December 2006
Evening bag full of design infringement
Offering luxury catwalk design at high street prices is not always such a bargain for retailers, especially if it resembles too much the real thing.
The last in a series of high profile cases where luxury brand owners enforce their intellectual property rights saw Marks and Spencer forced to recall thousands of evening bags that were allegedly similar to a design created by the high-end fashion label Jimmy Choo.
Choo, owned by private equity house Lion Capital, famous for its shoes and handbags seen on celebrities and in glossy magazines, aggressively pursues high street firms that it believes copy its designs.
Jimmy Choo claimed that the M&S bag advertised as a Christmas sale promotion and costing just £9.50, bore striking similarities to its Cosmo silk satin evening bag with jewel buckle, which retails at the slightly heftier price of £495.
Marks & Spencer had already sold a large number of infringing bags. Threatened with legal action, it made no admission of liability but agreed an undisclosed cash settlement with Jimmy Choo, removed the items from sale and destroyed the remaining bags.
In September this year, another successful legal action by Jimmy Choo against high street brands forced New Look to withdraw from sale thousands of pairs of its "Bonbon" shoe modelled on Choo designs and paying £80,000 in damages for copyright infringement and legal costs.
Briffa's Opinion:
Traditionally, designers had to prove that an item of clothing or footwear was identical to the original design to establish infringement- something that is almost impossible.
However, the recent introduction of legislation such as the European Community Design right gives designers the necessary tools to bring successful claims against potential infringers. These rights let a brand owner rely on unique defining aspects of an original design, such as a buckle, a clasp or an unusual shaped heel to demonstrate that it has been copied. In addition to their main brand name and logo, designers should apply to file their most successful designs. Once a design has been registered the registration certificate will be taken as evidence of original creation. This can prove very beneficial at a later date when licensing the product to third parties because it identifies the work absolutely and serves as a very useful tool to stop or deter potential infringers.
Anti copying lobbying groups, trade and industry bodies and IP experts believe that creators and designers should be even further protected by new laws for strengthening the enforcement of unlawful imitations and granting higher damages for design copyright infringement. However the recent UK government commissioned Gower Review on Intellectual property did not recommend a general overhaul of the rules on counterfeit and copying. It was criticised for its lack of proposals to adequately protect designers against unlawful imitations
Sophie Lachowsky
sohie@briffa.com