill of established brands. These products are available at much lower prices in the market and are mostly sold in the gray market or through the Internet. Economic studies have shown that counterfeiting accounts for a large percentage of international trade.[11]
Moreover, digital marketplaces have further exacerbated the problem. Indeed, digital marketplaces have enabled counterfeiters to spread their fake goods worldwide without facing any sort of regulations. The jurisdictional issues that arise from these digital marketplaces are complex, considering that the parties involved may not necessarily belong to the same jurisdiction. Customs enforcement measures are an important way of fighting the trade in counterfeit goods. Indeed, various countries have allowed customs officials to seize goods suspected of violating intellectual property rights at national borders. The problem, however, lies in the fact that customs officials are often not adequately equipped, and the trade in counterfeit goods is constantly evolving.
International cooperation is therefore called for in the fight against the trade in counterfeit goods. Indeed, the TRIPS Agreement requires that member states put in place enforcement procedures that include civil procedures and border measures for the fight against the infringement of intellectual property rights.[12] The problem, however, lies in the fact that the standard of enforcement differs from one jurisdiction to another, thus becoming difficult for luxury brands to protect their brands worldwide.
A second emerging issue relates to digital fashion and virtual goods. Indeed, digital fashion has seen various luxury brands.
CASE LAW DISCUSSION
There are many important court judgments that establish the application of intellectual property laws in relation to luxury fashion brands.
The French fashion designer Christian Louboutin requested trademark protection for his red-soled shoes in Christian Louboutin SA v. Yves Saint Laurent America Holding Inc. Yves Saint Laurent introduced a monochromatic red shoe with a red sole in along with the colour red[13]. It was decided that this violated Christian Louboutin’s trademark. However, the United States Court of Appeals in the Second Circuit ruled that if Christian Louboutin’s red sole stood out from the rest of the shoe, it might be considered a trademark. This ruling confirms that colours can become trademarks if they become distinctive.
The defendant in Louis Vuitton Malletier SA v. Haute Diggity Dog LLC was accused of replicating Louis Vuitton by selling dog toys labelled “Chewy Vuiton.”[14] But because it couldn’t confuse customers, it was decided that the trademark had not been violated. Another example is Gucci America Inc. v. Guess Inc., in which Gucci claimed that Guess had plagiarised its unique patterns and logos[15]. The court understood a number of Gucci’s trademark claims, but pointed out that proving uniqueness and consumer confusion is necessary for trademark protection. The case highlights how complicated trademark disputes can be in the fashion industry, especially when design elements might seem similar across brands.
These cases show how courts are becoming more involved in determining the extent of fashion brands’ intellectual property protection.
CRITICAL ANALYSIS AND FINDINGS
However, there are certain limitations in intellectual property laws that affect luxury fashion brands.
One of the limitations is that there is no strong protection for fashion designs. This is because clothing is considered a practical item, and hence, innovative fashion designs cannot be protected. The only option available is to use trademarks, not copyrights.
Second, the fashion industry is a global industry. Luxury fashion houses operate in many different jurisdictions, each of which has different laws relating to intellectual property. There is international legislation in place that sets a benchmark, but enforcement is different in different countries.
Finally, fast fashion is another area that has added to these problems. Fast-fashion retailers can easily replicate luxury fashion in a matter of weeks, selling it at a much lower price.
To resolve these challenges, more international cooperation is required. Countries need to improve international enforcement and strengthen customs monitoring of counterfeits. Technological solutions can be employed in monitoring and identifying counterfeits in the virtual marketplace.
Moreover, IP laws have to be responsive to the growth of new and evolving technologies, including AI and virtual fashion. With the rise of virtual fashion markets, the law must address the application of trademark and design rights in the virtual world.
CONCLUSION
The fashion and luxury industry is highly dependent on the protection of intellectual property, and the most effective way of protecting the same is through the protection of trademarks.
International regulations such as the TRIPS Agreement and the Paris Convention are essential in laying down guidelines for the protection of intellectual properties worldwide. The growth of digital trade and fast fashion, however, is putting pressure on the existing legal framework.
International cooperation and the development of effective enforcement procedures will be essential for the protection of the intellectual properties of the fashion industry in the future. A collaborative approach towards the protection of intellectual properties worldwide will go a long way in protecting creativity in the fashion industry.
BIBLIOGRAPHY
Cases
Christian Louboutin SA v Yves Saint Laurent America Holding Inc 696 F3d 206 (2d Cir 2012).
Gucci America Inc v Guess Inc 868 F Supp 2d 207 (SDNY 2012).
Louis Vuitton Malletier SA v Haute Diggity Dog LLC 507 F3d 252 (4th Cir 2007).
Legislation
Trade Marks Act 1994 (UK).
International Treaties and Conventions
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) 1994.
Paris Convention for the Protection of Industrial Property 1883.
Books
Dinwoodie GB and Janis MD, Trademark Law and Theory: A Handbook of Contemporary Research (Edward Elgar 2018).
Gangjee D, Relocating the Law of Geographical Indications (Cambridge University Press 2012).
Journal Articles
Beebe B, ‘The Semiotic Analysis of Trademark Law’ (2004) 51 UCLA Law Review 621.
Dreyfuss RC, ‘The Protection of Fashion Design: A Comparative Analysis’ (2010) 1 Journal of Intellectual Property Law.
Scafidi S, ‘Intellectual Property and Fashion Design’ (2007) 1 Intellectual Property and Information Wealth 115.
Websites
Organisation for Economic Co-operation and Development, Trade in Counterfeit Goods and the Economic Impact of Counterfeiting (OECD 2019) https://www.oecd.org
World Intellectual Property Organization, Understanding Copyright (WIPO 2023) https://www.wipo.int/copyright/en/
[1] Organisation for Economic Co-operation and Development, Trade in Counterfeit Goods and the Economic Impact of Counterfeiting (OECD Publishing 2019).
[2] Susan Scafidi, ‘Intellectual Property and Fashion Design’ (2007) 1 Intellectual Property and Information Wealth 115.
[3] Graeme Dinwoodie and Mark Janis, Trademark Law and Theory (Edward Elgar 2018).
[4] Dev Gangjee, Relocating the Law of Geographical Indications (Cambridge University Press 2012).
[5] Trade Marks Act 1994, s 10(3).
[6] Rochelle Dreyfuss, ‘The Protection of Fashion Design’ (2010) 1 Journal of Intellectual Property Law.
[7] Paris Convention for the Protection of Industrial Property 1883.
[8] Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.
[9] World Intellectual Property Organization, Understanding Copyright (WIPO 2023).
[10] Barton Beebe, ‘The Semiotic Analysis of Trademark Law’ (2004) 51 UCLA Law Review 621.
[11] OECD (n 1).
[12] TRIPS Agreement, arts 41–61.
[13]Christian Louboutin SA v Yves Saint Laurent America Holding Inc 696 F3d 206 (2d Cir 2012).
[14]Louis Vuitton Malletier SA v Haute Diggity Dog LLC 507 F3d 252 (4th Cir 2007).
[15]Gucci America Inc v Guess Inc 868 F Supp 2d 207 (SDNY 2012).
