How is menswear protected by intellectual property?

Monday, June 17th 2024
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When we talked about copying in menswear recently, there was some discussion about intellectual property (IP) protection. The main question was why there are so many copies around - do brands not want to sue each other? Or does the law not protect them sufficiently?

Given I was the editor of an IP magazine for several years, this is a topic close to my heart, and one I thought it would be interesting to explore. There is little public understanding of IP (people often use patents, trademarks and copyright interchangeably) and some odd myths (like the one about making seven changes to something). 

As with the majority of PS articles, today’s was based on several interviews, most notably with the IP writer James Nurton and the lawyer Rosie Burbidge, who specialises in fashion and IP. 

So, why do we see so many copycat products around? Is it the law that’s lacking, or is it enforcement?

“We have quite good protection for fashion in the UK - you have an unregistered design right for three years without having to do anything, and you can protect shapes as well as just decoration,” says Rosie. 

“The issue is a commercial one. Taking fast-fashion retailers as an example, by the time a brand has worked out there’s a copy on the market, the fast-fashion retailer might have sold all of the infringing product and removed it from the site. Things can move too fast to allow the brand sufficient time to react. 

“And the volumes are quite small - a fast-fashion retailer like Shein works by having huge variety and producing very quickly, almost on demand,” she adds.

So there isn’t a lot of copied product, and the margin on that product is small - there isn’t much money to go after. You can sue the company as a whole, but it would always be on the basis of the sales of these copies.

How about more expensive products sold at a higher volume? Like all the copies of the Loro Piana shoes we talked about

Well, the first issue is that getting protection on these designs is not straightforward, as it’s hard to argue they’re sufficiently distinctive. Only a couple of months ago, Loro Piana had a trade mark registration for a tassel loafer (below) rejected by the EU IP Office, on the basis that it was just one more variation on an existing type of shoe. 

It’s important to remember than IP rights have very different purposes. The point of a patent is to reward scientific research with a monopoly; the point of a trademark is to help consumers know which product is which. So the test for a trademark is generally whether the ‘average’ consumer in that market would be confused. 

Reading about that case reveals some interesting points, such as the fact that Loro Piana has registered trademarks for its padlock and pendants, and that the loafer is already the subject of several infringement cases. 

“This is one thing the public often doesn’t realise,” says Rosie. “Most infringement disputes settle pretty quickly, even before proceedings are issued, so you never see them.”

In this scenario, one company’s legal department sends a letter to the other, there are meetings and discussions and there’s a settlement, not necessarily involving outside lawyers. That settlement can include monetary compensation, a promise not to sell the product again, and a letter admitting the copying. 

Although, interestingly, environmental concerns today over destroying products mean there is often an agreement that the product can continue to be sold until it’s gone, just in a less prominent way (eg only in stores rather than online). 

But sometimes, legal cases are deliberately public. Adidas recently lost a trademark case over its three-stripes logo to Thom Browne in a New York court, but Rosie says winning wasn’t necessarily the objective. 

“Adidas has been very effective at protecting its three stripes branding by going after everyone that uses similar stripes - three certainly, and often two or four. They have a big budget and can be seen as quite aggressive. However, strategically it is a very effective deterrent.” Documents in that case revealed that Adidas had signed more than 200 settlements over its trademark since 2008, and been involved in 90 court cases. 

Getting attention is important, because often the reason there are so many similar products is plain ignorance. “At the one end of the spectrum there are people on Etsy who don’t know that copying is not allowed, and at some point some of them get an expensive education,” says Rosie. 

“But at the other end there are design teams who are just under a lot of pressure to create at short notice. Also no matter how many times this is debunked, there’s always someone who refers to the idea of changing seven things in a product. It makes no sense but the rumour persists.”

As readers commented in the original PS article, it’s important to differentiate between similar products and counterfeits, the latter being a deliberate attempt to be as similar as possible. 

The biggest issue with counterfeits is enforcement. Most are sold in very small volumes by private sellers, so they’re difficult to go after and there’s not much to gain if you do. It’s also hard to go after the producers of them, usually in China. 

