This article is written by  Akhil G. Krishnan, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Dhruv Shah (Associate, LawSikho) and Ruchika Mohapatra (Associate, LawSikho).

Introduction

“Who are you wearing?” is a frequent question asked to celebrities, dressed in fancy ensembles on countless red carpets. What if the clothing could be identified simply by looking at the pattern, texture, and design of the goods instead of having to ask such a question? Few industries are as competitive as the fashion industry. It is critical for the firm to preserve its design, pattern, or any other kind of intellectual property against theft, imitation, or any other fraudulent attempt to hurt the company by using the garment or its design in bad faith. Secondary Meaning of Trade Dress is defined as “the mental association by a substantial segment of consumers and potential consumers ‘between the alleged mark and a single source of the product.’”. If consumers cannot associate some designer/brand with a specific design, there is a lack of recognition and thus, this precludes many emerging designers from asserting protection under trade dress. Through this article, the author seeks to explore the difference between trademark and trade dress while emphasising the value of the secondary meaning of trademark in the fashion industry. 

Intellectual property rights and its approaches regarding the fashion industry

Intellectual property rights assist businesses in preventing their valuable assets from being stolen or used in bad faith to earn illegitimate benefits, as well as assisting consumers in recognizing a product or service’s original source of creation. In the case of the fashion industry, it is the protection of their own items from those of competitors. Fashion designers rely on intellectual property laws to safeguard their creations.

There are four potential approaches to protecting IP rights in designs.

Copyrights

On the basis of the ‘Useful Article Doctrine,’ copyright protection for fashion designs is frequently unattainable. Clothing is generally exempt from protection since it is deemed a useful article under the law.

Utility and design patents

Patents, unlike copyrights, explicitly cover important materials. Utility patents are used to protect new inventions that include devices and processes. Design patents, on the other hand, protect an object’s appearance rather than its function. Design patents are often granted within a year and grant 14 years of protection. 

Trademarks

Due to the limited protection provided by the Copyright Act and the high cost of obtaining a patent, most designers use trademarks to protect portions of their work. To successfully register a trademark, you must meet the following two requirements: 

• Distinctive: It can’t be descriptive or generic, and it has to be whimsical, random, or evocative.
• Not confusingly similar: Similar in sound, appearance, meaning, impression and relatedness of goods/services.

Trade dress

Trade dress refers to aspects of a product’s visual or sensuous appeal, such as its packaging, shape, or colour combination that can be registered and protected from being exploited by competitors in connection with their business and services. The Coca-Cola bottle is the most recognised example of a trade dress. Even without reading the words “Coca-Cola,” anybody who sees that shape understands the bottle as belonging to that company. Trade dress can be used to protect product designs, parts of products, and packaging. 

In the fashion industry, trade dress is the most effective tool for protecting one’s company’s designs and patterns.

Trademark and trade dress in the fashion industry

Fashion companies put a lot of money and work into building their brand’s attraction and draw, therefore branding is critical. Trademark law prevents others from using the mark without permission, which is critical considering the amount of time and money that goes into building a viable and well-known brand. That’s when the concept of trade dress comes into play. Trade dress is protected under trademark law since the design itself serves as a trademark, identifying the product as coming from a specific designer or fashion house. All aspects used to market a certain service or product are protected by trade dress. It refers to a product’s visual or sensuous look, which can include packaging, shape, and colour combinations, and which can be registered and protected from being utilised by competitors in connection with their company and services. It’s also meant to safeguard consumers against products with imitated packaging or appearances, so they don’t buy one thinking it’s another. While trade dress can be a powerful kind of legal protection, it comes with stringent legal restrictions, and a corporation seeking such protection must employ a well-thought-out plan to obtain and maintain it. For example, the registered trademark of Gucci is the Green-Red-Green stripe mark. However, designers, like Marc Jacobs, have filed suit for trade dress infringement to protect the overall physical appearance of their design.

The secondary meaning of trademark

If a design, mark, word, or logo is not naturally distinctive, it must develop distinctiveness in the minds of customers to be considered a trademark. A ‘secondary meaning’ is a term used to describe acquired distinctiveness. “The mental association made by a significant segment of consumers and potential consumers ‘between the asserted mark and a single supplier of the product,” according to secondary meaning. To put it another way, the consumer must be able to associate the fashion design with the designer. This prevents many young designers from claiming trade dress protection because they are likely unrecognized by customers and hence cannot be associated with a specific design in their minds due to this lack of recognition. A secondary meaning is a new meaning that is added to a mark. A mark, on the other hand, cannot reach a secondary meaning if it is not utilized to identify its source.

