Unregistered Community Design Rights as a tool against infringements in the fashion industry- too good to be true?

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0 University of Amsterdam

Unregistered Community

Design Rights as a tool against

infringements in the fashion

industry- too good to be true?

Hannah Ibnoulward, 12042056, LLM European Competition Law & Regulation

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Bibliography

Table of Legislation

Council Regulation 6/2002 of 12 December 2001 on Community designs

Council Regulation 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights

Directive 98/71/CE of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs

Directive 2004/48 on the enforcement of intellectual property rights Table of Cases

Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419 Bundesgerichtshof decision of 19 January 1973, l ZR 39/71 (KG), Modeneuheit (1973) 9 Gewerblicher Rechtsschutz und Urheberrecht 478.

Bundesgerichtshof decision of 6 November 1997, I ZR 102/95, Trachtenjanker (Bavarian jacket) (1998) 6 Gewerblicher Rechtsschutz und Urheberrecht 477

Bundesgerichtshof decision of 9 October 2008, I ZR 126/06, Gebäckpresse Bundesgerichtshof decision of 13 December 2012, I ZR 23/12, Bolerojäckchen Campbell v Acuff-Rose Music, Inc., 510 U.S. 569

Case C-25/16 Nintendo Co Ltd v BigBen Interactive GmbH and another Case C-144/81 Keurkoop BV v Nancy Kean Gifts BV

Case C-102/11 P Herbert Neuman and Andoni Galdeano del Sel v José Manuel Baena Grupo SA

Case C‑281/10 P PepsiCo, Inc. v Grupo Promer Mon Graphic SA, Office for Harmonisation in the Internal Market

Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores

Case C-395/16 DOCERAM GmbH v CeramTec GmbH (C-395/16) EU:C:2018:172; [2018] Bus. L.R. 1073; [2018] 3 WLUK 165 (ECJ (2nd Chamber))

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Case C‑683/17 Cofemel – Sociedade de Vestuário SA v G‑Star Raw CV

Case T‑525/13 H&M Hennes & Mauritz BV & Co. KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Yves Saint Laurent SAS

Karen Millen Ltd v Dunnes Stores [2007] IEHC 449

Karen Millen Fashions Ltd v Dunnes Stores [2008] E.C.D.R. 11

Landgericht Düsseldorf, decision of the 9 September 2011, 14c O 194/11, Galaxy 10.1 Landgericht Düsseldorf decision of the 9 February.2012, 14c O 292/11, Galaxy 10.1 Nike, Inc. v. Skechers U.S.A., Inc., 2:19-cv-08418 (C.D. Cal.)

Samsung Electronics (UK) Limited v Apple Inc. [2012] EWHC 1882 (Pat) Samsung Electronics (UK) Limited v Apple Inc. [2012] EWCA Civ 1339

Tribunal de grande instance, Paris, judgment of 27 January 2011, No. 2009/15874 Christian Dior Couture v Ash Distribution; Cour d’appel de Paris, Poˆ le 5, judgment of 8 February 2013, No. 2011/02407

Williams v Gaye, No. 15-56880 (9th Cir. 2018) Secondary Sources

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Kur A and Dreier T, European Intellectual Property Law: Text, Cases and Materials (Edward Elgar, 2013)

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Jehoram HC, ‘Cumulation of Protection in the EC Design Proposals’ (1994) 12 European Intellectual Property Review 515

Jehoram HC, ‘The EC Green Paper on the legal protection of industrial design: half way down the right track - a view from the Benelux’ E.I.P.R. 1992, 14(3), 75-78

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Bussé J, ‘The Unregistered Community Design to conquer the European fashion industry’ (Lexology, 13th September 2019) <www.lexology.com/library/detail.aspx?g=f422684f-1d12-4461-94be-8c894173c216> (accessed 8th October 2019)

Danforth C, ‘An (Almost) Complete Guide to YEEZY Resell Prices’, (Highsnobiety, 10th April 2019), <www.highsnobiety.com/2017/02/13/yeezy-resell-price-guide/> (accessed 12th August 2018)

Danforth C, ‘Here’s How Many Fake YEEZYs Are Sold on China’s Biggest E-Market’ (Highsnobiety, 28th September 2017) <www.highsnobiety.com/2017/09/28/fake-yeezys-china/> (accessed 12th August 2019)

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Ellis V, ‘CJEU to toy with design rights: Does a disclosure outside the EU commence protection or destroy novelty?’ (Fieldfisher IP Blog, 24th September 2019)

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‘From Gucci and adidas to H&M and Puma, a Look at Forever 21's Long History of Litigation’ (The Fashion Law, 1st October 2019) <www.thefashionlaw.com/home/from-gucci-and-adidas-to-hampm-and-puma-a-look-at-forever-21s-long-history-of-litigation> (accessed 7th October 2019)

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John T, ‘Why The Hermès Birkin Bag is a Better Investment Than Gold’ (TIME, 15th January 2016) <www.time.com/4182246/hermes-birkin-bag-investment-gold/> (accessed 12th August 2019)

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<www.vogue.co.uk/article/chloe-forced-topshop-to-destroy-1000-pairs-of-yellow-dungarees> (accessed 24th October 2019)

Kover A, ‘That Looks Familiar. Didn’t I Design It?’ (New York Times, 19th June 2005) <www.nytimes.com/2005/06/19/business/yourmoney/that-looks-familiar-didnt-i-design-it.html> (accessed 26th September 2019)

Malovic N, ‘Celebrity misadventures in trade mark land’, (IPKat, 9th July 2019),

<www.ipkitten.blogspot.com/2019/07/celebrity-misadventures-in-trade-mark.html> (accessed 18th July 2019)

May R, ‘Unregistered Community Design update - UK court refers ‘Squeezamals’ case to the CJEU’ (Lexology, 4th October 2019) <www.lexology.com/library/detail.aspx?g=aec04d46-0b34-4193-8dcd-58fab4ea0bb2> (accessed 8th October 2019)

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Morcency C, ‘Special Report: This Is What the Future of Sneaker Reselling Looks Like’ (Highsnobiety, 23rd Jan 2019) <www.highsnobiety.com/p/sneaker-reselling-future/> (accessed 13th August 2019

