September 16, 2013
French fashion house Céline received design patents for two of its iconic handbags to protect its designs and image, which seems to be a current trend in the fashion industry.
The label now owns the design patents for its Case and Diamond handbags that it is known for. As more and more brands are looking to protect their designers’ ideas and avoid copycats, luxury brands should consider an entire protection strategy to help keep their designs safe.
“Patents, design or utility, are expensive and time-consuming to get, as compared with other forms of intellectual property, and thus skewed in favor of larger labels,” said Susan Scafidi, founder of the Fashion Law Institute at Fordham Law, New York.
“In addition, it isn't clear how effective design patents will be when a court is asked to interpret them,” she said. “Nevertheless, for designs that can be repeated from one season to the next in different materials, such as handbags or sneakers, they are an increasingly trendy option.
“A cease-and-desist letter citing a patent carries more weight than one without, if only by signaling that the patent holder is serious about protecting its designs.”
Ms. Scafidi is not affiliated with Céline, but agreed to comment as an industry expert.
Céline did not respond by press deadline.
The two design patents that Céline was awarded are for its Diamond clutch from the fall 2013 collection and the Case bag from spring 2013, according to The Fashion Law Group.
Even though the process of getting a design patent is not easy or cheap, many brands are investing in more of these as a way to protect their brand.
However, if this does cut down on the number of copycats, other luxury brands will begin to follow in Céline’s footsteps.
“Céline has created the go-to handbags of this decade, and as part of the LVMH Moët-Hennessy Louis Vuitton family has the resources to go the design patent route,” Ms. Scafidi said. “However, these patents will not guarantee that counterfeiters or other brands will use these designs.
“The company can't help but notice its signature silhouettes appearing elsewhere and has obviously decided to take a legal stand against further copying,” she said.
“If design patents work for Celine in the legal realm as well as its handbag designs have worked in the marketplace, then expect others to follow.”
Copycats and counterfeiters
Many luxury brands have filed lawsuits and created trademarks and patents to protect their designs and logos.
For instance, Kering-owned Gucci was vigorously attempting to protect its brand trademarks in court, but the battle against Guess Inc. was likely not worth the costs, experts said.
With the recent court decision in Milan, Italy, Gucci lost three of its Italian and European trademarks, while the brand only received $4.7 million from the $221 million it asked for in the United States-based case. Since the expenses seem to outweigh the costs to Gucci, the brand should consider the alternatives before going back to court (see story).
Furthermore, U.S. label Michael Kors protected the reputation of its brand by filing a lawsuit against Costco Wholesale Corp. for falsely advertising that its products were sold at the retailer.
Michael Kors is going after Costco for an email sent out to its customers offering handbags on sale for $99.99 that used images of Michael Kors products. Since Costco does not sell Michael Kors handbags, but sells other high-end products, this email could have tricked consumers (see story).
Even with these lawsuits, counterfeiters will still copy bags and brands will continue to borrow ideas from one another. Luxury brands that are concerned with these issues should invest in an entire strategy devoted to brand protection.
“Trademark registration, patents and other legal protections will help with enforcement, but the counterfeiters do not respect the legal system and legal protections granted to brands,” said Brian Brogger, president of Microtrace LLC, Minneapolis.
“This is why a complete brand protection strategy also requires the brands to incorporate covert security features such as high-tech tags into genuine products,” he said.
Erin Shea, editorial assistant on Luxury Daily, New York