The fast-fashion model allows products to be launched on the market in less than one month. Italy’s design protection system plays an important role in this regard.

Article appeared in Lexology
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‘Time to market’ is the time lag between conception of a new product and the moment that it is placed on the market. Traditionally, this period includes any market analysis (relating to the desires and needs of the targeted consumers), planning and design of the new product, building of a prototype, market surveys and, finally, serial production.

In the fashion industry, it takes at least six months to go through all of these phases and conclude the production process. Indeed, fashion firms usually create a collection for the first part of the year (spring/summer) and one for the second part of the year (autumn/winter). Each collection is planned one year before its actual launch on the market.

However, in order to meet the accelerated needs of today’s market, the above phases have been compressed in a new time to market approach: so-called ‘fast fashion’.

The fast-fashion model generally allows products to be launched on the market in less than one month and is becoming increasingly common – and not only for cheaper products. Fashion firms that apply this manufacturing model can deliver new products to stores as often as twice a week in an ongoing attempt to follow the latest trends.

With some exceptions (usually accessories), the market life of a fashion product is approximately six months.
Regardless of this fast turnover, data relating to counterfeiting of fashion articles is so alarming that it is still necessary to find better ways to protect them.

Traditional design protection is unsuitable and unaffordable in the fast-paced fashion market. On the one hand, the cost of a design application is likely to be considered too high, even if it is made through a multiple application; on the other hand, the lifetime of a design patent is simply too long, even if only the initial five-year period (excluding the second renewal) is considered.
However, the Italian design system, coordinated with EU rules, may help to resolve this issue.

The Italian design protection system has relatively low fees, especially with regard to multiple design applications, and may be considered a cost-effective means of protecting an entire six-month collection. Moreover, the fees do not increase in proportion to the number of designs.

According to the principle of territoriality, the scope of protection of an Italian design registration is limited to the territory of the Italian state. However, if counterfeiting does take place outside Italy (but within the European Union), rights holders have recourse to the EU Community Design Regulation (6/2002), Article 11 sets out a three-year term of protection for an unregistered design from the date of first disclosure – sufficient for most fashion products.

Therefore, applying for an Italian design registration is useful both for providing protection within Italy and for providing proof of a date from which the three-year term of protection for the unregistered design can start.
This creative, cost-effective approach to the problem has helped us to address some cases of ‘instant counterfeiting’ suffered by some of our clients.

Further, if a fast-fashion product is particularly successful and is included again in subsequent collections, there is nothing to prevent an application for a territorial extension within the six-month priority period following the Italian design’s first filing.
The Italian design system and Community design system are quite similar, thanks to harmonisation; nonetheless, a few differences might prove surprising. In particular, Article 26 of the Implementing Regulation of the Italian Industrial Property Code (DM 33 of January 13 2010) provides that “the protection of special denominations, intended to distinguish products, could only be achieved with separate application, on the basis of trademarks law”.

The article in question was introduced into Italian law to avoid what was happening on the Community side. In fact, Community design applications for bi-dimensional signs are filed mainly in order to obtain design protection for elements and components that are actually trademarks.

Rights holders often resort to design instead of trademark protection because this entails no duty to use the protected design (since there is no requirement of use, as there is for trademarks), no preliminary examination for obtaining registration (as for trademarks) and no limitation of the scope of protection to the claimed products or services (whereas for trademarks the identity or similarity of the protected goods or services is a fundamental requirement to claim protection).

Article 26 called into question the possibility of filing Italian design applications for fashion products decorated with words (eg, T-shirts). Indeed, it was unclear whether such words would fall under its provisions. On March 17 2014 the Italian Board of Appeal issued a decision clarifying this issue in Golden Boys (7320). On March 2 2012 Golden Boys filed an Italian multiple designs application for T-shirts decorated with words, mottos or aphorisms. The Italian Patent and Trademark Office refused the application pursuant to Article 26.

The Italian Board of Appeal stated that the applicant’s intention was to obtain protection for such words as an “ornament” on the T-shirts and, therefore, it was not meant to protect “special denominations, intended to distinguish products”.
For this reason, the board ordered the Patent and Trademark Office to grant registration of the design, stating in its final decision that the registration would not grant the applicant an exclusive right to these particular words, mottos or aphorisms outside the product. This probably means that the words were protected only as ornamentation on the products and that no trademark protection could be claimed for them.

The decision clarifies the scope of Article 26 and confirms that the Italian design protection system perfectly suits the needs of the fashion industry.