Melucci F and Meli V, ‘Fast Fashion” beware: Zara gets caught up in EU-wide infringement and damages claim’ (DesignWrites, 27th September 2018) <www.designwrites.law/fast-fashion-beware-zara-gets-caught-up-in-eu-wide-infringement-and-damages-claim/> (accessed 12th August 2019)

‘Nine Times Fashion Industry Giants Copied Smaller Brands’ (The Fashion Law, 1st August 2016) <www.thefashionlaw.com/home/nine-times-the-big-guy-copied-the-little-guy>

(accessed 30th September 2019)

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Petraz DL, ‘Effective use of Community design protection’ (Lexology, 12th October 2017) <www.lexology.com/library/detail.aspx?g=62cb9b41-e40b-4e4b-ba81-03a8675ffb51> (accessed 29th October 2019)

Petraz DL, van der Heide L and Barilá C, ‘Litigating design disputes’ (World Trademark Review, 13th November 2018)

<www.worldtrademarkreview.com/anti-counterfeiting/litigating-design-disputes> (accessed 30th October 2019)

Pierson D, ‘Counterfeit Yeezys and the booming sneaker black market’ (Los Angeles Times, 5th September 2017)

<www.latimes.com/business/la-fi-repsneakers-20170905-htmlstory.html> (accessed 12th August 2018)

Pike H, ‘The Copycat Economy - Do knockoffs harm the fashion business? Or does copying keep the wheels of the industry turning?’, The Business of Fashion, 14th March 2016, <www.businessoffashion.com/community/voices/discussions/what-is-the-real-cost-of-copycats/fashions-copycat-economy> (accessed 20th September 2019)

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Introduction

Intellectual property rights have in recent years significantly contributed to the growth of competitive multinational industries, such as fashion and music.1_{Though a significant amount}

of investments is released by fashion brands each season to create novel and original designs, a comparatively smaller effort is put into protecting those designs legally.2 Traditionally, fashion brands have used trademarks to distinguish their goods and services from other brands and create a brand image and affiliation amongst consumers - particularly amongst the

branding and logo-savvy Generation Z3_{. Famous examples being Chanel’s interlocking Cs or}

the Nike swoosh. Against the background of a booming online resale market for branded goods arising as a result of an artificially low-kept supply side and a social media and celebrity-driven endorsement culture4, fashion goods in general, as well as specific designs are increasingly considered as a valuable investment.5 Take for example the Adidas Yeezy shoes, an ongoing collaboration between the German sportswear company and US rapper Kanye West. The sneakers are released regularly in limited quantities through a lottery-style exclusive distribution model and are resold for up to 15 times their original retail price.6 The exclusivity of the products has led to a booming counterfeiting business. On Taobao, China’s

1_{Nedim Malovic, ‘Celebrity misadventures in trade mark land’, (IPKat, 9}th_{July 2019),}

<www.ipkitten.blogspot.com/2019/07/celebrity-misadventures-in-trade-mark.html> (accessed 18th_{July 2019)} 2_{Ahlam Al Tamimi ‘Intellectual Property is an Enormous Asset in the Fashion Industry’, The Fashion Law, 27th}

July 2016, <www.thefashionlaw.com/home/intellectual-property-is-an-enormous-asset-in-the-high-fashion-industry> (accessed 11th_{August 2019)}

3

John Zarocostas , ‘The role of IP rights in the fashion business: a US perspective’ (WIPO Magazine 4/2018, August 2018) <www.wipo.int/wipo_magazine/en/2018/04/article_0006.html> (accessed 21st_{July 2019)} 4_{Christopher Morcency, ‘Special Report: This Is What the Future of Sneaker Reselling Looks Like’}

(Highsnobiety, 23rd_{Jan 2019) <www.highsnobiety.com/p/sneaker-reselling-future/> (accessed 13}th_August

2019); Clothing items worn by the Duchess of Cambridge are often sold out minutes after images of her have been disseminated online (‘7 times Duchess Kate's dresses sold out straight away’, (Hello Magazine, 12th_June

2018) <www.hellomagazine.com/fashion/news/2018061259591/kate-middleton-sold-out-dresses/> (accessed 23rd_{September 2019))}

5_{Julia Brucculieri, ‘Investing In Sneakers Can Be A Better Investment Than Gold. Here’s How.’ (Huffington}

Post, 26th_{October 2018) <www.huffpost.com/entry/sneakers-good-investment_n_5bd1f5ebe4b0d38b588143ee>}

(accessed 13th_{August 2019)}

6_{According to a study of almost 50 pairs of Sneakers conducted by MyVoucherCodes some of the shoes can}

have a resale value of up to 60 times their original price (https://www.myvouchercodes.co.uk/sneakernomics) Chris Danforth, ‘An (Almost) Complete Guide to YEEZY Resell Prices’, (Highsnobiety, 10th_{April 2019),}

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largest e-commerce website, for each authentic shoe sold, roughly six counterfeits are

purchased.7 Many of the Yeezy shoe models do not bear any trademarks in their overall visual appearance which, generally speaking, makes it more difficult to take down design

infringements, i.e. lookalikes that do not copy the original shoes’ trademarks but imitate the shoes’ design. Companies of the so-called ‘fast fashion industry’, such as Primark and Zara, often sell products in their stores that closely resemble particularly trending items from the bigger fashion houses’ collection, merely removing the brand’s trademarks and logos and very slightly changing the design. In those situations, a design registration can offer a more straightforward way of tackling IP rights infringements and claiming damages than otherwise provided under copyright or trademark laws.8

On the other hand, obtaining and maintaining design registrations worldwide can be rather costly and time-consuming. Therefore, it may not always make commercial sense to protect each and every design released per season and requires fashion brands to predict the future demand for their products. While the majority of products tend to have a short lifecycle of six to twelve months, other designs are timeless. Acclaimed classic pieces such as the Chanel 2.55 or the Hermès Birkin bag have consistently been in high demand for decades and have become known as investment assets.9 Most brands aspire to create products that will be in high demand over more than one season. If a piece becomes timeless and the design has not obtained design registrations in time, it will be more difficult to take action against

7_{Chris Danforth, ‘Here’s How Many Fake YEEZYs Are Sold on China’s Biggest E-Market’ (Highsnobiety, 28}th

September 2017) <www.highsnobiety.com/2017/09/28/fake-yeezys-china/> (accessed 12th_{August 2019); David}

Pierson, ‘Counterfeit Yeezys and the booming sneaker black market’ (Los Angeles Times, 5th_{September 2017)}

<www.latimes.com/business/la-fi-repsneakers-20170905-htmlstory.html> (accessed 12th_{August 2018)} 8_{Fulvio Melucci, Valeria Meli, ‘Fast Fashion” beware: Zara gets caught up in EU-wide infringement and}

damages claim’ (DesignWrites, 27th_{September 2018)}

<www.designwrites.law/fast-fashion-beware-zara-gets-caught-up-in-eu-wide-infringement-and-damages-claim/> (accessed 12th_{August 2019)}

9_{Tara John, ‘Why The Hermès Birkin Bag is a Better Investment Than Gold’ (TIME, 15}th_{January 2016)}

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counterfeits and infringements of the product’s design.10 In other jurisdictions, such as the US, this would leave designers with no protection. The European Union legal system, on the other hand, offers designers a registration-free short-term method of IP rights enforcement under the Unregistered Community Design system.

