The Irish fashion market is a mixture of foreign-owned high street stores and independent Irish designers. Many international designers, such as Louise Kennedy, Paul Costello, Simone Rocha, Peter O'Brien, and Philip Treacy are originally from Ireland.
1 . What are the main intellectual property legal tools available to protect fashion products?
In Ireland, national law, European Community instruments, and international agreements grant specific tools to protect IPRs in the fashion industry.
1.1. Trademarks and non-traditional trademarks
Trade mark protection in Ireland may be obtained by registering a national Irish trade mark, a European Union trade mark, or an International trade mark designating Ireland or the EU. National legislation is the Trade Marks Act 1996 (as amended) and the Irish Trade Mark Rules 1996 (as amended).
To be registered in Ireland a trade mark must be capable of:
- distinguishing the goods and services of one undertaking from those of other undertakings; and
- being represented on the Register, in such a manner which enables the public to determine the clear and precise subject matter of the protection afforded to the proprietor of the mark.
To maintain protection in Ireland the trade mark must be renewed every 10 years through the payment of a renewal fee.
A trade mark may be removed from the Register where it has not been put to genuine use in Ireland in relation to the goods or services for which it is registered for a continuous period of five years and there are no proper reasons for non-use.
In Ireland, a series of trade marks may be applied for. The marks must resemble each other but may differ in respect of non-distinctive elements that do not substantially affect the identity of the mark.
Colour mark. Irish law recognises colour marks i.e., marks that consist exclusively of either a single colour without contours, or a combination of colours without contours.
Position marks. Irish law recognises position marks, namely a mark consisting of the specific way in which the mark is placed or affixed on the product.
Shape mark. Irish law recognises shape marks, namely a mark consisting of or extending to a three-dimensional shape. However, a sign will not be registered if it consists exclusively of:
- the shape which results from the nature of the goods themselves;
- the shape of the goods which is necessary to obtain a technical result; and
- the shape which gives substantial value to the goods.
Unregistered trade marks. Unregistered trade marks can be protected by the common law tort of passing off, which is an independent cause of action. This tort protects the goodwill of a business built up through use of a mark. The registration of a trade mark may be prevented by any rule of law protecting an unregistered trade mark.
Pattern mark. Irish law recognises pattern marks, namely marks consisting exclusively of a set of elements that are repeated regularly.
Black/white marks. Registration in black and white may protect against use in colour, unless the colour alters the distinctive character of the mark.
1.2. Design as an alternative or addition to TM registration
Registered design protection in Ireland may be obtained by registering a national Irish design, a European Union design, or an international design designating Ireland or the EU. National legislation is the Industrial Designs Act 2001 (as amended).
Designs are concerned with the outward appearance of a product or part of a product. Appearance can arise from lines, contours, colour, shape, texture and/or materials of the product and/or its ornamentation. A design can be anything from a pattern on a textile to the design of part of a product, such as a button. It is not concerned with how a product works or functions.
Unlike trade marks, design protection is not limited by reference to goods or services. A registered design can be enforced against any other design that creates the same overall impression regardless of whether it is being used in a completely different context.
A registered design gives the owner protection for 5 years, renewable for a further period of 5 years up to a maximum of 25 years.
EU law also provides for unregistered community designs (UCD). UCD rights last for three years and come into being automatically, without the need to make an application for registration to the European Union Intellectual Property Office (EUIPO). There is no national unregistered design right in Irish law.
1.3. Copyright as an alternative or addition to TM registration
In Ireland, copyright protection is governed by the Copyright and Related Rights Acts 2000 (as amended). Copyright is an automatic right, there is no registration procedure for copyright. Copyright is deemed to exist from the moment of creation of the “work”. The act of creating a work also creates the copyright, which then subsists in the physical expression of the work. In general, the term of protection for copyright is 70 years after the death of the creator/author of the work but the term of protection varies depending on the type of work.
To benefit from copyright protection, a work must be “original”, it must not be a copy of a pre-existing work and must involve independent skill and labour.
1.4. Any other pertinent IP rights?
1.5. Summary of additional IPRs
|IPR||Duration||Time and modalities for grant||Pros and cons in the fashion sector|
20 years for full term patents (non-renewable).
10 years for short term patents (non-renewable).