As to the websites that facilitate the sales, such as Amazon, it’s the same story as the regulating them in other ways. They claim to take down accounts actively and have a complaints service for customers, but otherwise take no responsibility. 

In fact, there was a little controversy recently when the industry association for trademarks, INTA, elected Amazon’s head of IP as its president. I have fond memories of INTA’s Annual Meeting, which was always in a different US city and where we published a daily newsletter. I would have liked to discuss that around the conference hall and at the firm parties in the evening.

One thing I find interesting about menswear and IP is that copying of some sort is always involved. It may be a copy of an M-41 US military chino or a 1970s raincoat silhouette, but ‘inspiration’ happens everywhere - it’s a spectrum, not a clear dividing line. 

So given that, how does Rosie think people should feel about copying in general? “I think a good rule of thumb is whether you would feel uncomfortable about doing it. In other words, would you feel annoyed if someone was copying your design?”

This could seem vague, but for most people most of the time, it feels like a good guide. And often if you’re asking yourself the question in the first place, it’s because you already feel uncomfortable. Given the number of small menswear brands starting up at the moment, it’s something they should probably keep in mind. 

Thank you to Rosie, James and everyone else who helped with this article. Rosie is a lawyer at Gunner Cooke in the UK. www.rosieburbidge.com

We’ve deliberately not included an explanation of the types of IP protection - patents, trademarks, copyright, designs - because that could quite dry. But if readers are interested I can do one in the future, with fashion-specific commentary. 

The comments in the piece refer to UK law, but the UK is still substantially similar to the EU, having carried across laws post-Brexit. The principles are also similar in many countries, although the rights may vary, eg design patents rather than designs in the US.

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Anon

All way over my head, and too technical.
I’ll simply save in the longer term for the genuine article and avoid any copies or worse any counterfeit clothing. Simple as that!

Néstor

This:
It’s important to remember than IP rights have very different purposes. The point of a patent is to reward scientific research with a monopoly; the point of a trademark is to help consumers know which product is which. So the test for a trademark is whether the ‘average’ consumer in that market would be confused.
It is difficult to defend that, for example, the development of (e.g., Loro Piana’s summer walks) is scientific research or that someone can get confused when buying, for example, Santoni’s version. I can be convinced otherwise, though.
Fashion should not be compared to the scientific or industrial field. The protection of a medical patent ultimately seeks to protect the health of the community, and for this it is necessary to incentivize or, at least, not penalize investment in the development of medical advances. And then maybe reward the research with a commensurate remuneration. What is the social benefit of protecting the development of particular or even great design? I cannot see it.
The same goes for trademarks, ultimately they aim to protect the consumer from mistakenly acquiring something instead of the original. If the consumer is not to be confused by the “copy” then there is no right of the trademark holder to prohibit others to use the allegedly distinctive element.
I have the feeling that some fashion players are trying to use the IP regulations to merely protect the exclusivity of their products. And the only beneficiaries of the protection are the high margins oh these fashion players. But IP rights were never conceived, as far as I am aware, to protect high margins.

Pyc

Hi Simon, the explanation of the purpose of trademark protection could have been clearer.
The point of a trademark is to tell consumers which product comes from which designer/manufacturer.

Jack Linney

I enjoyed it. Straightforward read, and I particularly enjoyed Rosie’s stage-setting explanation of the difference between trademark and patent. That’s as good an explanation as I’ve read. Full disclosure, though – I’m a lawyer, though one who doesn’t practice in this subject matter or industry.

Charles

Enforcement costs are proportionally too high. Across the luxury sector, brands are more than happy to see the counterfeits – the ubiquity justifies the absurd, annual price increases which in turn means even higher margins. Luxury marketing 101.