Though often overlooked, Unregistered Community Designs (hereinafter UCDs) can play a vital role in intellectual property enforcement, particularly in the fashion industry where the filing for registrations may be considered superfluous in light of the average product’s short shelf life. Nonetheless, not enough use is made of registered as well as unregistered designs to protect fashion designs.11 Evidentially, the lack of a substantive body of case law on

unregistered design rights appears to suggest that they are not often invoked in legal

proceedings in the EU. Why is that so? Is the enforcement of unregistered design rights too burdensome in light of the scope of protection afforded? Or, in other words, is an

automatically arising right protecting (fashion) designs against copying too good to be true? In this thesis, I aim to discuss the enforcement methods provided to rights holders in the fashion industry by Unregistered Community Designs (hereinafter UCDs) in order to assess whether these current enforcements mechanisms are effective tools in the hands of the

claimants. The discussion will commence, in Chapter 1, with an analysis of the global market for fashion and the importance of IP rights for the sector. Subsequently, also in Chapter 1, this thesis will present and discuss the Community Design Rights system thereby specifically highlighting the hybrid nature of the legal concept of designs and its place within the broader European Intellectual Property Law landscape. The basis of this analysis will be the relevant

10_{Ahlam Al Tamimi ‘Intellectual Property is an Enormous Asset in the Fashion Industry’, The Fashion Law,}

27th July 2016, <www.thefashionlaw.com/home/intellectual-property-is-an-enormous-asset-in-the-high-fashion-industry> (accessed 11th_{August 2019)}

11_{Linda Brauwer, Lara van Huizen, ‘For the love of fashion: protecting the beauty of fashion through}

Community design rights’ (Lexology, 3rd_{April 2014)}

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statutory provisions contained in the Council Regulation on Community Designs12

(hereinafter Community Design Regulation, the Regulation or CDR) and the Directive on the legal protection of designs13_{as well as their preparatory works. Special focus will be placed}

on defining and discussing key concepts contained in the provisions of the Regulation and Directive such as ‘individual character’ and the notion of the ‘informed user’ in order to set out the legal threshold required for design protection under EU law. After analysing the relevant legal provisions on unregistered design rights, the second chapter will contemplate how these provisions are being applied in practice. The starting point of the discussion will be a consideration of the issues faced in practice by designers seeking to invoke UCDs, in

particular, the evidentiary burdens on the plaintiff and the lack of harmonisation of European design protection laws and procedures. The second part of Chapter 2 will discuss the

landmark ruling on unregistered design rights in the context of fashion given in Karen Millen v Dunnes Stores in detail with the aim of analysing the Court of Justice’s clarification on the legal requirements necessary to invoke a UCD and how this guidance may be useful to other right holders in future proceedings. Finally, a conclusion consisting of a summary of the findings of the thesis and recommendations for the identified issues will be provided.

12_{Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs}

13_{Directive 98/71/CE of the European Parliament and of the Council of 13 October 1998 on the legal protection}

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1 Legal Protection of Designs

1.1 Economic Background & Market Analysis – Fashion Industry Basics

Each and every one of us is a participant in the fashion industry. At its core, fashion fulfils various functional roles: a winter coat keeps us warm, a bag stores our valuables and rubber boots keep our feet dry. Fashion is also a means of self-expression. People inevitably express themselves through fashion (even if the clothes they wear serve to communicate that they do not care about fashion).14 Beyond that, fashion conveys an artistic meaning from the

designer’s perspective. Aesthetics, style and design are therefore of central importance.

Fashion is an industry of immense global importance. The European textile and clothing industry alone has generated a turnover of €178 billion in 201815_{, making fashion the largest}

creative industry.16 In the creative fields, IP law is involved in shaping the degree and direction of innovation of the creative goods produced and made available to consumers. Particularly in an industry of such an economic relevance, it is crucial to understand the economics that must influence any inquiry into its regulation in the form of IP laws.17 The degree of concentration in the fashion industry, especially compared to other creative sectors is relatively low.18_{The majority of players in the European apparel market are SMEs. 90% of}

the total workforce is comprised of companies with 50 employees or less which accounts for 60% of production.19 Since using trademark protection as a means of IP enforcement is more

14_{Scott C. Hemphill and Jeannie Suk Gersen, ‘The Law, Culture, and Economics of Fashion (2009)’ Stanford}

Law Review, Vol. 61, March 2009; Columbia Law and Economics Working Paper No. 344; Harvard Law and Economics Discussion Paper No. 627; Harvard Public Law Working Paper No. 09-63.

15_{Euratex Annual Report 2018 (The European Apparel and Textile Confederation)}

<www.euratex.eu/wp-content/uploads/2019/05/EURATEX-KEY-FIGURES-2018.pdf> (accessed 16th_{September 2019)}

17_Ibid

18_{Kal Raustiala, Christopher Jon Sprigman, ‘The Piracy Paradox: Innovation and Intellectual Property in}

Fashion Design’, Virginia Law Review, Vol. 92, p. 1687, 2006; UCLA School of Law Research Paper No. 06-04.

