In France, fashion remains the sector the most affected by counterfeiting activity, increasingly online. Further, its capital city Paris is known all around the world as the capital of fashion. Therefore, French law is quite protective and enforces the IP rights of the fashion industry using diverse and specific tools.
1 . What are the main intellectual property legal tools available to protect fashion products?
Both European and French laws and regulations provide legal tools to protect IP rights in the fashion industry in France. National French IP laws and regulations are set forth in the French Intellectual Property Code (hereinafter referred to as the IPC). Although the most commonly relied upon are trademarks, designs and copyright, other tools such as patents, know-how/trade secrets, geographical indications and domain names are also to be utilized.
1.1. Trademarks and non-traditional trademarks
According to Book VII, Title I of the IPC, which mirrors the provisions of the European Union Trademark Regulation (EUTMR), trademarks are defined as distinctive signs that distinguish the goods and services of one undertaking from that of another. To be registered, a trademark must be:
- lawful; and
(Articles L.711-2 and L.711-3 IPC.)
Trademark protection lasts ten years, renewable indefinitely. The mark must be used for the relevant goods and services within the first five years of registration and its use must not be discontinued for more than five consecutive years in order to avoid revocation actions for non-use.
Certain “non-traditional” trademarks are particularly important in the fashion industry, as follows.
Color mark. This consists of the exclusive representation of a color or a combination of colors without contour. It can be a color shade chosen in an internationally recognized code (e.g Pantone code). For example, the Pantone Yellow Shade # 1225 was registered before the French Institute of Intellectual Property (INPI) in 2004 for pharmaceutical products in Class 5. (French trademark registration No. 3266429 filed by Les Laboratoires Servier on 8 January 2004 in Class 5.)
Shape mark. Signs that do not consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods may be registered as trademarks (Articles L.711-2, 5) IPC). As an example, Chanel registered the three-dimensional shape of a handbag before the INPI in Class 25 goods for bags. (French trademark registration No. 4120437, filed by Chanel on 24 September 2014, in classes 14, 18 and 25.)
Position mark. This consists of the specific location of the sign on a product, which must not be perceived by the consumer as a decorative element but rather a guarantee of the origin of the good (ECJ C-408/01, Adidas-Salomon vs. Fitnessworld Trading Ltd, 23 October 2003, para. 41).
To illustrate, the position mark described as “two oblique parallel bands, crossed by a perpendicular band, placed on the outer rear of a shoe. The first band starts from the sole, slightly inclined backwards, and ends at the height of the tongue, the second parallel band ends at the height of the upper part of the heel, the third perpendicular band joins the two parallel bands. The dotted line indicates the position of the mark and is not part of it” was registered in France in 2017 for goods in Class 25 (French trademark registration No. 017437261, filed by Henderson on 6 November 2017, in Classe 25).
“Made in” sign. The “Made in France” label can be affixed on fashion goods according to the rules of origin established by EU law and codified by the French Customs services. According to such rules, the product must:
(Articles 22 to 26 of EU Regulation No. 2913/92 of 12 October 1992 and articles 35 to 65 and annexes 9 to 11 of EU Regulation No. 2454/93 of 2 July 1993.)
- derive a significant part of its value from one or more manufacturing steps located in France; and
- have undergone its last substantial transformation in France.
Pattern mark. Characterized by the regular repetition of a set of elements and can be registered as a trademark if sufficiently distinctive. For instance, the “cannage” registered by Christian Dior Couture in classes 18, 24 and 25 to designate, in particular, leather goods, bags and clothing, was validated by a French High court. (Paris High Court, 10 June 2009, No. 07/15070, Christian Dior Couture v. Esprit de Corp. France confirmed by the Paris Court of Appeal, 12 November 2010, No. 09/13667.)
With respect to unregistered marks, they will only benefit from trademark law protection in France if they are well-known trademarks as defined pursuant to Article 6 of the Paris Convention.
1.2. Design as an alternative or addition to TM registration
Book V of the IPC and Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs regulate design protection in France (Articles L.511-1 to L.522-2 IPC), which protects the appearance of a good, or part of a good, characterized by its lines, contours, colors, shape, texture, or materials.
A design can be registered if it is:
- new; and
- has an individual character.