Dario

I have read the verdict on Loro Piana’s trademark application and I don’t understand why it got rejected, as having the very specific combination of a padlock that says “LP” and that little round thing that says “Loro Piana” replacing tassels is not something that other brands (that I know of) do, and one could well argue that the example shown in the other picture *is* trying to pass as a Loro Piana.
Having said that, I find it a little ironic that the “quiet luxury” brand is filing this trademark application, which intends to give this combination of decorative elements the same status as a logo…

Dario

Ahh so the padlock and the little ring with the brand on it are from another trademark application… now I think I understand

Brian

My question is rooted in both the original article and this update. The last question about copying, where Rosie says if you feel uncomfortable…. I have always had this double edged discomfort. Looking at brands like Quince, Italiac, Spier and MacKay… these brands make a business off of making similar products to what’s popular in the market (without being disposable). Most of the time there is a good deal of care that goes into the production (Spier and MacKay comes to mind). I have come to feel that these brands are important in the world of fast fashion as they offer some familiar design, but with a quality of construction that is lacking in the majority of the market.
The other side of this discomfort however is the illusion of quality perpetrated by larger houses. I would love to think that with the “rude health” of Loro Piana, that every pair of their shoes is handmade with love and the best materials by multigenerational Italian artisans. The fact of the matter is that given the numbers sold, the reality is likely far less romantic. In fact, companies like Quince and Italic have made a business out of using some of the same factories as the brands from whom they get their “inspiration”. There was this article from the New Yorker (linked at the bottom) that talks about “Made in Italy” with designer handbags and the illusion vs. what reality happens to be. Now the article makes a good point to address that quality is still paramount in production, it just isn’t necessarily the romantic production line people might think. I am willing to buy a suede loafer from Crockett and Jones because I know there are people working on them who have been doing the craft, as their parents did before, in the same factory. I want to support that. If it’s all outsourced and just about who can sew it with the correct number of stitches for the cheapest price, should we care when the style isn’t terribly original in the first place?
So if production really doesn’t vary much between originals and copies, and as Rosie mentions, there’s so much inspiration that the big houses use in a product they release, is there a really a moral black and white here? Rubinacci’s revival of ghurka pant is great, however, they pulled the design from another generation, as did many other tailors in Naples. Because they made them popular again, should you not buy a pair off Etsy? While I do believe that Rubinacci has an excellent production quality/value, I also tend to believe that some of the sellers on Etsy (emphasis on some) are small production with artisans.
https://www.newyorker.com/magazine/2018/04/16/the-chinese-workers-who-assemble-designer-bags-in-tuscany

Dario

When you talk about feeling discomfort about buying Spier and Mackay, what is it that you think you should be doing instead? Buying a more expensive ready to wear, traveling to Naples to have a suit made?
You can not really point to an “original” Neapolitan jacket, like the one Spier and Mackay sells, nor can you pinpoint a specific person or company that brought the style back in fashion… The tailors play of course a part in it, but also the blogs like this one, social media, the general relaxation of dress codes, and yes, companies like S&M themselves, who make it available to a larger audience with shallower pockets. What one may see as cashing in on the hype, may also be making it even more popular.
I just picked Spier and Mackay because I’m slightly more familiar with their offer than the other two companies you mention. But the idea would apply to other companies as well.

Stephen

Hi, I’ve come to this a little late (added a comment this morning). and having read most comments now , wanted to add something.
It’s important to remember in these discussions that countless people throughout the developing world and throughout Europe, US and UK are employed in the clothing industry. Yes we should always be cognisant of working conditions, considering these in which companies we buy from. For me I have little interest in who made something providing they are treated fairly and the end product is of the right quality for my needs. Brands such as Zara for example, ((IMO) create many ‘inspired by’ looks and put them within reach of people who don’t have the disposable income to buy high end and:or from smaller specialists. Just as more expensive brands are unashamedly inspired by pieces in their archives. Overall I believe unless it’s out and out fakes produced in sweatshops, to be avoided and condemned, there is room for everyone.