19_{European Commission, Textiles and Clothing in the EU,}

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beneficial to well-known and established brands that already possess a strong brand affiliation amongst consumers, design rights can be of particular importance to smaller brands and newcomers. Typically, brands with strong brand association use more branding on their products and therefore have more visible trademark protection. Designers with less brand association face entry barriers to the market and are restricted in growth because their trademarks are likely to not be as strong.20

1.1.1 The Role of Intellectual Property in Fashion

Without diving too deep into a debate about the justifications for IP, one key issue addressed by intellectual property rights is solving the free-rider problem. Essentially utilitarian, this standard justification for IP rights argues that copying stifles incentives for innovation. Technological innovations and creative works such as musically, artistic and literary works tend to require significant intellectual and financial investments to be created while being rather easy to copy. Advocates for strong IP rights, therefore, argue that without IP protection, copyists are able to free-ride on the skill and labour employed by others, thus deterring

subsequent investments in new creations.21

Copying has always been a prevalent issue in fashion. Already in 1903 has Charles Frederick Worth started to sew labels into his garments in order to authenticate his designs. Coco Chanel famously called knockoffs “the ransom of success”.22 Today, copying forms a sector in the market in itself - the fast fashion industry. Fast fashion is defined as “an approach to the design, creation, and marketing of clothing fashions that emphasizes making fashion trends

20_{Gianna Cresto, ‘A Design of its Own: How to Protect the Fashion Industry’ (March 11, 2018). American}

Intellectual Property Law Association (AIPLA) Quarterly Journal, Forthcoming

21_{Kal Raustiala, Christopher Jon Sprigman, ‘The Piracy Paradox: Innovation and Intellectual Property in}

Fashion Design’, Virginia Law Review, Vol. 92, p. 1687, 2006; UCLA School of Law Research Paper No. 06-04.

22_{Helena Pike, ‘The Copycat Economy - Do knockoffs harm the fashion business? Or does copying keep the}

wheels of the industry turning?’, The Business of Fashion, 14th_{March 2016,}

<www.businessoffashion.com/community/voices/discussions/what-is-the-real-cost-of-copycats/fashions-copycat-economy> (accessed 20th_{September 2019)}

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quickly and cheaply available to consumers.”23 Retailers such as Zara and Forever 21 have a significant market share and bring designs from the big fashion houses’ runway shows to their stores within ten days, thereby beating the original.24_{More crucially, fast fashion companies}

are able to observe the market and only copy those designs that are particularly popular amongst retail store buyers and consumers.25 Of course, fast fashion companies are not the only players in the market guilty of copying.26 Design copying happens on all levels of the market and in all directions. French luxury brand Chanel has for instance been called out for copying the designs of less famous designers and direct competitors on multiple occasions.27 Nonetheless, the fast fashion industry is special in that it has practically institutionalised the concept of design copying.28_{New technologies have helped to even speed-up the process.}

Fashion shows can be live-streamed and drawings of designs can instantly be sent to factories. With sophisticated low-cost supply chain models, thousands of high street stores worldwide and a strong online presence, fast fashion retailers can exploit the financial returns of catwalk

23_{Merriam Webster Dictionary, Definition of Fast Fashion,}

<www.merriam-webster.com/dictionary/fast%20fashion#h1> (accessed 20th_{September 2019)}

24_{James Donoian, Margarita Wallach, ‘Fast fashion and IP regulation: will fast fashion kill the golden goose?’,}

Lexology, 24th_{May 2018, <www.lexology.com/library/detail.aspx?g=2b1efd99-6f50-486f-aec2-fa9569bc9102>}

(accessed 20th_{September 2019)}

26_{‘Nine Times Fashion Industry Giants Copied Smaller Brands’ (The Fashion Law, 1}st_{August 2016)}

<www.thefashionlaw.com/home/nine-times-the-big-guy-copied-the-little-guy> (accessed 30th_{September 2019)} 27_{E.g. in 2015, Scottish designer Mati Ventrillon complained about the pattern on Chanel knitwear (Vanessa}

Friedman, ‘Called Out for Copying, Chanel Does the Right Thing’ (The New York Times, 11th_December

2015)); a shoe show casted in a 2017 Chanel runway show resembled a previous design by Dolce & Gabbana in 2014 (Andrea Park, ‘Stefano Gabbana Hints that Chanel Shoe Looks Like a Dolce & Gabbana Show on Instagram’ (Teen Vogue, 5th_{May 2017)); in 2012, Chanel withdrew a bracelet which resembled a design by}

jewellery designer Pamela Love (Lisa Niven-Phillips, ‘Chanel’s choice’ (British Vogue, 14th_{March 2012)}

<www.vogue.co.uk/article/chanel-crystal-bracelets-pamela-love> (accessed 30th_{September 2019))} 28_{E.g. in a recent complaint to a US Court concerning a knock-off shoe, Nike is alleging that “instead of}

innovating its own designs and technologies,” Skechers is maintaining a “business strategy that includes copying its competitors’ designs to gain market share” driven by its CEO who merely “gives orders to knock-off

competitors’ [successful] products.” (Nike, Inc. v. Skechers U.S.A., Inc., 2:19-cv-08418 (C.D. Cal.)); Another example of a multinational corporation notoriously following a business strategy of design copying is Forever 21:‘From Gucci and adidas to H&M and Puma, a Look at Forever 21's Long History of Litigation’ (The Fashion Law, 1st_{October 2019)}

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designs before the actual designers have been able to benefit from their investments.29 The issue that the fast fashion model, but also copying and free riding in general, poses to IP law is that copyists are usually faster than the relevant registrations can be obtained. In the US, where there is no protection for the design of apparel and footwear, copyists can steal the design of a product and merely leave out registered trademarks and references to the original owner. While copying may not be tremendously harmful to large and established brands who already have a large customer base and can enforce their strong trademark and patent rights, design copying can be highly detrimental to newcomers and small brands.

1.1.2 Imitation as the sincerest form of flattery - how much protection is really

necessary?

