As a designer or brand owner, your livelihood is your creativity – namely your designs, your products and your brand – and the protection of these is central to the value and success of your business. Whether at the business plan stage, looking for investors, manufacturers or stockists or considering selling your business, there is inherent value in your Intellectual property.
You can avoid some costly pitfalls by considering some of the key issues from the outset:
1) Protect your brand name:
2) Correctly mark up and store your designs:
what is important here is to have evidence of creation, should you need it, so do keep detailed drawings, notes and specifications and make sure you mark and sign materials with the name of the designer. Also, it is incredibly important that you date all drawings and designs. Remember, if any designs are produced by your employee, then they should have your stamp as the employer.
3) Lay out the framework for employment:
ensure employment contracts are correctly drafted so as all rights remain with the you as the employer and make sure you contractually obtain assignments of copyright and designs from freelance designers, to ensure that you own all the relevant IP.
4) Protect your trademark(s):
it’s critical that you protect your brand name as well as those logos and names that you will use as trade marks on labels or on the exterior of garments. Remember, trade mark protection may cover more than you might expect – as evidenced by the recent litigation between Christian Louboutin and Yves Saint Laurent.
In practice, it’s important you register the trademark under the appropriate class (e.g. Class 25 for clothing or footwear, Class 18 for bags, Class 14 for jewellery), but also consider registering for product classes that you may wish to add in the future. Likewise, you may want to consider registering in countries where you plan to sell your products or where you intend to manufacture your products –
5) Get to grips with copyright:
remember, copyright grants automatic right of protection in two-dimensional prints on fabric or “original works of artistic craftsmanship.” However, there is a high threshold for the definition of “artistic” so, while you may be able to claim copyright in a one-off elaborate couture or wedding dress design, it is difficult to assert copyright in garments generally and better to rely on design rights.
6) Defend your designs:
by contrast, designs protect the unique appearance of your products, – which can be 3D shape or 2D print. There are some differences between the level of protection granted by UK and EU design law, so do seek advice on what is most appropriate.
For instance, there is a broad EU unregistered design right that arises automatically and protects a design for up to 3 years. Due to the seasonal and fast-moving nature of the industry, this is often considered sufficient. However, particularly for signature pieces, on-going designs or garments with unique construction or design elements, certainly consider registering your design. This lasts up to 25 years (if renewed every 5 years).
Registering your design typically will deter copying and makes disputes against infringers easier, as with registration there is no need to prove that your design was intentionally copied to enforce registered design rights.
7) Consider how to manage confidential information:
for example, remember you can request any potential licensees and manufacturers to sign NDAs (non-disclosure agreements), but also be sure you keep your confidential information secure and ensure employees and designers know what you expect and have agreed to maintain confidentiality.
8) Be smart about licensing:
if you are licensing your designs, ensure that you have an agreement in place that deals satisfactorily with the key issues of IP (intellectual property) ownership and how your IP will be used, exclusivity, royalties, the rights and obligations of the licensee, the quality that you expect for the products, the territory in which the licensee may operate and so forth.
9) Be careful about commercial contracts:
it goes without saying that it’s critical to consider carefully your partners for manufacture, supply, distribution and agency. Ensure you have strong contracts in place that protect you and confer the right responsibilities on your partners to deliver a benefit that helps your business and your brand grow
10) Seek professional advice:
as the old adage goes, when in doubt – don’t. Ultimately, getting the right assistance is invaluable and cheaper in the long run.
The above answers are not intended to provide complete solutions and may vary depending upon the facts of the case. Should you require any further assistance regarding any of the topics mentioned in this article, please do get in touch. SHERIDANS web site
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