The Legalities of the Fashion Industry
By Kike Ojewale
The Nigerian Fashion Industry
The growth of the Nigerian fashion industry has been phenomenal. Over the last few years, we have seen our designs being showcased here in Nigeria and abroad, to both local and foreign attendees.As such, we have become a force to be reckoned with in the global fashion industry. Recent studies have shown that the Nigerian Fashion Industry will be worth at least $8.1 billion by 2019.
It is very interesting that for an industry that is so valuable, very little is done to protect the rights of its stakeholders. One of the most effective ways to protect the stakeholders and their rights in the industry is through intellectual property.Intellectual Property is an intangible asset which is very similar to other forms of physical property. It can be sold, purchased, licensed or destroyed. Intellectual Property rights aim to give exclusive protection to mental labour, innovation and creativity; which form the basis for the fashion industry.This protection further fosters even more creativity and innovation in the Fashion Industry.
Intellectual Property Rights in Nigeria
The Intellectual Property Rights most applicable to stakeholders in the Nigerian Fashion Industry are: Patents, Trademarks, Copyrights and Designs.
A patent gives its owner the right to the exclusive use and exploitation of an invention for a period of time. Patents are not very common in the fashion industry, but popular patents are the zipper, Velcro, ear muffs and such alike. Internationally, patents are more common in the lingerie and handbag industries. For example, major fashion brands such as Victoria’s Secret own a patent for their “multi-way bra”; Hermes, the popular French brand, owns a design patent over their famous Birkin handbag.
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. For example, the logo and name of a fashion brand can be registered as a trademark.
Unlike patents, trademarks are more popular in the fashion industry as they are essential to the identification of the origin of a product.
Copyright protects certain categories of subject matter including original ‘artistic’, ‘literary’, ‘dramatic’, and ‘musical’ works, published editions of works, sound recordings (including CDs) and broadcasts. The work of a fashion designer is most likely to attract copyright protection as original ‘artistic’ works.
‘Artistic’ works include graphic works, photographs, sculpture or collage, irrespective of artistic quality, works of architecture and works of artistic craftsmanship.
Sketches of designs attract automatic copyright. Although this is sufficient, it is always advisable to register the design at the Nigerian Copyright Commission. Furthermore, patterns used for textile designs can be protected by Copyright. However, the Copyright Act states that such works can attract protection as long as they are not meant for reproduction. As such, copyright protection might not be entirely sufficient or effective for a fashion designer as such patterns and designs are likely to be reproduced.
Although all the forms of protection highlighted above are essential to the development of any fashion business, design protection is one of the most effective forms of protection in the fashion industry.
Generally, an industrial design consists of two-dimensional features, such as ornamentation, patterns, lines or colour of a product; three-dimensional features, such as the shape of a product; or a combination of one or more such features. Essentially, design law protects the general aesthetic and overall appearance of a design.
For a design to be registrable in Nigeria, it must meet the following requirements:
- it must be “new”– a design meets the novelty criteria if no identical design has been made available to the public before the date of filing, or the application for registration.
- it must be “original”– designs are considered as ‘original’, if they have been independently created by the designer and is not a copy or an imitation of existing designs.
- it must have “individual character” – here what is required, is that the overall impression produced by a design on an informed user differs from the overall impression produced on such a user by any earlier design which has been made available to the public.
- The design must not be dictated exclusively by the technical function of the product. If this is the case, the design registration is not the appropriate form of intellectual property. A more relevant application would be a patent application.
- The design must not include protected official symbols or emblems such as the national flag, the coat of arms and such alike.
- The design must not be one which is considered to be contrary to public order or morality.
For a design to be registrable, it is important to keep it confidential if it will be protected under a registration system. If the designs must be shown to ma third party, it is advisable to have the said third party execute a confidentiality or non-disclosure agreement.
An infringement occurs when a registered intellectual property right is exploited by a third party without rights holder’s consent. For example, a lady known as Katherine Plew invented and registered as a patent, a bra that could be worn in multiple ways. In an attempt to find an investor for her new found business, she approached Victoria’s Secret, a popular lingerie line and she was turned down. A few months later she discovered that her invention was being marketed and sold by Victoria’s Secret; thus, amounting to an infringement of her patent. As such, she brought an action against them in the courts for and the matter was settled out of court for an undisclosed amount.
In the event that an infringement matter cannot be resolved outside of the courts, the following remedies may be awarded to a rights holder:
- Damages: The courts may award damages to the rights holder in attempt to restore the rights holder to the position it would have been if the infringement had not occurred.