The protection as a design lasts for five years and can be renewed up to four times for a total of twenty-five years of protection.
Thus, design protection is also an asset for the fashion industry since it may be used to protect shapes or patterns that are not eligible for trademark protection. The duration of protection is shorter, however, and the evidence of novelty or individual character can be complicated to prove if the validity of a design is raised.
There are no national unregistered design rights in France. The unregistered design right provided for in CE No. 6/2002 is also valid in France, however.
A design (assuming it is new and has individual character) will be protected as an unregistered Community design for a period of three years from the date upon which it is first made available to the public within the EU.
This unregistered right is particularly important for the fashion industry as it has a high volume of seasonal designs for which registered trademark or design protection may be prohibitively expensive.
1.3. Copyright as an alternative or addition to TM registration
Pursuant to Article L. 111-1 of the IPC, a fashion work will be protected by copyright if it is original. In the Infopaq case, the Court of Justice of the European Union defines the originality when works are “their author’s own intellectual creation” and “with the result that they contain a number of elements which are such as to express the intellectual creation of the author of that work” (C‑5/08 Infopaq International A/S v Danske Dagblades Forening (16 July 2009)).
Copyright protection arises solely by the creation of the work. Further, the copyright owner benefits from both moral and patrimonial rights. Moral rights, including the right to paternity, integrity, divulgation rights and right to withdrawal (Article L. 121-1 to L. 121-9 IPC), are perpetual and non-transferable (Article L.121-1 IPC). Regarding patrimonial or economic rights, they last for the lifetime of the author and seventy years thereafter (Article L.123-1 IPC).
As copyright protection results automatically from creation without any formal registration requirements, it is a very useful and inexpensive tool for protecting fashion creations that are often high volume and seasonal.
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|
|Patents||20 years (non-renewable).|
Filing of the application before the INPI.
Average grant time is 27 months from the filing of the application but may take from 2 to 5 years.
Pros: a strong 20-year exclusivity on the market.
Cons: high threshold for novelty and inventive step requirements (accessories and fabrics may be patentable products).
|Trade secrets||Unlimited, unless lawfully disclosed.|
Protected by Law No. 2018-670 of 30 July 2018 relating to the protection of trade secret.
The information must:
Pro: potentially unlimited and “free” protection of the information.
Cons: it does not protect the information from reverse engineering or lawful disclosure.
|Domain names||1 year (renewable without any limits).|
Purchase through recognized channels.
Grant based upon first come first served rules.
Pro: key for online visibility and brand awareness.
Cons: unavailability of desired domain name once already registered by others.
2 . Beyond intellectual property: what contractual arrangements are useful in manufacturing, distributing and advertising fashion products?
Numerous different types of contractual arrangements are crucial in the fashion industry and its production line. The most widely used in France are summarized below.
2.1. Manufacturing fashion products
License agreements and Non-Disclosure Agreements (NDAs). License agreements are contracts pursuant to which the owner of an IP right (trademark, copyright, know-how, patents etc.) grants a third party a license to use such right in return for the payment of a royalty fee. This type of agreement is very flexible and allows the IP right holder to supervise the manufacturing of fashion goods.
Parties may also enter into an NDA pursuant to which each party agrees not to disclose the confidential information exchanged during the contract negotiations. NDAs are increasingly important in France following the adoption of the French trade secret law in 2018 (Law No. 2018-670 of 30 July 2018 relating to the protection of trade secret) as further discussed below.
Subcontract agreements / in-house manufacturing. As manufacturing of fashion goods rarely takes place in-house, French fashion brands almost always enter into agreements for the manufacturing of their goods, whether in France or abroad.
These manufacturing or supplier agreements are subject to the general provisions of the French Civil Code on contract law. These agreements should include clauses addressing quality control, quantity shipment, payment, delivery dates, product specifications, ownership of intellectual property rights and liability of the parties both in case of breach and with respect to third parties.
They may also contain clauses concerning restrictions on sub-contracting agreements, which is an important consideration in light of potential sustainability issues as further discussed below.
2.2. Distributing fashion products
Agency agreement. Pursuant to Articles L134-1 and following the French Commercial Code, a commercial agent is an independent contractor responsible for negotiating and concluding agreements such as for the sale, purchase, rental or provision of services, on behalf of another party referred to as the principal.
