Lululemon sues Under Armour - what the UK approach would be
Sales of athleisure products are sprinting ahead and fashion and sporting brands are competing with one another to design novel products which allow consumers to be both athletic and fashionable or provide some added benefit to the consumer such as comfort.
If a brand expends significant time and financial resources in developing such a product, it will obviously want to prevent competitors from copycatting, which would clearly be damaging. Given the importance of these products to the success of brands’ bottom lines, it is not surprising that brands are resorting to Court action to protect them.
Earlier this month, Lululemon filed a US court complaint against Under Armour alleging that the latter’s range of sports bras infringed the former’s patents and trade dress. An example of one of the patents and an alleged infringing bra is shown below:
The approach for protecting designs of athleisure goods is much easier and cheaper in the UK. Designs can either be registered or unregistered and can protect the whole or a part of the item.
To register a design, it must be new and have individual character – in other words it must not create a sense of “déjà vu” in the mind of a regular user of such products. The registered right lasts for a maximum of 25 years and gives the owner the exclusive right to use the design and any other design which does not produce a different overall impression on the informed user.
It is easier to rely on registered designs over unregistered designs as there is no need to show that the alleged infringer “copied” the registered design, which can be difficult to prove. However, for a number of reasons, it may be necessary to rely on unregistered design rights. This allows the owner of an original design to prevent the reproduction of an identical or substantially similar item. This right will last for 10 years if the design has been commercialised. An original design is one which is not commonplace or not commercially available in the relevant sector at the date of creation and there are exclusions such as the fact that surface decoration or “must fit” or “must match” elements are not capable of protection.
As well as UK design rights, it is possible to register EU design rights and rely on EU unregistered design rights, although the duration of the unregistered right is only three years and it is unclear what will happen to these rights following Brexit.
Take home points
A fashion brand should have in place a strategy to protect rights in key designs. This strategy should include the following:
for a relatively small fee, key designs should be registered as they are almost always easier and less costly to enforce against infringers – in addition, they send a strong message to others in the industry;
if relying on unregistered design rights, keep all drawings and date them at the time of creation to prove ownership and date of creation; and
designs are quick and cheap to register – sometimes protection can be achieved within a matter of days.