An application can be made directly with the Intellectual Property Office of Ireland, or by filing an EPA with the European Patent Office and designating Ireland. The application secures a filing date and establishes a 12-month period for filing corresponding applications elsewhere that may benefit from the initial filing date.
The expected timeframe for grant of short term national patents is within 1 year, and within 2 years for full term national patents.
Pros: virtual monopoly for the duration. Useful for items such as fastening devices or methods of production.
Cons: the application becomes publicly available during the course of the application, meaning certain information about your invention becomes publicly available. The procedure can be lengthy and costly.
|Trade secrets||Unlimited provided there is no unauthorised disclosure.||Automatic, provided proper policies,|
procedures and practices in place to ensure identification and protection.
Pros: no registration procedure so no registration or renewal fees. Trade secrets have immediate effect.
Cons: a trade secret may be patented by someone else who developed the relevant information by legitimate means.
Domain names (.ie)
|Usually, Registrars offer the possibility to register domain names for one year or for multi-year periods, up to 10 years. It is possible to renew domain names indefinitely.||Domain registrations are subject to a first-come first-served policy. Once an application is submitted and all supporting information is provided it can be processed.|
Pros: fast processing times and reinforces the brand.
Cons: does not confer proprietary rights in the domain name and you are granted a licence to use the domain name for a certain period subject to certain terms and conditions.
2 . Beyond intellectual property: what contractual arrangements are useful in manufacturing, distributing and advertising fashion products?
2.1. Manufacturing fashion products
Licence agreements and Non-Disclosure Agreements (NDAs). Licence agreements provide an opportunity for a fashion house to, for example, extend its brand by giving rights in its IP to others in return for a monetary reward, such as a royalty. Key provisions include identifying the rights licenced, the term of the licence and any renewal rights, what use is permitted, relevant territories, whether the rights are exclusive or non-exclusive, the obligation to monitor for and enforce against IP infringement, and necessary targets and timelines. A prohibition on the licensee seeking to register any of the IP in its own name and change of control provisions should be considered.
NDAs, otherwise called confidentiality agreements, are private contracts whereby valuable information is kept safe and out of the public domain. They may include a restrictive covenant, restricting some form of competition. NDAs may be mutual or one way.
Some IP rights demand novelty as a requirement for acquiring protection, e.g. patents. Therefore, disclosing an aspect of an invention that is intended to be patented should be done under an NDA. NDAs are crucial for protecting non-registered IP, such as trade secrets and know how. NDAs should clearly define the confidential information and the purpose for which it can be used.
Subcontract agreements / in-house manufacturing. Where a rights holder does not have capacity to manufacture in-house, subcontractor agreements may be used to, for example, have all or part of the relevant product manufactured on behalf of the rights holder. The agreement should be clear on what exactly the subcontractor is doing. Other provisions include the disclosure of IP, the consideration payable, the implications of breach, rights of inspection by the rights holder, and the necessary targets to be achieved. The rights holder may wish to acquire rights in any moulds used.
2.2. Distributing fashion products
Agency agreement. The law in Ireland relating to agents is governed by case law, together with the European Communities (Commercial Agents) Regulations 1994 and 1997, which transpose the Commercial Agents Directive (Council Directive 86/653/EEC of 18 December 1986 on the coordination of the laws of the Member States relating to self-employed commercial agents). To be valid, a commercial agency agreement must be in writing. An agent, whether so called or not, is someone who has power to bind its principal.
Generally, an agency agreement is for a fixed term. However, the Commercial Agents Directive provides that a lapse of a fixed term contract, where both parties continue to perform their obligations under the contract, will give rise to a contract for an indefinite term. On termination, an agent may be entitled to compensation.
The products to be dealt with by the agent should be defined in any agreement and whether the agreement is applicable to future products in the same or other classes. The agent may be granted a licence to use IP and the responsibility for dealing with infringements of IP should be addressed.
Selective distribution online in high-end fashion and trademark protection. Selective distribution agreements are useful in controlling the quality of dealers who can market and sell a brand’s products. This is often of importance to brand owners at the prestige or luxury end. However, care needs to be taken to ensure that any such agreements do not fall foul of any applicable competition law. Any agreement should clearly specify the requirements to be a selective distributor. In the Coty Germany case, (C-230/16 Coty Germany GmbH v Parfumerie Alzente GmbH) the Court of Justice of the European Union (CJEU) confirmed that Coty was entitled to restrict distributors in a selective distribution network from selling through certain online platforms if this was necessary to preserve the luxury of the brand.