Such a contract may be for a fixed or indefinite period of time and can be written or oral. There are no specific or mandatory clauses required, but the relationship between the commercial agent and the principal is governed by an obligation of loyalty and a reciprocal duty to inform (as provided by common law contract, see Article 1104 of the French Civil Code).
With respect to the commission, however, French law provides that, when not expressly stipulated in the agreement, the commercial agent is entitled to a remuneration in accordance with customary practice in the sector of activity covered by its mission. If there is no custom, a reasonable remuneration considering all the elements relating to the transaction is granted.
Selective distribution online in high-end fashion and trademark protection. This distribution method is developed particularly for luxury products, prestigious or branded products, such as fashion goods, to preserve brand image and the high technical character of the goods. According to the French Supreme Court, a selective distribution agreement is one by which "the supplier undertakes to supply, in a given sector, one or more traders chosen by him according to objective criteria of a qualitative nature, without discrimination and without unjustified quantitative limitation, and by which the distributor is authorized to sell other competing products" (French Supreme Court, Criminal chamber, 3 November 1982, No. 82-90.522; substantially identical to the definition provided by the EU Regulation 330/2010 of 23 April 2010).
Co-branding and co-marketing. This covers a situation where two brands collaborate to jointly promote products or services often that they have created together. In practice, this relationship should be formalized by a partnership agreement or licensing agreement that should stipulate the obligations and the roles of each party. In addition, the contract must provide clauses addressing issues such as the selling prices, the percentage distribution of sales revenue, the number of sales outlets, the deadlines, and in general the duration of the operation. The parties must also consider and frame what will happen after the end of the co-branding operation.
2.3. Advertising fashion products
The advertising of fashion products has always been essential to the success of a brand. In addition to the traditional channels (i.e. television, print media, radio, use of models/celebrities), an increasing amount of advertising now depends on social networks and “influencers”.
Employing fashion models. The relevant rules regarding the key clauses and the legal regime for models are set forth in Articles L.7123-1 and following of the French Labor Code and the French collective agreement for models (a national collective agreement for adult models and child models under 16 years of age employed by modeling agencies as of 22 June 2004, modified by order of 13 April 2005, which includes sample of contracts).
The model can either be represented by an agency or not. In either case, as models are presumed to be employees, the principal rules of French labor law apply.
In addition, models are supposed to receive two different remunerations: one for the service implying their physical presence and one for the exploitation of the recording their image.
Finally, the phrase "Retouched photograph" must appear on all photographs for commercial use of models whose body appearance has been modified by image processing software in order to refine or thicken the model's figure (provided by Article L2133-2 of the French Public Health Code, applicable since 1 January 2017. Failure to comply with this article is punishable by a fine of €37,500, which may be increased to 30% of the expenditure on advertising).
Social media, influencers and brand ambassadors/celebrities. In France, there is no specific legislation governing the rules for campaigns or relationships between brand owners and social media influencers.
Therefore, in practice, the partnership is either a service provision agreement or an employment agreement.
The agreement should specify the influencer’s exact mission (e.g., duration, frequency of the publication, content of the publication, distribution of copyright in case of content creation, remuneration and so on).
In addition, particular provisions should be detailed in the contract to protect the brand image such as:
- the influencer commits to only broadcasting content that is meliorative towards the brand; and/or
- the advertiser has the right to control the editorial content and can refuse to broadcast the content.
The Advertising standards, relevant authorities and advertising practice. The Autorité de Régulation Professionnelle de la Publicité (ARPP) is the French professional regulatory body for advertising.
It has created a set of ethical rules set forth in the ARPP Guidelines and is responsible for monitoring their application.
ARPP’s mission is to maintain standards of fair, truthful, healthy, and respectful advertising.
The ARPP has established a Jury for Advertising Ethics to which any legal entity or individual may submit a complaint of a violation of the ARPP Guidelines. The Jury will then issue its opinion.
Although there are no economic or penal sanctions for violations of the ARPP Guidelines, the opinion is published and therefore may lead to negative publicity for the brand owner.
3 . What regulations govern online marketing and how are the rules enforced?