For example: 

1. Louis Vuitton’s LV badging all over their products,

2. Adidas’ three stripes etc.

The difficulty of proving secondary meaning

The party claiming trade dress protection based on the secondary meaning test bears the burden of proof in litigation, and secondary meaning can be difficult and expensive to prove. Limiting trade dress protection to the secondary meaning test may make it impossible to provide protection for pattern and display designs that would otherwise be easily determined to be inherently distinctive. There are three basic methods for proving secondary meaning, and each has its own set of pitfalls and roadblocks to trade dress protection.

1. First, market survey data may be the most effective technique of determining secondary meaning if the survey demonstrates that the trade dress has formed the necessary link between the designer/producer and the product in the minds of the general public. The cost of a survey, on the other hand, can prevent a trade dress owner from obtaining protection. Even if a survey is feasible, it is difficult to design and may not be successful. A survey must be done in accordance with generally established market research principles, and the data must be analysed using correct statistical methods in order to be admitted as evidence.
2. If other evidence indicates that consumers will link the trade dress with a producer, a consumer survey may not be required. The second method of showing secondary meaning is by a big number of sales or extensive advertising that includes the trade dress. Advertisements and promotional efforts do not prominently display extensive trade dress.
3. Intentional attempts by one producer to profit from the secondary meaning of another’s trade dress by replicating it could be proof of secondary meaning. This technique of proof, on the other hand, has a flaw. Because the imitator’s primary purpose for imitating a trade dress may not have been to gain from the secondary meaning of another’s trade clothing, intentional copying alone may not be enough to establish secondary meaning. Competitors may replicate a product’s trade dress because of its appealing or creative design without intending to profit from customer awareness, or competitors may copy characteristics that have no secondary meaning.

In Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, the Court considered the likelihood of confusion in trade dress. In that instance, Louis Vuitton attempted to safeguard a handbag line established in collaboration with artist Takashi Murakami. The handbags featured the “Toile Monogram,” which consisted of “entwined LV initials with three motifs—a curved diamond with a four-point star inset, its negative, and a circle with a four-leafed flower inset.” The Louis Vuitton Monogram Multicolore was a reworking of the traditional Toile monogram, consisting of 33 Murakami-selected bright colours printed on a white or black background. Dooney & Bourke, which also produced handbags displaying its initials in an interlocking pattern in a similar colour palette dubbed the “It Bag,” imitated Vuitton’s purses shortly after the Monogram Multicolore’s breakthrough, according to Vuitton. The court recognised the Vuitton mark as legitimate and proceeded to evaluate the possibility of confusion between the two bags. Using a side-by-side assessment, the district court determined that there was no risk of a mistake between the two bags. The Second Circuit, on the other hand, disagreed with the district court’s side-by-side assessment of the bags, finding that the court should instead consider whether buyers would be confused by their comparable appearances on the market. In the real world market, designs that are easily distinguishable when viewed side by side may nevertheless be mistaken, and this is the confusion at issue in trade dress infringement.

Conclusion

For all intellectual property rights, it is always highly advisable to invest early on in an effort to lay the foundation for securing those rights. That is especially the case for trade dress rights, which depend heavily on public recognition and association of the design with the designer or Fashion Company. The fact of the matter is, these days it is hard to imagine that there is a place in society, be it the sciences, arts, politics, business or even morality and law, that does not exhibit fashion in some manner. Fashion designers not only want but need protection and despite the tenable oppositions raised, this Comment concludes that this industry is no less deserving of protection than any other. Trade dress serves a crucial utility for franchises: identifying the source of goods and services. Every franchise has a trade dress, but all too often franchisors do not identify their trade dress until they are faced with a competitor that has copied it. The sooner a franchisor identifies those distinctive and nonfunctional features that identify its business, the better positioned it will be to protect this valuable asset.

References

1. https://revisionlegal.com/trademark/trademark-law/trade-dress-in-fashion-design/
2. https://www.thefashionlaw.com/resource-center/trade-dress-law/

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