Co-branding and co-marketing. ’Co-branding’ uses the cross-licensing of IP from different businesses to brand a product or service, with a view to attracting consumer interest and increase sales. While there are a lot of pros to co-branding, if not properly controlled with key contractual terms, a co-branding campaign can harm one or more of the parties involved. Adverse consequences may include marketplace confusion, loss of goodwill due to a partner’s shortcomings, tarnished reputation, dilution, loss of trade mark rights due to overexposure or improper trade mark use. Therefore, careful evaluation of all stages of the campaign is required: pre-launch, co-branding period and following termination. Any cobranding agreement should also deal with ownership of and the right to utilise the co-branded marketing and promotional materials.
2.3. Advertising fashion products
Employing fashion models. When employing fashion models for high-end fashion it is advisable to put in place a contract with the model, preferably with some level of exclusivity, particularly if they are the face of the brand for a significant period. Key provisions of any contract include a termination clause in the event of behaviour that would adversely affect the brand and, subject to applicable competition law, restrictive covenants (for example, upon termination restricting certain engagements with competing brands for a period).
Model release clauses are also important so that the images can be used in all relevant media.
Social media, influencers and brand ambassadors/celebrities. Certain social media may be within the control of the IP owner, for example, its own social media platform, or outside its direct control, namely the social media platforms of third parties. For its own social media, an IP owner should have clear policies in place for its staff and outside agents to ensure consistent use of its IP. Staff handbooks may provide guidelines on what staff may say on their own social media, and the implications of so doing. The social media of third parties may be more difficult to control unless there are agreements in place with such third parties.
Regarding influencers and brand ambassadors, the Advertising Standards Authority for Ireland (ASAI) issued a Guidance Note on Recognisability of marketing communications. This Guidance Note, together with the ASAI Code of Standards for Advertising and Marketing Communications (ASAI Code) and applicable competition law, should be considered when drafting agreements with brand ambassadors and influencers. Some important considerations are:
- Endorsement disclosures. A clause that specifies compliance with the provisions of the ASAI Code that requires disclosure when social media posts are paid advertisements. The context of the post or accompanying hashtag must make this clear and where unclear, the ASAI Code requires that clear ‘flags’ are used, for example #ad.
- Manage Rogue behaviours. A “continuity of persona” clause requiring consistent character and tone (for example during a campaign), and listing topics to avoid.
- Specific activities. A clause detailing the activities required during a campaign, for example, frequency, types, and lengths of posts.
- Content ownership. Any given piece of content may contain several IP elements. How IP rights will be owned, licensed and used should be agreed.
- Misinformation. A clause limiting the spread of misinformation by forbidding the sharing of obviously fake news.
- Measurement. Having effective mechanisms to measure the effectiveness of brand ambassador marketing campaigns for example.
Advertising standards, relevant authorities and advertising practice. Advertising rules in Ireland are set out under both legislation and codes of practice. The main legislation covering advertising in Ireland is the Consumer Protection Act 2007 and the EC (Misleading and Comparative Marketing Communications) Regulations 2007 (S.I. No. 774/2007) which protect consumers from misleading or false advertising.
The ASAI is an independent self-regulatory body set up and financed by the advertising industry. Its role is to promote high standards of advertising and sales promotion. It publishes the ASAI Code, which covers commercial marketing communications and sales promotions in all media in Ireland. Complaints can be made to the ASAI about a misleading or false advert and an advert found to be in breach of the ASAI Code is required to be amended or withdrawn. In the case of a sales promotion, the promoter may be requested to make the necessary changes to the way the promotion is communicated or conducted and may also be asked to recompense any consumers who have been adversely affected.
The Competition and Consumer Protection Commission (CCPC) is an independent statutory body with responsibility for enforcing competition and consumer protection law in Ireland. A consumer can complain to the CCPC if they believe that an advert is misleading or false and this had a major effect on your decision to buy. The CCPC has certain enforcement powers when there is a breach of consumer legislation or fair trading, for example to take court action, where appropriate, against businesses that have misled consumers with misleading or false advertising.