- Injunctions: An injunction could be granted to prevent the commission of a threatened infringement.
- Delivery Up: The courts may order the delivery of all infringing items to be destroyed.
- Account of Profits: This entitles the rights holder to all profits made from the infringing acts.
It is important to note however, that the first step in enforcing intellectual property rights is usually the issuance of a cease and desist letter. A cease and desist letter is a notice preferably drafted by a legal practitioner, sent to the infringer, requesting them to stop and refrain from using your intellectual property rights in the future. A cease and desist letter helps avoid unnecessary costs and delays associated with court proceedings for intellectual property infringement cases as most infringement matters are concluded at this stage.
Passing-off offers protection to owners of unregistered marks. For example, if a designer has an unregistered logo for his fashion line and he has discovered that a another fashion designer is using a logo similar to his, both phonetically and visually, in such a way that these products are being “passed-off” as his, he canbring an action of “passing-off” against the infringer.
However, passing-off is a more difficult action to prove because the owner of the mark must prove that:
- the brand has a wide-enough reputation,
- there has been some level of misrepresentation or confusion by the consumer;and
- some form of loss has been suffered.
Passing-off, interestingly, has been used by celebrities in other jurisdictions to prevent their images from being used without their consent. In 2013, the high-street retailer, Topshop released a t-shirt with pop-star Rihanna’s image on it. The image was obtained from a photograph taken of her during a video shoot. This image was used on the t-shirts without her consent and as such, she brought an action of passing-off against them. The public was under the impression that this t-shirt was the result of a collaboration between Rihanna and Topshop and understandably, due to her popularity, the t-shirt was sold out within days. Rihanna was successful in her claim and the t-shirts were taken off the shelves.
The Importance of an Intellectual Property Strategy
Intellectual Property is an invaluable asset and your intellectual property rights are essential to the success of any fashion brand. As a start-up, potential investors will want to ensure that a fashion brand owns all the intellectual property rights in its business to minimize their risk.
It is important to note that as the business grows, its intellectual property portfolio must grow. It is also important to maintain a record of core designs, trademarks, and other intellectual properties as this allow you to track down and restrict infringement.
Once created, the intellectual property generates customer and brand loyalty and adds to the commercial value of a fashion brand. The value of the brand can be increased through profits realized from the exploitation or monetization of intellectual property rights; through licenses and similar agreements between the company and third parties.
Monetization of Intellectual Property Rights
Intellectual property rights can be an additional source of income for a fashion brand and in turn, strengthen the profits of the brand and foster brand loyalty. Some of these means of monetization of intellectual property rights are as follows:
- Licensing: Intellectual property rights can be licensed to a third party, for a fee, for manufacturing purposes or otherwise. Licensing can broaden the use of intellectual property rights in different territories that are not currently served by the rights holder. Licensing reduces the risk and cost of distribution and it provides ongoing income. However, it presents risks of the rights holder’s work being misused by a licensee. It is important to engage the services of a lawyer when negotiating a licensing agreement to ensure that your interests are protected.
- Assignment: Intellectual property rights can be assigned to a third party for a fee. The key distinction between a licensing agreement and an assignment agreement, is ownership and control. In an assignment agreement,the owner of the mark will no longer have the right to control the use and exploitation of these rights.
- Franchising: This is a form of licensing in which the franchisor (rights holder) licenses its intellectual property rights to a franchise for the purpose of replicating a business concept. In such an arrangement, the franchisor maintains control and is able to support the franchise by training and on-going assistance for a period of time.
How to Avoid Infringement
Inspiration v infringement: A designer may be found to be an infringer of another’s intellectual property rights if he or she is found to have intentionally copied another designer’s work. If you must use another designer’s work either as inspiration or otherwise, it is crucial that the permission of the rights holder is obtained.
Be cautious: Look out all indications of intellectual property protection on labels, such as signs and symbols for trademarks, patents, copyright, and designs.
Conduct searches: Searches can be conducted at the Intellectual Property Office for a fee, to ensure that no previous registrations exist to ensure that there is no infringement of a third party’s rights.
If you are unsure of your rights or another’s rights, contact an intellectual property lawyer!
Editor’s Note: This article was originally published in The Spark magazine. Find the magazine here to read other articles.
Kike Ojewale is a corporate and commercial lawyer at ACAS-Law, a top law firm in Nigeria. She specialises in all areas of intellectual property, media, sports and entertainment law.