Only a few customers can actually afford the original trend-setting designs that are show cast on runways and worn by the rich and the famous. If it was not for this type of copying and knocking-off that would be rejected in other creative industries such as music and film, a large part of consumers would not be able to participate in trends. So why is it that copying in the fashion industry has not only been institutionalised, but also appears to just be accepted?30 Kal Raustiala and Christopher Sprigman suggest that copying in the fashion industry does not stifle innovation, but, on the contrary, fosters the same – a phenomenon they call the piracy paradox.31_{Copying, they argue, is as old as the industry itself, yet business is booming.}

Following early theories by Veblen and Simmel, fashion is seen as a positional good that confers a certain status in society.32 Social elites are the first ones to adopt a particularly

29_{James Donoian, Margarita Wallach, ‘Fast fashion and IP regulation: will fast fashion kill the golden goose?’,}

Lexology, 24th_{May 2018, <www.lexology.com/library/detail.aspx?g=2b1efd99-6f50-486f-aec2-fa9569bc9102>}

(accessed 20th_{September 2019)}

30_{Alastaire Rawlance, ‘Fashion's High Stakes: The Role of Intellectual Property’ (The Fashion Law, 26}th_May

2017) <www.thefashionlaw.com/home/fashions-high-stakes-the-role-of-intellectual-property> (accessed 23rd

September 2019)

31_{Kal Raustiala and Christopher Sprigman, ‘The Piracy Paradox: Innovation and Intellectual Property in Fashion}

Design’, 92 Virginia Law Review 1687 (2006)

32_{Thorstein Veblen, ‘The Theory of the Leisure Class’ (Dover Publ’n 1994) (1899); Georg Simmel, ‘Fashion’,}

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trending style. This style is then copied by high street retailers to be sold to the masses who attempt to mimic the fashion of the upper classes. By the time a style has spiralled down the market via copies, the early adopters are no longer interested in wearing it as they seek to differentiate themselves from the mainstream. The thus caused ‘induced obsolescence’ solves the basic dilemma underpinning the economics of fashion: in order to consistently generate sales, consumers must buy this season’s designs but must also become discontent with them so that they will purchase the designs of the next season.33 In effect, the induced obsolescence caused by design copies speeds up and increases the demand for new products and the need for innovation thereby creating a new source of income for designers.

This idea of the cyclical nature of fashion which provides structural protection against copyists dates back to the early 20th Century.34 It fits into a time when there were bi-annual shows presenting current styles to the upper classes which were then sold in department stores and only months later copied for the masses. Today, designs are emerging at all levels of the market, not only in the couture and luxury sectors, styles are no longer season-specific and the speed, scale and cost-efficiency with which knock-offs are produced have increased.35_{As a}

result, there is no longer a time frame for designers to recover the costs of their initial

investment, while copyists do not have to invest in talented (and expensive) designers and can cherry-pick each season’s most successful designs.36 The piracy paradox no longer serves as a legitimate base for allowing design copying to occur as the market structure has changed.

33_{James Surowiecki, ‘The Piracy Paradox’ (The New Yorker, 17}th_{September 2007)}

<www.newyorker.com/magazine/2007/09/24/the-piracy-paradox> (accessed 24th September 2019)

34_{Paul H. Nystrom, Economics of Fashion (Ronald Press, 1928)}

35_{Amy Kover, ‘That Looks Familiar. Didn’t I Design It?’ (New York Times, 19}th_{June 2005)}

<www.nytimes.com/2005/06/19/business/yourmoney/that-looks-familiar-didnt-i-design-it.html> (accessed 26th

September 2019)

36_{Susan Scafidi, ‘Fashion Designers Deserve the Same Protection as Other Creatives’, (The Business of}

Fashion, 15th_{March 2016)}

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A central theme of intellectual property law is striking a balance between encouraging new creations and making existing creations available to the public. The relationship between trends and innovation is at the heart of this debate. Hemphill and Gersen present a more nuanced view on the piracy paradox issue by distinguishing between the close copying of designs and participation in common trends.37 Instead of viewing fashion purely as a status-symbolling commodity, they emphasise the dual nature of consumer behaviour encompassing trends: the relationship between differentiation and flocking. Consumers may wish to follow a trend (flocking) in order to be part of a particular zeitgeist, but, at the same time, they do not want to be mere replicas of others (differentiation). As Anna Wintour, editor of Vogue, noted fashion enthusiasts aspire to be “looking on-trend and beyond trend and totally themselves.”38

Essentially, the article advocates for an analytical distinction to be made in relation to creative goods between, on the one hand, activities (such as inspiration, homage, remixing, etc.) that produce, further and compose trends and, on the other hand, close design copying. While products that follow a trend have the positive effect of satisfying consumer demand for differentiation within flocking, close copying causes economic harm to designers and reduces their incentives to create.39 Hemphill and Gersen argue that besides the fact that reduced profits negatively affect the amount of innovation, “the lack of protection against design copying, combined with the existence of trademark, trade dress, and other protections, also distorts the direction of innovation,”40 in other words, that financial resources will

increasingly be directed towards developing a brand image and strong trademarks which are legally protected instead of furthering the innovation of artistic designs.

37_{Scott C. Hemphill and Jeannie Suk Gersen, ‘The Law, Culture, and Economics of Fashion’ Stanford Law}

Review, Vol. 61, March 2009; Columbia Law and Economics Working Paper No. 344; Harvard Law and Economics Discussion Paper No. 627; Harvard Public Law Working Paper No. 09-63.

38_{Anna Wintour, Editor’s Letter, VOGUE, August 2008, at 70.}

39_{Scott C. Hemphill and Jeannie Suk Gersen, ‘The Law, Culture, and Economics of Fashion’ Stanford Law}

Review, Vol. 61, March 2009; Columbia Law and Economics Working Paper No. 344; Harvard Law and Economics Discussion Paper No. 627; Harvard Public Law Working Paper No. 09-63. 106.

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What we can learn from the foregoing economic debate in terms of legal policymaking is that the legislator should aim to create a balance between restricting types of design copying that are harmful to competition and innovation while ensuring that other types of

referencing/remixing/trend participation/etc. that foster innovation and satisfy consumer demand remain permissible. This relationship between copying and remixing which is a reoccurring theme in intellectual property law is well reflected in approaches to legal regulation in the fashion industry. Nonetheless, it is peculiar that while in other creative industries copying is deemed as unacceptable, the standards of protection for individual works in fashion are much lower. Think about music for instance and its line of case law on

unauthorised sampling and remixing featuring superstars like Queen and Marvin Gaye.41

Some may view fashion as elitist, frivolous, wasteful and of no artistic merit. In this thesis, I seek to argue that it is in its essence similar to other creative industries and the same

arguments on economic incentives and the detriment caused by copying apply as they apply to music, films or books. There is no feasible economic or social welfare argument for why fashion should then not be awarded just as much protection as other creative industries.