Brian

Dario (and Simon),
I don’t know that I would want S&M to do anything differently. They provide a service and a product that is very necessary. I can’t think of a brand I like better these days for staples. If I need a pair of simple wool dress pants, I will look to S&M. I know I can get a pant that’s well made, with wool from a quality mill (supporting the mills is very important to me too). In fact, I would prefer to have that over a pair of, say Paul Smith, pants that have a different color stitch around the pockets, but are made with a wool/acrylic blend. The apprehension comes when considering a simple pair from S&M vs. say Zegna. I know how much time and effort Zegna puts into milling their own wool, the care they put into constructing the pants, and how much the company gives back to the world. So, is it worth paying 4x as much for the Zegna? That’s the only issue I take with buying from a place like S&M (on that note, sorry for dragging a name of a brand into the conversation that advertises on PS Simon, that was poor form on my part).
With regards to Simon’s replies, I think it’s very true that a safari jacket from S&M is going to be noticeably different to say 100 Hands. 100 Hands puts an incredible, laudable, amount of time into designing and crafting a product. This is where I think the style shows best, a man wearing a S&M safari jacket next to one wearing one from 100 Hands, I would venture there is an obvious difference (even though both got their inspiration from old British field-wear). There is also the authenticity of dedication that you see with 100 Hands, or Zegna, or as Simon mentioned Hermes. There are certainly companies that spend a lot of time and money designing, then equal amounts of money to insure that what they craft is beautifully, and responsibly made. We should support those brands (when we can).
The issue that I was trying to wrangle with is the balance of it all (especially staples). I think it is imperative to have companies like the three I mentioned, and to support them. It is a fact of the world that we have fast fashion, and most of it is terrible. Not in design, heck they steal the best designs, but in construction, quality, and responsible practices. The majority of the world can not afford Zegna, so I am happy that for some of those people they can choose a good company like S&M over a Shien. But I think when you can make a purchase and look at a S&M vs. a Zegna, you have to look at what you truly get and if that’s similar, where the rest of the money goeds. We all know the story of Brunello Cucinelli & Solomeo; that wouldn’t exist if people weren’t willing to look past the knockoffs and pony up $1500 for a sweater. Now BC drives the market.
Funny side story. I actually have bought something from Shien once, a long time ago before I even heard of it. My wife was putting together an outfit and we had a top in mind from an older season of Agnona. We got the Shien for the event, the next week we found the (obviously nicer) Agnona top we were thinking of in the back of her wardrobe.

Julian Yap

As a recovering attorney, I for one would love a more in depth dive into IP and fashion, but I recognize that I may be outvoted here.

On the subject of copying: I don’t understand how Koio can keep selling the Capri X shoe. I would have thought Zegna would have shut that down.

Jack Thorson

How would this all apply to something like The Real McCoy’s LOT. 004J jacket and the Levi’s Type III jacket?

Charlie

Simon your original article about “copying” seemed to focus on the rights and wrongs of having a company (eg but not to mention Luxire) making something to the same pattern that had been created as a one off by an artisan and whether this was something of an IP issue.
The question of course was who owns the IP.
If you pay a tailor to make a suit, or a shirtmaker to make a shirt that is uniquely to your pattern and specification, they cannot own the IP.
People got tied up in knots over this. But if they do not make the copy in the first place, the who owns it argument does not exist.
Someone who copies a shirt pattern developed for me by Charvet isn’t stealing anything.

Charlie

Thanks Simon, you’ve just made my point for me in your last sentence.
The previous debates were around having something “copied” being wrong because it somehow failed to recognise the value/ownership of the original creator.
I never subscribed to that view. If I pay someone to create a pattern for me, then, it being bespoke and therefore “unique” to me, I consider it to be mine. If I subsequently choose to have it replicated elsewhere, that is surely up to me.

Charlie

Fair points both ways, but if I go to a tailor or shirtmaker who makes me a bespoke pattern, for which I pay, but never subsequently go back to him, then what? Does he “partially” own a pattern that is of no current or future value for him?
He’s been asked to create a pattern, and been paid for it, but will no longer have any need for it.
There may even be an argument that says a second commission should be cheaper than the first because the investment in the pattern has already been made.

BB

Thank God, there’s only one PS.

