Category Archives: Intellectual Property

Protection of clothing IP

Articles imagesA number of businesses in South Africa are related, directly or indirectly, to the design and manufacture of clothing, garments, apparel and fashion accessories. For these companies the issue of protection of Intellectual Property presents a number of challenges that other manufacturing sectors do not face.

Clothing design and manufacture is a rapid process, with even small labels being expected to launch relatively large product ranges on a seasonal basis. This makes blanket protection of products prohibitively expensive and places severe constraints on the forms of IP which can be used. For instance, clothing design generally occurs in a space where mass manufacture limits the available copyright that can be applied. The clothing industry is also a relatively mature technological space, which significantly limits the scope of protection which can be obtained. By the same token, however, a small difference from the prior art (such as a single distinguishing feature) can form the basis for a successful application.

With these issues in mind, there are still a number of avenues open for protection of IP in the clothing and fashion industries. Where a technological innovation is present that sufficiently differentiates an invention from the prior art, protection by means of patent may be used. Designers or manufacturers seeking to protect only the visual aspects of their products may instead rely on registered designs and trademarks.

Registered designs, like patents, are territorial in nature and require novelty. Here this means that the design itself must not form part of the state of the art prior to registration or release. Registered designs are also required to be original or not commonplace in the art, both of which can be broadly understood as meaning that the design must be the original work of the applicant.

Once granted, registered designs can provide a number of advantages for designers seeking to protect a product; as they are relatively cheap to lodge and can be rapidly used to provide protection. In addition, an applicant can register a design up to six months after it is released to the public. Registered designs can also be applied for a number of products common to the clothing industry; including the garments themselves, fabric patterns, and logos or visual designs applied to garments. Finally, registered designs can be applied to sets of items in certain circumstances.

While registered designs can protect the product itself, trademarks allow a designer or manufacturer to protect their brand. Here the purpose of a trademark is to protect a ‘mark’ (defined as any sign capable of graphical representation) for the purpose of distinguishing goods and services from one another. Trademarks are therefore required to be distinctive in relation to similar goods and services, and must be either in use or intended for use as a trademark.

Trademarks, once registered, have significant advantages over other forms of IP protection. They apply to the brand rather than a given product, and can serve to ward off competing services which would seek to capitalise on the brand’s reputation by means of mimicry or misrepresentation. A trademark, once filed, can also (theoretically) last for as long as it is renewed. Finally, trademarks may be applied concurrently with registered designs where logos are concerned. However, the registration of trademarks has significant time and cost implications.

Given the short lifespan of individual clothing designs when compared to the long lifespan of a brand or label, many existing fashion houses have chosen to simply forgo design protection in favour of trademarks. A careful mixture of approaches may still, however, yield the best results when judiciously applied. Patents may be considered for specific cases where critical technology is concerned, while registered designs may be applied more broadly to individual designs or sets of similar designs. Trademarks, in turn, may be used to protect the brand the products reside in, and may be augmented by other measures such as defensive company name registration.

In deciding the right mix of protection to use, the designer or owner should carefully weigh the time and cost of protection against the benefits it provides on a case-by-case basis.

For more information, please contact:

THOMAS GERARD SCHMIDT
Candidate Attorney
Department: Patents
Tel: +27 11 324 3031
Email: thomass@kisch-ip.com

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice. Errors and omissions excepted (E&OE).

 

#facebook #twitter #brandprotection

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By Ruan Dickinson

1.49 billion… that is the massive number of active users on Facebook which is the world’s largest social media platform. In second place we have Twitter with an average of 316 million active users per month. Just to put it in perspective that means that an average of 21% of the entire population visits Facebook on a monthly basis. Facebook and Twitter falls within the top brands of the world and have invested countless hours and money to protect and grow their businesses to what they are today.
But what does this unthinkable numbers of active users even mean to social media giants like Facebook and Twitter? Well let me state the obvious first, it means money, power, control and an endless list of opportunities. However, (and I think you know what is coming)… with great power comes great responsibility, especially from an intellectual property perspective. These companies have to manage a massive amount of intellectual property matters daily.

As for the hundreds of millions of people permanently on these websites it creates an excellent platform to advertise your brand and to get your name out there. As such, countless businesses create profiles and post adverts on these social media platforms to attract custom and to build their reputation. However, because of the nature of the publicity, it can also be extremely harmful to your business if someone is using your name, logo or trade mark in such a way that it may confuse others. As this sort of infringement is relatively new, people are unaware of what steps to follow and of the severe damage that it can be caused to their businesses.