The Broadcasting Authority of Ireland (BAI) is the regulator of broadcasting in Ireland and publishes its own code of practice known as the General Commercial Communications Code (BAI Code). The BAI also performs a complaints function. Viewers and listeners who believe that an advertisement has not complied with the BAI Code are entitled to make a complaint. In the case of non-compliance by broadcasters, the BAI Compliance and Enforcement Policy may be invoked.
3 . What regulations govern online marketing and how are the rules enforced?
Online marketing is currently governed by many different pieces of legislation, for example:
- The General Data Protection Regulation (GDPR) and the Data Protection Acts 1988 to 2018 dealing with privacy and data protection.
- The ePrivacy Regulations (European Communities (Electronic Communications Networks and Services) (Privacy and Electronic Communications) Regulations 2011) dealing with cookies.
- The ASAI Code discussed above.
In December 2020, The European Commission published the draft text of the Digital Services Act. It contains new obligations in relation to digital services that connect consumers to goods, services and content as well as new procedures for faster removal of illegal content and measures for protecting users’ fundamental rights online, which may, for example, assist in identifying the sellers of illegal goods.
3.1. Consumer protection regulations
The Consumer Protection Act 2007 transposed the EU Directive on Unfair Commercial Practices into Irish law (Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (Unfair Commercial Practices Directive)). It allows the CCPC to take enforcement action when there is a breach of consumer legislation.
The 2020 New Deal for Consumers initiative, which comprises two proposed EU Directives was adopted by the Commission on 11 April 2018. These directives seek to update and modernise consumer law by imposing stricter punishments for consumer law breaches. Two EU instruments have been adopted following the New Deal for Consumers initiative. One is the Directive on better enforcement and modernisation of EU consumer protection, (“the Enforcement and Modernisation Directive 2019/2161”), which was adopted by the European Parliament and the Council on 27 November 2019. Member States had until 28 November 2021 to transpose the new rules into their national laws and must apply these new national laws from 28 May 2022.
The second Directive is the Directive on Representative Actions which was adopted on 25 November 2020. Member States will have until 25 December 2022 to transpose this Directive and until 25 June 2023 to apply national provisions transposing the Directive.
On 15 April 2019, the European Council adopted two further Directives: a Directive on contracts for the supply of digital content and services (the Digital Content Directive 2019/770) and a Directive on contracts for the sale of goods (the Sale of Goods Directive (EU) 2019/771). These new Directives came into force on 1 January 2022. The Directives aim to increase the level of protection and legal certainty for consumers when buying from across the EU and will be important for fashion houses who sell items online.
The Consumer Rights Bill 2021 when enacted will transpose the Enforcement and Modernisation Directive (EU 2019/2161), the EU Digital Content Directive (EU 2019/770) and the EU Sale of Goods Directive (EU 2019/771) into Irish law. The General Scheme of the Consumer Rights Bill was published for consultation on 20 May 2021 and the deadline for responses to the scheme was 30 June 2021. The status of the Bill is pending.
The Minister for Trade Promotion, Digital and Company Regulation launched a Public Consultation on the Directive on Collective Representative Actions on 15 March 2021 and the deadline for submissions was 7 May 2021. The Directive is due to be transposed into Irish law on 25 December 2022 and it will become operational in 2023.
3.2. Physical store and online store layout
In Ireland, it may be possible to obtain copyright protection for online store layouts under literary or artistic work. However, no case has been determined or litigated on this point.
In light of the CJEU decision in Apple Inc. v Deutsches Patent- und Markenamt (Case C‑421/13) given on 10 July 2014, trade mark protection may be afforded to the layout of a physical store as a three dimensional trade mark for goods and services under the Trade Marks Directive (Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks ). The CJEU ruled that the layout of a retail store may be registered as a trade mark with a specification consisting of services relating to goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the trade mark applicant from those of other undertakings.
4 . What are the most relevant unfair competition rules for fashion businesses and how do the Courts interpret and enforce these rules?
Competition law in Ireland is concerned with abuse of a dominant position, and the prohibition on agreements, arrangements and concerted practices, which prevent, restrict or distort competition. The principal legislation in Ireland is the Competition Act 2002 (as amended). The Competition and Consumer Protection Act 2014 established the CCPC which is the regulator for competition and consumer protection law in Ireland.
The Competition Act 2002 lists some specific types of behaviour which are expressly prohibited (Section 4 of the Competition Act 2002). These include agreements which:
- fix prices;
- limit or control production or markets;
- share markets or sources of supply;
- apply dissimilar conditions to equivalent transactions with other trading parties; and/or
- make the conclusion of contracts subject to acceptance by the other parties of supplementary obligations which by their nature or according to commercial usage have no connection with the subject of such contracts.