1.2 Community Design Rights

1.2.1 What is the essence of design rights?

Though often overlooked, the impact designs have on our day-to-day lives is omnipresent. A particular design may influence the look of the clothes we wear, the shape of the cars we drive and the toothbrush we use and, in this sense, designs actively influence a consumer’s decision as to which product to buy.42_{Generally speaking, the taxonomy of intellectual property law}

distinguishes between the protection of creative (usually protected by copyright),

41_{Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 concerning a remix of Roy Orbison’s Pretty Woman;} Williams v. Gaye, No. 15-56880 (9th Cir. 2018) concerning Pharrell Williams’ and Robin Thicke’s ‘Blurred

Lines’

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technological (patents) and marketing (trademarks) activities – the concept of designs does not quite fit into any of these categories.43 While the fashion design of an haute couture dress may qualify as a creative work, certain design features of a running shoe can enhance its function and are therefore technical in nature. But, a product design usually serves to sell the product itself, making it a marketing asset. Annette Kur, one of the contributors to the proposal for the EU design law reform, contents that the main purpose of design in modern societies is to fulfil a marketing function. Industrial designs usually work as a tool for a brand to facilitate and increase the sale of its products to consumers. She provides the example of a coffee machine and a canvas painting to illustrate this point: while the design of the coffee machine has the purpose of selling the coffee machine itself, the painting does certainly not serve to sell the canvas.44 This view on the essential function of designs is reflected in the EU approach to design law.45

The above theoretical considerations are relevant to grasp the intention behind the EU’s legislative proposals on the protection of industrial designs. The European Commission’s proposals on a harmonised European design law are based on preparatory works by the Max Planck Institute and thus clearly inspired by German law46 which recognised short-term protection against copying of fashion designs under unfair competition law.47 Rather than unifying existing design law provisions of the Member States, it was the intention of the legislature to create a new, parallel system for design registration at Union level, similarly to the EU trademark and patent regimes. Though some differences in the national systems arose due to variations in the respective design statutes, the key discrepancy was found to be lying

43_{Michael Spence, Intellectual Property (Oxford University Press 2007) 214.}

44_{Annette Kur, ‘The Green Paper’s Design Approach – What’s Wrong with It’ [1993] EIPR 376.}

45_{Commission, Green Paper on the Legal Protection of Industrial Design (Brussels, June 1991),}

III/F/5131/91-EN (Green Paper) para 1.4

46_{Dr. Martin Schlötelburg, Arnaud Folliard-Monguiral, ‘An overview of the Community design system’}

<www.aippi.de/seiten/pdf/Folliard.PDF> (accessed 20th_{October 2019)}

47_{German Federal Court (BGH) decision of 19 January 1973, l ZR 39/71 (KG), Modeneuheit (1973) 9}

Gewerblicher Rechtsschutz und Urheberrecht 478.; German Federal Court (BGH) decision of 6 November 1997, I ZR 102/95, Trachtenjanker (Bavarian jacket) (1998) 6 Gewerblicher Rechtsschutz und Urheberrecht 477.

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in the theoretical approaches to design law.48 Most Member States, e.g. France, allowed cumulative protection under copyright, others, such as Germany, also allowed claimants to seek cumulative relief under unfair competition laws, while the UK does not have a system of unfair competition laws - a distinction which proved to be crucial in practice.49 The EU legislator opted for harmonisation in a piece-meal fashion by harmonising design law while leaving the fields of copyright and unfair competition untouched. To this end, the Green Paper expressly states that protection on any other legal grounds is not precluded by design

protection and allows for designs to be protected under national copyright and/or unfair competition law systems.50 The current European design law landscape thus becomes an overlap of interlocking national and EU IP rights in combination with unfair competition and copyright laws.51 This patchwork approach is in line with the general characteristics of the EU internal market legislative procedure which is by nature a procedure aiming for the best possible compromise regardless of whether the solution may be considered laudable from a traditional legal point of view.52

Due to the multifaceted nature of designs, national laws typically either treated designs as a product of imagination using a copyright model or as inventions following a patent-like registration system.53 The EU design system “aims to escape from this tradition which

confined designs to legal straitjackets which do not suit their nature.”54_{Accordingly, the legal}

48_{Herman Cohen Jehoram, ‘The EC Green Paper on the legal protection of industrial design: half way down the}

right track - a view from the Benelux’ E.I.P.R. 1992, 14(3), 75-78

49_{Annette Kur, ‘The Green Paper’s Design Approach – What’s Wrong with It’ [1993] EIPR 375.}

50_{European Commission, Green Paper on the Legal Protection of Industrial Design (Brussels, June 1991),}

III/F/5131/91-EN (Green Paper), Article 98; The Court of Justice recently confirmed the principle of cumulation in C‑683/17 Cofemel – Sociedade de Vestuário SA v G‑Star Raw CV where it held that copyright protection for designs simply arises when the originality requirement is met.

51_{Anna Tischner, ‘The role of unregistered rights – a European perspective on design protection’ Journal of}

Intellectual Property Law & Practice, Volume 13, Issue 4, April 2018, 303-314.

52_{Marc-Roger Hirsch, Willem Hoyng, Marianne Levin, Dietrich C. Ohlgart, Jeremy Phillips, Bemhard Posner,}

Vincenzo Scordamaglia, European Design Protection, Commentary to Directive and Regulation (Kluwer Law International, 1996) 3.

53_{Annette Kur, Marianne Levin, Jens Schovsbo, The EU Design Approach: A Global Appraisal (Edgar Elgar}

Publishing 2018) 5.

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design landscape comprises a mix of both forms of protection in the form of a registered Community design right (hereinafter RCD) and an unregistered Community design right. Nonetheless, the aim was not to create a parallel system of RCDs and UCDs, but rather the system is intended to award subsidiary protection in the case of shortcomings of the registered design system.55 In terms of its structural and institutional organisation, the EU design regime is closely modelled after the two-tire EU trademark system and operates at two levels with a Directive partially harmonising existing national law provision and a Regulation creating a new unitary pan-European right.56

Besides the overriding concern of removing obstacles to trade within the Single Market, another aim of the harmonisation of design laws was to make the European economy more internationally competitive. At para 3.4.1., the Green Paper states that “for this reason also it is important that European designers and firms can rely on legal protection for their products in order to recoup the investment which design development entails”57, reflecting the

legislator's pro-rights holders approach in writing a regulation adapted to the needs of the industry.58_{The proposal’s industry focus becomes even more evident when considering the}

Commission’s rationale behind Unregistered Community Designs:

“Some sectors of industry develop with short intervals a large number of designs. Of the

designs developed only a few are exploited commercially. Under the present conditions the commercial value of designs cannot as a general rule be tested in the marketplace before registrations are taken out lest the designs lose their character of being novel. Further, if the

55_{Annette Kur, ‘The Max Planck Draft for a European Design Law - The Green Paper on the Legal Protection of}

Designs’, CIR--Centrum voor Intellectuele Rechten (Katholieke Universiteit Leuven/Brussels) 1992.

