IP and branding: a fashionable approach to legal protection

Would you ever think that neither the Dior Saddle Bag, nor Bottega Veneta’s Hobo Bag are granted trademark protection in the EU, but Moon Boots are considered a work of art to be protected?

While this question might sound bizarre, or even provocative, upon first hearing, it is related to the peculiar rules of application of intellectual property to fashion products.

All fashion brands, from start-ups to luxury houses, have interest in protecting their work from counterfeit and imitations. EU law offers multiple tools to do so: copyright, patents, trademarks and utility models being the most famous ones. They are all part of what is known as “intellectual property”, albeit with major differences between one another. Copyright protects original creative work and is the most difficult to obtain, while a trademark identifies items that distinguish a particular business from the others. Patents are used to safeguard completely novel industrial designs and utility models cover a specific form of a product.

The same product can even be assured by more than one IP tool: if we take as an example a Burberry trench coat, both its logo and its pattern are covered by trademarks, while its clasps are classified as utility models.

However, in order to gain trademark protection from the EUIPO, a product has to demonstrate that “a sign, which is normally devoid of distinctiveness, has reached the point where it serves as an indicator of origin for a significant portion of regular consumers in Europe”[1]. This is the test that even the Hobo Bag and the Saddle Bag failed to pass, as even though they both have unique shapes, as the Board of Appeal stated ‘average consumers are not accustomed to presuming the origin of products based on their shape, in the absence of any graphic or textual element.’[2]. While being worlds apart in terms of aesthetic, Crocs were also subject to the same treatment, as it was deemed by the Court of Venice that their iconic shoe shape was selected by customers for the substantial value it added to the product and not for its origins. On the contrary, Louboutin were able to trademark the red soles, as the EU court held that they went beyond the mere concept of “shape”.

When looking at copyright, things become even more complicated. While in general EU law requires an original character of the product, Italian IP law also requests “artistic value”. And even though this requirement has been overturned by the Cofemel CJEU decision, in practice there has been no legislative intervention to rectify national law, and Italian courts as well continue to act as if the change never happened.

In 2016, the Court of Milan granted copyright protection to Moon Boots, claiming that “The Moon Boots have profoundly changed the aesthetic concept of the après-ski boot, becoming a true icon of Italian design and irreversibly evolving the taste of an entire historical era in relation to objects of daily use”[3] Indeed, the brand had won numerous awards and the boot itself was chosen by the Louvre museum as one of the 100 most significant symbols of 20th century design. In 2021 - so after the Cofemel pronunciation - Moon Boots were at the centre of another copyright issue[4], and the Court of Milan again granted copyright protection on the grounds of their “artistic value” - which should not even be a requirement anymore.

Not many other brands have had the same luck as Moon Boots against the strict Italian IP regime: not the Delfina Delettrez earrings nor the Dancing with the Stars costumes have won the battle.

Lastly, a brand’s most valuable IP asset is the brand itself. Frequently, it happens to be a patronymic, meaning the founder’s name. As long as the brand remains property of the original owner, this poses no issue, but in case of M&A transactions, complications may arise regarding the use of the name both from the brand and the actual person. As a preventative measure, a brand can formalise the consent of the original founder or their heirs through a patronymic deed, which restricts the founder’s right to use his name in a certain business and is potentially perpetual. It must be kept separate from the non-compete covenant, which prevents or restricts the founder from running a certain business in a certain field and has a time limit set by law.

Now, the difference between the two becomes relevant in cases such as Kering’s acquisition of the shoe brand Sergio Rossi. As Kering required just a non-compete agreement, Gianvito, Sergio’s son, founded the homonymous brand Gianvito Rossi in 2006, and Kering had no legal standing to sue despite the name similarity. Now that Gianvito Rossi has been acquired by Richemond, one can hope that they did not commit the same mistake.

While not a much-beaten path yet in Italy, IP legislation in regard to fashion has expanded far beyond the mere issue of counterfeit, venturing into the border between fashion and art. As fashion shows are no longer simply product displays but are creative works aimed at expressing the stylist’s worldview - take as an example Chanel’s 2014 Supermarket Chic - they can be protected under copyright law as actual performance art. Indeed, luxury brands, with the creation of foundations such as the Fondazione Prada in Milan, which hosts expositions of design and architecture, are affirming themselves as “patrons of the arts”. If this allure reverses on their products, fashion might finally enter as a full-fledged member of the various types of art forms. With all the stricter guarantees that copyright law entails for them.

Ludovica Mazzei

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I contenuti degli articoli rappresentano esclusivamente le idee e le opinioni degli autori, e in nessun modo i punti di vista dell'Università Bocconi.

[1] Bottega veneta hobo bag presentazione DLA PIPER [2] Board of Appeal R 32/2022-2, 7 September 2022 – Dior Saddle Bag [3] Court of Milano, 5 May 2016 – Moon Boot [4] Tecnica v. Chiara Ferragni, 21 Jan 2021