Businesses or individuals that breach competition law may be subject to civil or criminal sanctions.
Trade secrets regulations. The European Union (Protection of Trade Secrets) Regulations 2018 were implemented in Ireland on 9 June 2018. The Regulations implement EU Directive 2016/943 (Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure) and provide for civil redress measures and remedies where a trade secret is unlawfully acquired, used or disclosed.
5 . Is there any regulation specifically addressing sustainability or ESG (Environmental, Social and Governance) in the fashion industry?
Despite a growing social trend for sustainability in the EU, Europeans consume on average 26kg of textiles per person per year – a significant share coming from third countries. Each item is used for a shorter period, resulting in 11kg of textiles discarded per person per year (see www.eea.europa.eu/publications/textiles-in-europes-circular-economy). Nevertheless, there is increasing pressure on the fashion industry to exhibit sustainability not only in its products but throughout the manufacture and distribution process.
For any activity in the manufacturing or supply chain that is carried out in Ireland, Ireland has a sophisticated and pro-employee body of employment legislation. Fast fashion and the increase in Internet shopping has facilitated growth in counterfeiting. The people and organisations behind counterfeiting are not likely to be observant of employment laws and may be involved in organised crime.
In Ireland, there is no regulation specifically addressing sustainability in the fashion industry. However, Ireland is subject to the following textile labelling regulations:
- EU (Textile Fibre Names and Related Labelling and Marking of the Fibre Composition of Textile Products) Regulations 2012 [S.I. No 142. of 2012].
- Industrial Research and Standards (Section 44) (Children’s Nightdresses) (Amendment) Order, 1979 [S.I. No. 215 of 1979]
Ireland is also subject to ISO 3758:2012 Textiles – Care labelling code using symbols.
The ASAI Code also addresses environmental claims. It specifies that symbols may imply environmental claims in themselves. They should be simple and used in such a way that they do not convey false impressions about the characteristics of goods or services.
In terms of the move toward more sustainability into the future, it is useful to point out that some brand owners are registering trade marks which are used to indicate their commitment to produce sustainable products. For example, Nike has registered a symbol (EU trade mark number 018242296) to coincide with their “Circularity” concept of creating products that last longer and are designed with the end in mind. It has also registered the word mark MOVE TO ZERO (EU trade mark number 018141344) to symbolise its journey toward zero carbon and zero waste.
The advancement of technology is seen to be a big factor in the growth of sustainability in the fashion industry. For example, 3D printers in fashion are used to supplement parts of a whole design, like embellishments, accessories, and buttons. The advantage of this is in the process of 3D printing, the item is printed layer by layer in its precise shape and form and is not created by “sculpturing” out materials such as rubber or plastic, thus significantly reducing scrap waste.
6 . Customs monitoring: do any special import and export rules apply to fashion products?
In Ireland, rights holders can use the provisions of Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 which enables customs authorities in the EU to detain goods which are suspected of infringing an IP right. An application for action must be made by a rights holder using official forms in accordance with the Regulation. Applications for action can either be national or European Union applications.
Where goods suspected of infringing an IP right are detected Irish customs will detain them. They will issue a notice of detention to the importer seeking consent to the destruction of the goods within 10 working days. They will notify the rights holder or its representative of the detention, seeking confirmation within 10 working days whether the goods infringe IP rights. If no response is received from the rights holder by the deadline, the goods will be released. Customs will destroy the detained goods where the rights holder has confirmed in writing within the appropriate time limit that the goods infringe IP rights and agrees to their destruction and the importer gives written confirmation of agreement to their destruction or doesn’t respond within the specified time limit.
7 . Frequently Asked Questions
Some frequently asked questions in the context of online trading are as follows:
How does the brand owner ensure that it is data protection compliant?
How could the brand owner minimise online infringement?
This involves a multidisciplinary approach with constant and consistent monitoring, enforcement through online platforms takedown and complaints procedures, legal action if necessary, and utilising custom detention procedures.
How does the brand owner ensure they do not fall foul of applicable advertising regulations?
This may involve having to be compliant with the laws and standards of multiple jurisdictions depending on the nature of the advertising and its reach.