John X

That’s a really interesting piece. Thank you. My tailor often shows me pieces he’s excited about making. One he showed me recently was a coat for a customer who’d seen something in a film. The customer wanted it in a different material and a different colour. But the design was unmistakably that worn in the film. In practical terms, I can’t see that anybody would have minded – the coat isn’t on sale, the original designer / tailor (and I suppose these may have been different people) may or may not be in the business of making garments for individuals. But on a read of the above (I find I want the case law and the legislation – but not quite enough to search for it – and this clearly isn’t the place for it), am I right in thinking that may technically have been the wrong side of the legal line in the UK if the film wasn’t more than three years old? (But surely the right side of the ‘do you feel uncomfortable’ line.)

I’m intrigued also by the three-year rule (and that this is considered ‘good’). It fascinates me that there are such different rules around different types of IP. Why (other than lobbying power) does Mickey Mouse have such ridiculously long-lived protection? How did we fall on quite the place we have with drugs? Writers vs fashion designers vs scientists vs musicians vs engineers!

We have a sense that you shouldn’t be able to pass your discovery on in a protected fashion for eternity – that would discourage reuse and leave some useful things unaffordable for the masses. But you ought to have some protected time – to encourage innovation. I think the law attempts to find a sensible line between the different creative industries – though is perhaps somewhat distorted by the lobbying power of the different industries. I suspect musicians should, by now, be able to freely sample Happy Birthday, for instance.

But it also highlights other distortions. We’d be horrified if some descendant of Shakespeare was still raking it in every time somebody quotes a line from Hamlet. And yet we’re more-or-less comfortable that the Duke of Westminster still sits on a pile because his ancestor sucked up to a long-dead king and made the fortunate decision to sit on landholdings in London. There are scientists who wrote a prescient paper a decade ago who don’t make a cent now that computers are fast enough to monetise their brainwave, and musicians who make a fortune forty years after they strutted their stuff.

Fascinating – as I say, not the mainstay of your blog – but if we ever meet, I’d love to hear your take on the whole thing as somebody who’s been in that world.

Stephen

Hi Simon, Interesting article that covers (IMO) quite a vague area. Many brands describe something as ‘inspired by’ x or y etc. As the saying about imitation goes……
Would something like the Lacoste emblem be a trade mark?

Markus S.

As a lawyer myself, thank you for this interesting article.
In my experience, intellectual property cases (with the exception of patents) are usually only aimed at obtaining an injunction and then come to nothing. Your article makes the reasons for this very clear.
While it is helpful for a company if the opponent is ordered on short notice by way of interim relief not to sell a product, by the time the main case is decided a year or two later fashion has moved on. So seeing the case through is often not of much interest to the plaintiff.
One thing missing from the article is that the infringer may have to pay damages. But – at least in continental jurisdictions – damages in such cases are very difficult to prove. The person whose rights are infringed would have to sufficiently prove that it e.g. sold x fewer pairs of a certain type of shoe and therefore made x-amount less profit because its opponent had a similar product. Usually not a very promising case.

Markus S

No, you are right. Punitive damages only exist in the US, as far as I know, fortunately.
Punitive damages are a very problematic concept, because what in Europe would be a fine for corporate misconduct that goes to the state coffers, in the US a private individual gets. So they are compensated beyond the actual damages, which is strange and also leads to frivolous lawsuits in the hope of getting a large sum.
In most European jurisdictions punitive damages are even against the ordre public, so they would not be enforced.

Matt Spaiser

Does any of this apply to tailored clothes? Were details like Daks tops ever protected?

Mark

As an IP lawyer working in the “fast cosmetics” sector, I found this an excellent article. Well researched and of course with an insider knowledge. Simon, I hadn’t connected that you were editor of MIP! You didn’t miss much at INTA Atlanta this year though.

joshgtv

Simon, slightly different subject, but related. I’ve noticed seemingly well-established websites selling reasonably expensive replicas of Swiss watches, overtly referencing the brands and models that they are copying. Any idea how they get away with it?