3.1. Consumer protection regulations
In France, e-commerce is governed by the following regulations:
- General Data Protection Regulation (GDPR), EU Regulation 2016/679 of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC;
- Act No. 78-17 on Information Technology, Data Files and Civil Liberties dated 6 January 1978, as amended by Act No. 2018-493 dated 20 June 2018 on Personal Data Protection (DPA);
- Decree No. 2005-1309 of 20 October 2005, modified by Decree No. 2018-687 of 1 August 2018 (DPA Decree), which takes the amended DPA into consideration;
- Commission Nationale de l'Informatique et des Libertés (CNIL) guidelines on cookies and tracking devices of July 2019; and
- Law No. 2004-575 of 21 June 2004 on confidence in the digital economy.
Furthermore, pop-up windows, banner ads, and any other type of online advertising must be clearly identified as such, and therefore distinguished from non-commercial information.
Non-compliance with these rules engages the civil liability of its author and can lead to legal actions and/or fines.
At the EU level, on 15 December 2020, the European Commission published the draft Digital Services Act (DSA) and Digital Markets Act (DMA) regulations, which are designed to allow the implementation of a new regulatory framework to put an end to the irresponsibility of digital giants.
The goal for them to be adopted by early 2022. If adopted, the final text will be directly applicable throughout the European Union.
3.2. Physical store and online store layout
Under French law, any creation can be protected by copyright provided that it is original and that the date of creation is established.
Thus, the layout of a retail physical store may be protected by copyright in France if the originality of the store design is recognized by the courts.
For instance, in Douai Court of Appeal, 5 April 2018, Case 17/03809, judges have granted protection to the layout of a franchised hair salon.
Several other decisions have granted copyright protection to the layout of physical stores (such as Aix-en-Provence Court of Appeal, 23 October 2014, Case 2012/07702 and Douai Court of Appeal, 16 March 2017, Case 15/03286 for KIKO store and Paris Court of Appeal, 3 March 2017, Case 16-038.93 for Ladurée store).
The layout of a physical store concept can also be protected by design, provided that it is new and has individual character. For example, in Case 06/18874, 23 May 2008, the Paris Court of Appeal confirmed the design protection for a grocery store.
Online and website store layouts are not specifically protected by the French Intellectual Property Code.
Once again, however, they may be protected by copyright or design if they fulfil the requirements pursuant to the law.
In addition, parasitism (free riding) (Douai Court of Appeal, 16 March 2017, Case 15/03286), and unfair competition (Paris Court of Appeal, 15 February 2017, Case 14/15753, SA Buffalo Grill), can also be invoked in order to protect an online store layout if there is a likelihood of confusion or an attempt to ride on a third party’s coat-tails, taking advantage of its reputation and investments (Paris Court of Appeal, 20 March 2014, Case 12/02256, Sarl L’agence Tokyo).
4 . What are the most relevant unfair competition rules for fashion businesses and how do the Courts interpret and enforce these rules?
There are no special rules for unfair competition in the fashion industry.
French courts apply the common regime of civil liability based on Article 1240 of the French Civil Code according to which: “Every act of man, which causes damage to others, obliges whom by whose fault he has succeeded in making reparation”.
On this basis, it is condemned, for instance, to create a likelihood of confusion with the products or business of a competitor (see imitation can create a risk of confusion, Cass. Com., 29 June 2009: PIBD 1999, III. 386), or the imitation of a line of products (Cass. Com. 14 November 2018, No. 16-25.692, No. 16-28.091).
On the same legal basis, it is also condemned to engage in any act of parasitism (free riding concept) which can be defined as the deliberate attempt to ride on a company’s coat-tails, taking advantage of its reputation and investments, to reap profits, without putting in its own investment.
If the action based on unfair competition or parasitism is successful, it can lead to damages as well as prohibition, withdrawal and/or destruction and publication measures.
Trade secrets regulations. There is no specific legislation about trade secrets for the fashion industry. Trade secret has a newer legislative basis in France as a result of the EU Directive No.2018-1126 from 11 December 2018 that created a new chapter in the French Commercial Code dedicated to trade secrets protection (C. com. article L. 151-1 and following). This new regime protects any information that fulfills the following three criteria:
- the information is not generally known or readily available to people familiar with this type of information due to their sector of activity;
- the information has commercial value, whether actual or potential, because of its secrecy; and/or
- the information shall be subject to reasonable safeguards on the part of its legitimate holder, having regard to the circumstances, to preserve its secrecy.