Therefore, if you come across any potential infringement to your intellectual property it is best to act immediately so that the reputation of your business remains unharmed. When faced with such a matter there are certain steps to follow. Firstly, when you are unsure whether or not infringement is taking place it is best to seek legal advice. Once it is established that your intellectual property rights are being infringed, you may want to consider approaching the other side directly as to lodge a complaint through Facebook as the issue might get easily resolved without going through a time consuming dispute. When the matter is being handled through Facebook or Twitter you will need to provide them with information including your company name, account, trade mark(s), trade mark registration number(s), office of registration, goods or services covered by the registration and the username of the reported account. Furthermore, you will be required to submit a declaration incorporating a description of how you believe your intellectual property rights are violated.

Once your claim has been submitted with Facebook or Twitter they will review the alleged infringing content and may take certain actions against the alleged infringing party including but not limited to, removing the infringing content, suspending the account and allowing the infringing party time to take down the reported content. The social media companies will also provide the infringing party with your full details so that they can contact you directly should they be of the view that the content is not of an infringing nature. When you are on the receiving end of a warning from Facebook or Twitter due to a claim of alleged infringement the same as above apply. You will be provided with the full contact details of the other side to counter their application which removed your content from the platform should you feel that the content was not of an infringing nature.

Due to more than 30 billion pieces of content being posted on Facebook per month and over 500 million tweets being posted on Twitter per day it is completely impossible to stop others from posting content on these platforms which are infringing your intellectual property rights and simultaneously confusing the market in respect of your business. However, a good tool to use to minimise the risk of any possible confusion is to fully complete your profile on these platforms by providing your company’s full contact details, website address, biography, all trade marks and posting regular updates on your company’s profile. By doing the latter all the people viewing your profile on Facebook or Twitter will be able to clearly distinguish between the “real business” and any infringing pieces of content being loaded onto other profiles.

Facebook and Twitter have created new challenges when it comes to intellectual property infringement and the way we deal with it. When faced with these challenges it is best to seek immediate legal advice to protect what is rightfully yours and prevent others from harming your brand in the virtual world.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

The pitfalls of joint ownership in IP

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By Thomas Schmidt

The Montana Meth Project, an American non-profit organisation, infamously popularised the phrase “meth: not even once” as part of a media campaign to raise awareness about methamphetamine use. In Intellectual Property law, replacing the word “meth” with “joint ownership” would admirably encapsulate the feelings of some attorneys on this matter.

Joint ownership of IP occurs wherever two or more applicants cannot separate their contributions to a given piece of IP, and so apply for protection of the same subject matter together. In South African Law joint ownership is recognised in Patents, Design Registrations, Copyright and Plant Breeder’s rights. Almost without exception, the existence of other joint owners severely restricts the ability of an applicant to develop, use, promote and generally enjoy the fruits of the jointly owned IP.

A representative can be found in the form of joint ownership of patents. In terms of the South African Patents Act 57 of 1978, joint applicants for a patent are deemed to have ownership of it in equal, undivided shares where no other agreement to the contrary is present. Further, consent of all joint patentees is required to make, use, exercise, sell, grant licences, assign his interests in the patent, or institute any proceedings related to the patent. In effect, each joint patentee is granted a negative right against the other/s over any matter not directly related to the maintenance of the patent. This extends to the court, where joint patentees are allowed to institute proceedings for infringement on their own. Even here, however, they must give notice to every other joint patentee. In the event of disputes between joint applicants, any applicant may apply to the Commissioner of Patents to decide the matter in dispute.

Taken together, the above is a recipe for strife. Even where good intentions are evident on both sides (a state of affairs which money tends to dilute), the inability of one joint patentee to act without the other can paralyse any attempts to properly exploit the invention. Short of a truly comprehensive agreement, there will always be cases where one of the joint inventors is unwilling or unable to provide consent. And when one obstreperous partner can effectively veto any aspect of the commercialisation of the patent, the potential for brinksmanship becomes exceedingly high.

In order to avoid the pitfalls of joint ownership, care should be given to the legal relationships governing the people involved in creating the IP. These legal relationships can be managed by putting agreements in place which set out clear rules for dealing with the IP, and which provide mechanisms for resolving potential conflict between the joint owners. Several options are available to joint IP owners in this regard. Joint patentees may retain their joint ownership but conclude a Joint Ownership Agreement in terms of which one party is authorised to make, use, exercise, sell, grant licences, assign his interests in the patent, or institute proceedings related to the patent independently of the other, or they may assign the IP to a separate IP holding company in which both parties hold shares and have a board of directors manage the IP. Alternatively, the parties may wish to deliberately re-separate the IP by assignment thereof from one party to the other party or by both parties to a third party or by cross-licensing. It is good practice to have all parties involved sign Non-Disclosure Agreements in order to preserve the novelty of inventions, and contracts of employment should always include clauses assigning the rights arising from IP from the employee to the employer so as to ensure that any IP that is created is capable of being exploited.

The above-mentioned approaches all, of course, involve a certain amount of care and investment on the part of the stakeholders. This investment, however, is amply rewarded in the form of regularising of relations and de-escalation of conflicts that arise from issues of ownership.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.