Much of the value of high-end fashion brands comes from the exclusivity of their products. Protecting themselves with appropriate intellectual property is therefore essential for their value. But this is not without challenges, particularly in terms of shape protection, as shown by a recent case relating to the iconic Moon Boot.
Trademarks have a number of advantages over other intellectual property rights. In particular, they can, in theory, survive indefinitely, whereas all other intellectual property rights are limited in time. The oldest UK trade mark, the Bass triangle (UK trade mark number 0001), was registered in 1876 and is still enforceable today.
The “essential function” of a trademark is to guarantee the origin of a product. This is most evident with brand names or logos – if you see a brand name, you usually know its intention is to indicate where a product comes from, even if you’ve never heard of that brand previously.
But the situation is more difficult with regard to “non-traditional” marks, such as the shape or color of a product. If consumers don’t rely shape or color as a guarantee of origin, it cannot be registered as a trademark. Some products, such as the shape of the Hermès Birkin handbag and the color of the soles of Louboutin shoes, have been successfully registered as trademarks, but they are relatively rare. Even when these marks are registered, they are susceptible to attack when enforced by their owner, making infringement proceedings more costly and risky than they otherwise would be.
Tecnica Group, creators of the iconic Moon Boot, have suffered for many years from copycat products. Unfortunately, but not unrelated, his mark protecting the shape of his Moon Boot has now been found to be devoid of distinctiveness from the shoes, and therefore invalid.
GET THE BOOT
Tecnica lost a long battle defending its three-dimensional mark for its iconic Moon Boot, failing to prove that the relevant public considers the shape of the boot as an indication of origin for boots, and therefore that its mark fulfills its essential function. .
Tecnica launched the Moon Boot in the early 1970s in response to the moon landing. Since then, they’ve been known the world over as the quintessential après-ski boot and recently made a retro revival as It-Girl’s winter boot of choice. Tecnica applied to register the boot as a last in 2011:
The General Court has now ruled that this mark does not deviate significantly from the standards and customs of the après-ski footwear sector as they were in 2011. As a result, the shoe did not have the distinctive character required to be a valid mark in relation to footwear. , and was invalidated.
As described above, the main hurdle for shape mark applicants to overcome is that of distinctiveness.
Brand names (especially when it is a coined word), or logos, are likely to be immediately perceived by the public as an indication of origin; they are often inherently distinctive.
The public, however, is not used to considering the shape of a product as part of its brand image – usually, the shape of a product is simply its shape. To acquire distinctiveness, the mark must make it clear to the public (for example via advertising) that the shape of the product is a mark indicator. It can take a long time.
No doubt, in the 40 years between the launch of the Moon Boot and the application for registration of its trademark, Tecnica had educated the public on the importance of the shape of its boot. However, during this period other companies launched similar boots and Tecnica did not do enough to stop the proliferation of these competing boots in the market. At the time Tecnica registered its trademark, the shape was therefore not unusual enough to guarantee the origin of the Moon Boot, so the registration was deemed invalid.
Trademarks whose designs are essential to their business may wish to register them as trademarks due to the indefinite duration of protection. However, as the Moon Boots case shows, waiting to obtain distinctiveness before acquiring protection can leave a mark unclear about its protection.
WHAT IS A-BOOT OTHER IP RIGHTS?
So what protection can fashion houses get faster than a brand?
Registered design rights protect the appearance of a product (whether shape, decoration or other aspects of its appearance). They are easy and inexpensive to register, and the procedure to obtain them usually does not come with a lengthy and potentially expensive review process. The disadvantage is that their application can be difficult; it often turns out that they are not valid or that they do not have a sufficient range of protection to be breached. Additionally, if a fashion house releases many variations of a design, registering them all can be costly and difficult to manage. Registered models last only up to 25 years.
The UK and EU each offer unregistered design protection. An unregistered design in the EU requires that a new design be first revealed to the public in the EU and “create a different overall impression” compared to previous designs on the market or accessible to the public. It only lasts 3 years, but can protect both the shape and any 2D decoration of a design from being copied. Brands should consider whether the availability of this protection means they must display new designs in the EU first.
The UK, post-Brexit, offers equivalent protection to the unregistered design in the EU, but this only offers protection in the UK (rather than a larger territory such as the EU ).
The UK also offers a second form of protection for unregistered designs, which only protects “original” 3D designs from being copied. It will not, for example, protect 2D design elements such as decorative elements or wording. However, it’s been around for 15 years, and when the new design looks like a boot, so it may offer more benefits than the EU (or UK equivalent) protection discussed above.
In some cases, copyright also offers fashion brands protection with respect to certain aspects of product design, reflecting the creativity of the designer.. In 2021, Tecnica won a copyright case in Italy against influencer Chiara Ferragni, who produced a lookalike boot under her brand name. As Ferragni’s boots displayed his prominent logo, albeit in the same position as the Moon Boot word mark, and were covered in sequins, the Italian court found that they infringed the Moon Boot’s copyright. That said, copyright protection differs significantly from country to country and it is quite possible that the UK courts have decided this case differently.
This article was originally published by the Luxury Law Alliance.