56_{Jane Cornwell, ‘Under-referred, under-reasoned, under-resourced? Re-examining EU design law before the}

Court of Justice and General Court’ E.I.P.R. 2002, 24(12), 585-590

III/F/5131/91-EN (Green Paper) para 3.4.1.

58_{Dr. Martin Schlötelburg, Arnaud Folliard-Monguiral, ‘An overview of the Community design system’}

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remedy this situation a short-term unregistered design protection is suggested.”59

In order to be granted design protection, a design must be considered novel compared to all prior existing designs, as will be discussed below. Due to the large volume of designs released on a consistent basis in some sectors, it is commercially unrealistic to apply for registrations for each design prior to putting it on the market, however, in a purely registration-based system, this would result in the design losing its novelty. Unregistered Design Rights are therefore engineered to provide interim legal protection to industry sectors manufacturing many products with relatively short life cycles, such as in particular the fashion industry.

1.2.2 Protection Criteria

The Community Design Regulation defines a design as the “appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”.60_{Following the idea}

that it is a design’s principle function to increase a product’s marketability and attractiveness to consumers61_{, “features of appearance” of a “product” which are “solely dictated” by its}

“technical function” are excluded from protection.62_{At the same time, this does not mean that}

there is any requirement in terms of aesthetic quality.63

The protection criteria for registered and unregistered designs are the same. In order to be subject to protection, a design must be “new” and have “individual character”.64_{The concept}

III/F/5131/91-EN (Green Paper), Executive Summary, 5-6.

60_{Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs Article 3a}

61_{Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, Towards A} European Design Law (Max Planck Institute, 1991) 1, 6, 8–10 and 58–61; Commission, Green Paper on the

Legal Protection of Industrial Design (Brussels, June 1991), III/F/5131/91-EN (Green Paper), paras 1.4 and 5.4.1

62_{Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs Article 8(1); art.7(1) of}

Directive 98/71 of 13 October 1988 on the legal protection of designs Article 7(1)

63_{Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs Recital 10; The CJEU}

recently confirmed the ‘no aesthetic consideration test’ in Case C-395/16 DOCERAM GmbH v CeramTec GmbH (C-395/16) EU:C:2018:172; [2018] Bus. L.R. 1073; [2018] 3 WLUK 165 (ECJ (2nd Chamber))

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of novelty entails that “no identical design has been made available to the public”.65_{A design}

has been made available to the public “if it has been published, following registration or otherwise, or exhibited, used in trade or otherwise disclosed, (…) except where these events could not reasonably have become known in the normal course of business to those

specialised in the sector concerned, operating within the Community.”66_{Following this}

definition, the assessment consists of two elements: an absolute element in relation to the worldwide existing corpus of designs and a relative element of (presumed) knowledge within specialist circles in the Union.67 The relative criterion was added in the drafting stage

following concerns from the textile industry that a standard of absolute novelty would in practice allow defendants to submit fake evidence of previously spotted designs, for instance on a small market in a country far-away.68

The notions of novelty and individual character are interrelated. While novelty calls for a simple difference compared to existing works, individual character involves a qualified difference.69 By choosing the wording “individual character” the legislator chose to

distinguish the design concept from the standards required for trademark (distinctiveness) and copyright (originality) protection. There is no requirement for a design to communicate the product’s commercial origin (trademark law) or to embody the personality of its creator (copyright). Essentially, the concept of individual character merely expects the design in question to differ to some extent from the existing design corpus.70 More specifically, the Regulation deems a design to be of individual character “if the overall impression it produces

65_{Ibid Article 5(1)} 66_{Ibid Article 7(1)}

67_{Victor M. Saez, ‘The unregistered Community design’ E.I.P.R. 2002, 24(12), 585-590}

68_{Annete Kur, ‘Industrial Design protection in Europe – Directive and Community Design’ (Max Planck}

Institute for Competition and Innovation, May 2003) 5.

69_{Marc-Roger Hirsch, Willem Hoyng, Marianne Levin, Dietrich C. Ohlgart, Jeremy Phillips, Bemhard Posner,}

Vincenzo Scordamaglia, European Design Protection, Commentary to Directive and Regulation (Kluwer Law International, 1996) 51.

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on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public”.71_{Since the focus here lies on the overall}

impression produced by the design, common features of the design claiming protection and any previous works are weighed more than differences between the two.72_{Also, the}

designer’s degree of freedom in developing the design is to be taken into account when assessing individual character.73

The relevant perspective to judge from is that of an ‘informed user’, a concept which places itself somewhere in the middle between the average consumer without specific knowledge employed in trademark disputes and the skilled expert with detailed technical expertise as applicable in patent matters.74 In the Pepsi Co case, the European Court of Justice (hereinafter CJEU or ECJ) further clarified that “the qualifier ‘informed’ suggests that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them."75 Since the products in question were pogs used for promotional purposes the informed user was deemed to be a child between the ages of 5 to 10 or a marketing manager in the relevant field.76 Though arguably every person is a user of fashion as a good, the informed user for the purpose of assessing the individual character of fashion designs will most likely be considered a more attentive consumer in the

71_{Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs Article 6(1)}

72_{Audrey Horton, Morag Macdonald, ‘Community designs: the key features and scope of protection’ (Thomson}

Reuters Practical Law, 2006)

<www.uk.practicallaw.thomsonreuters.com/7-202-0187?transitionType=Default&contextData=(sc.Default)&firstPage=true#co_anchor_a989124> (accessed 7th

October 2019)

73_{Ibid Article 6(2)}

74_{European Intellectual Property Office, Guidelines for Examination of Registered Community Designs,}

01.02.2017

<www.euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/trade_marks/Draft_Guidelines_WP_1_2017/29_examin ation_of_design_invalidity_applications_clean_2017_en.pdf (accessed 7th_{October 2019)}

75_{Case C‑281/10 P PepsiCo, Inc. v Grupo Promer Mon Graphic SA, Office for Harmonisation in the Internal} Market para 59

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form of a frequent shopper or fashion blogger.77 Fortunately for practitioners, the qualifier ‘informed’ allows them to avoid the nightmare of having to adduce public surveys as

evidence of a design’s individual character as often required in trademark infringement cases.

