To protect creative achievements in the fashion industry, there is not only intellectual property law. Competition law also offers important protection mechanisms, for example the so-called supplementary ancillary copyright.
When asked about numerous copies of her designs, Coco Chanel snidely flicked her cigarette and replied that the greatest compliment was to be copied by the competition. However, it is still a central core concern of fashion labels to protect their creations from imitation.
In principle, imitations are free as long as they do not infringe intellectual property rights. The appearance and shape of a garment or accessory can be protected by various rights.
For example, the registration of a three-dimensional trademark can be considered. However, the requirements for such are high. Many formal requirements must be fulfilled when applying for registration. In particular, an image of the product to be protected in a certain quality from several perspectives must be submitted. In addition, the product must be designed in such a way that it deviates significantly from the norm or customary in the industry in order to serve as an indication of origin. We dealt with this topic in our contribution on Moon Boots.
What can be done if no trade mark has been registered? Copyright protection is conceivable. In particular, however, it is advisable to proceed via the so-called supplementary protection of competitive performance. This is the subject of today’s article.
Supplementary protection of competitive performance is regulated in Section 4 No. 3 UWG. This law prohibits anti-competitive behaviour. According to Section 4 No. 3 UWG, it is unfair to (1) offer goods or services which (2) are an imitation of the goods or services of a competitor, if the imitated product (3) has its own competitive character and (4) special circumstances exist which result in unfairness.
The main question is often whether the counterfeit product has a distinctive competitive character. This is the case if the product, due to its specific design, is capable of drawing the attention of the public to its commercial origin or its special features. For this to be the case, the fashion creation must stand out from other products in the market environment in such a way that the public associates it with a particular manufacturer on the basis of its design alone.
This is not easily the case, especially in the fast-moving fashion sector. It is common for certain designs to appear as trends in a season and to be imitated. For example, the same design elements such as washed-out fabrics, special seams on the pockets, open button bands and other decorative seams are used for countless garments.
Clothing and accessories can often only indicate the trade origin by their design if they are special in their overall appearance and are recognised by the public after a long market presence and extensive distribution with the same design over several years. This can only be considered for a design that has proven to be durable after a long and intensive market presence and is not just part of a fast-moving trend.
Of course, it is obvious that not every label can have such a design and meet these strict requirements.
The Kelly Bag by Hermès, for example, has competitive distinctiveness with high recognition and market significance. It is not just a handbag, but a timeless status symbol with an almost mythical status in the fashion world. It is easily recognisable by its special design, in particular because of the bag belt threading through the sides of the trapezoidal bag body, which allows it to be closed with a padlock.
But you don’t always have to stack it so high. Another example is Crocs shoes, for which there is competitive distinctiveness because of their clog-like shape, the fold-down heel strap that allows the shoe to be worn as a sandal and a clog, and the holes in the top of the shoe.
However, if the market is flooded with similarly designed counterfeits, the competitive distinctiveness of a product may cease to exist. This is the case if the design of the original is no longer suitable as an indication of the origin or the special features of the product. However, if the public can still distinguish between imitations with the same external design and the original despite the proliferation of imitations, the competitive distinctiveness of the original remains intact.
For this reason, the major fashion houses keep a close eye on their competitive environment and take action against imitators at an early stage. Chanel, too, did not leave it at her defiant remark and knocking the cigarette ash off her competitors’ heads, but issued countless warnings and took legal action against imitators.