Dressing up a brand against lookalikes: part one

The launch of any fashion brand is usually preceded by clearance and the registration of one or more trademarks. However, this is not always the case and a trademark registration does not always provide the necessary scope of protection against copycats. This drives the need for unconventional means of brand protection.

What is worth copying is worth protecting. A luxury brand’s notoriety is often the target of imitators. Skilfully made lookalikes avoid stealing the actual brand name and instead focus on the overall trade dress. They mimic the shape, colour and label of a product’s packaging, without including the actual trademark, in order to avoid trademark infringement prosecution. Distinctive trade dress plays an important role for any big brand by increasing its notoriety, prestige and reputation, identifying and differentiating the goods in typically oversaturated mass markets.

Part one of this update summarises the types of protection available and the pitfalls of each for fashion brands.    

Industrial design
Registering an industrial design for a pattern or shape is a popular choice of brand protection in Russia, especially for luxury bags. According to the Federal Institute for Industrial Property’s Register of Designs (as of 5 August 2018) there are 695 registered bag designs. However, fashion is transitory and extensive legal procedures provide outdated results. Unlike the European Union, Russian legislation does not provide for the protection of unregistered designs. Therefore, this method of protection takes 12 to 18 months to obtain a registration, during which stores may be selling counterfeits of the latest collection.

Copyright
Copyright offers the right to sue for infringement in Russia, as it is a member of the Berne Convention. A state register exists only for software and databases; the author may opt to also register other types of work with a non-governmental organisation. The originality requirement is easier to satisfy than the novelty requirement in patent law – the work must merely be an independent creation and have an element of creativity.

Depending on the type of infringement, a brand owner can protect its fashion-related goods as copyrighted works or industrial designs (Paragraph 24 of the Decision of the Plenum of the Supreme Court and the Plenum of the Supreme Arbitration Court of the Russian Federation, 26 March 2009, 5/29). In many other countries (eg, the United States) one form of protection excludes the other, since historically clothing has been considered as having an “intrinsic utilitarian function” (Section 101 of the US Copyright Act 1976).

Russian court cases concerning copyright in fashion designs are rare and the Civil Code does not define the term ‘design’ in the context of copyrightable objects. Therefore, it is hard to draw conclusions on the enforceability of copyright claims for fashion-related goods.

Trademark
Although a trademark is arguably a more reliable form of protection, in fashion it is often considered unsuitable for protecting an item’s cut, sewing pattern or overall shape. Due to the conservative approach of the Russian patent office, three-dimensional trademark protection is granted on rare occasions where the brand owner can prove that a consumer would make a strong connection between the item’s shape and its manufacturer. Other non-traditional trademarks (eg, perfumes) also face obstacles as there is no formal process that defines what is to be deposited in the trademarks office.

Comment
Fashion brands in Russia may struggle to protect their rights in fashion-related goods or services using any of the above methods. Part two of this update will focus on trade dress protection in Russia and outline several key cases, demonstrating an alternative approach to IP protection for the fashion industry.