Although it is stated in the Recitals that in order claim protection, a design must “clearly differ” from existing designs in the overall impression it produces on the informed user78_and

additionally, the Green Paper states that both RCDs and UCDs offer protection against “identical and substantially similar designs”,79_{there is no substantive provision in the}

Community Design Regulation governing the necessary threshold for protection in terms of assessing individual character.80

1.2.3 Registered Design Rights vs. Unregistered Design Rights

As the name indicates the primary difference between Registered Community Design Rights and Unregistered Community Design Rights lies in the fact that for UCDs there is no formal registration requirement. An unregistered design right simply arises after the design in question has been made available to the public within the Community,81 provided such disclosure could have reasonably become known to specialised circles operating within the Community.82 Reading Article 11, it is not entirely clear whether the first disclosure of a design has to take place within the Community (as otherwise the design would no longer be considered new vis-à-vis the worldwide existing design corpus), or, as following the logic of Article 3 would suggest,83 whether disclosure of the design may take place anywhere in the

77_{Judith Bussé, ‘The Unregistered Community Design to conquer the European fashion industry’ (Lexology,}

13th_{September 2019) <www.lexology.com/library/detail.aspx?g=f422684f-1d12-4461-94be-8c894173c216>}

(accessed 8th_{October 2019)}

78_{Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs Recital 13}

III/F/5131/91-EN (Green Paper) 6.4.5.3

Institute for Competition and Innovation, May 2003) 6.

81_{Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs Article 11(1)} 82_{Ibid Article 11(2)}

83_{Ibid Article 3(2): A design shall be protected…(a) by an ‘unregistered Community design’, if made available}

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world as long as specialised circles within the Union have taken cognisance of such disclosure. The later inserted provision Article 110a(5) confirms that a disclosure that has taken place outside the Union has a novelty-destroying effect.84_{Nonetheless, the question}

whether "the public in the community" referred to in Article 11 constitutes the same "public" as in Article 7(1) has never been answered by the Court of Justice or the General Court of the EU (hereinafter GC) and has therefore been referred to the CJEU in the recent case of Beverly Hills Teddy Bear Company v PMS International Group Plc.85 In this case, design drawings of a new toy have been first disclosed at a Hong Kong exhibition, an event both parties deemed to be sufficient for the design to have become known to specialist circles in the Union. While the claimant is arguing that disclosure at the Hong Kong exhibition triggered the design’s UCD protection, the defendant is alleging that the disclosure was in fact novelty destroying. The CJEU’s decision may result in serious consequences for businesses currently relying on UCDs for the protection of their products.86 If an outside-EU disclosure will have the effect of destroying novelty and hence blocking UCD protection, designers will have to carefully consider where to first display their designs first and whether to apply for RCDs which allow for a one-year grace period.87 Brands that place importance on the EU market may choose to no longer present their products outside of the EU, including the UK post-Brexit. As a result, fashion designers may prefer to present their designs in Paris or Milan rather than at the London Fashion Week.88 Potentially the problem could be mitigated by live-streaming the

84_{Ibid Article 110a(5). Additionally, the German Federal Court was of the same opinion in Bundesgerichtshof}

(BGH) decision of 9 October 2008, I ZR 126/06, Gebäckpresse.

85_{Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419}

86_{Verity Ellis, ‘CJEU to toy with design rights: Does a disclosure outside the EU commence protection or}

destroy novelty?’ (Fieldfisher IP Blog, 24th_{September 2019)}

<www.intellectualpropertyblog.fieldfisher.com/2019/cjeu-to-toy-with-design-rights-does-a-disclosure-outside-the-eu-commence-protection-or-destroy-novelty> (accessed 8th_{October 2019)}

87_{Council Regulation No 6/2002 of 12 December 2001 on Community designs Article 7(2)(b)}

88_{Joel Smith, Rachel Montagnon, Laura Adde, ‘Unregistered Community Designs - Could a reference to CJEU}

save London Fashion Week?’ (Lexology, 17th_{October 2019)}

<www.lexology.com/library/detail.aspx?g=1bc527ea-e9cd-4204-8800-dc0f4fb48f55> (accessed 1st_November

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shows, however, it remains to be seen whether this would trigger a simultaneous first

disclosure in the EU.89 Against the background of globalisation and the increased importance of the digital distribution of products and marketing materials, the legislator and judiciary should consider reflecting these developments in EU design law by allowing for more

flexibility regarding the disclosure requirement. If a fashion designer shows his or her designs at the New York Fashion week, the creatives within the EU have very likely taken cognisance of the show via social media live streams or online fashion magazines and blogs. As

previously stated, the CDR has been drafted with a pro-right holders’ attitude in mind reflecting commercial realities. In the opinion of the present writer, the commercial realities of design industries have been very well reflected in the Regulation, particularly with respect to the concepts of individual character and the informed user, however, the disclosure

requirement is in my opinion too restrictive and not reflective of modern industries and their marketing strategies.

Besides the lack of formalities and costs associated with registration, there are wide-ranging differences between RCDs and UCDs in terms of the rights granted by virtue of the respective right. While an RCD confers a full monopoly right which is even enforceable against a party who was unaware of the registration,90 UCD protection does not cover an independent work “by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder.”91_{Essentially this means that in order to successfully}

claim a defence in infringement matters, two elements need to be satisfied: 1) the work must have been an independent creation and 2) non-cognisance on the part of the defendant. As a result, even an identical work can be found to not infringe a UCD if it can be shown that it has

89_{Richard May, ‘Unregistered Community Design update - UK court refers ‘Squeezamals’ case to the CJEU’}

(Lexology, 4th_{October 2019)}

<www.lexology.com/library/detail.aspx?g=aec04d46-0b34-4193-8dcd-58fab4ea0bb2> (accessed 8th_{October 2019)}

III/F/5131/91-EN (Green Paper) para 6.4.3.

Unregistered Community Design Rights as a tool against infringements in the fashion industry- too good to be true?