5 . Is there any regulation specifically addressing sustainability or ESG (Environmental, Social and Governance) in the fashion industry?
The issue of sustainability is becoming increasingly important in the fashion industry as consumers demand to know where and how a product was made. Further, the more labels relating to sustainability that a brand has, the greater its credit among consumers.
The following are a few examples of relevant EU or French labels in the fashion industry:
- The Oeko-Tex 100 label is the reference label used in terms of health safety. It is used to certify products without toxic substances, neither for man, nor for the planet. In France, the IFTH laboratory in Lyon is in charge of the control process for this label.
- Global Organic Textile Standard (GOATS) is a label that certifies not only decent working conditions but also respect for the environment, as well as no health risk to the consumer from the product. France has a certification organism for this label named Ecocert.
- BIO EQUITABLE is a label that guarantees an organic production of the raw material, particularly cotton. It also applies a fair and human charter that reconciles ecological and social considerations. From a global perspective, the label involves all the actors of the chain.
- Max Havelaar Fair Trade is a label used to identify a cotton producer that respects fair-trade commercial requirements. The label certifies that the cotton producer practices fair compensation and respect of working conditions in line with the terms of the International Labour Organization.
There are also labels that guarantee the origin of the product such as:
- France Terre Textile (France textile land) that guarantees that over 3/4 of labelled article’s production operations are realized in France respecting fabrication criteria in terms of short circuit, quality and social responsibilities inside the firm.
- Origine France Garantie (France Guarantee Origin) that certifies that between 50% and 100% of the cost per unit of a consumer good is French and that the product has obtained its essential characteristics in France.
Regarding ISO certifications, they are granted provided that the beneficiary proves that his/her products, services or product making or designing are in compliance with a certain number of quality standards.
There is also the French law on duty of vigilance of parent and outsourcing companies, dated 27 March 2017 (article L 225-102-4 inserted in the French commercial code), which is the French response to the UK Modern Slavery Act and the California Transparency in Supply Chains Act.
This is a due diligence measure that requires large French companies to create and implement a ‟vigilance plan” aimed at identifying and preventing potential human rights violations – including those associated with subsidiaries and supply chain members.
6 . Customs monitoring: do any special import and export rules apply to fashion products?
Filing a customs application is a very effective tool to stop the import/export of infringing products in France. The rights holder may choose to file not only an EU-wide Application for Action (AFA), designating all of the EU countries and thereby preventing this issue from arising in other EU countries, but also a French AFA.
Indeed the French AFA presents a particular advantage as it also gives the French customs the authority to seize goods within the borders of France, for example, at markets, whereas with an EU AFA, the goods may only be seized at the border. Therefore, the French AFA is a very useful tool, particularly as counterfeit fashion goods are very likely to be found at outdoor street markets in France.
Further, the EU Regulation 608/2013 applies in France, including the Small Consignments Procedure that allows the customs authorities to retain and destroy counterfeit goods identified in a postal or express courier consignment that comprises three units or less of such counterfeit goods without notifying the rights holder.
Once the rights holder files the AFA with the French Custom Authorities, Customs may detain suspected counterfeit goods and notify the rights holder who has a 10-day deadline to confirm whether the products are counterfeit goods.
The rights holder can then, pursuant to certain conditions, request a simplified destruction procedure under the control of the custom authorities. Alternatively, the rights holder may also choose to file civil or criminal proceedings.
7 . Frequently Asked Questions
How can we protect our fashion products?
Under French law, a fashion product may be protected by copyright, design and, less frequently, patent law. Further, trademark protection may also be an option. If the conditions for the protection sought are fulfilled, our recommendation would be to protect the product as widely as possible in order to maintain the strongest possible competitive advantage.
What can we do in case of infringement?
First of all, it is vital to ensure there is proof of the infringement by drawing up a bailiff report or conducting an infringement seizure. It is then advisable to send a formal cease and desist letter to the infringing party. If this is not effective, you may consider filing an action before the courts in order to obtain interim measures (prohibitive injunctions, for instance, and provisional damages) and /or an action directly on the merits.
I have no IP rights, can I still act against copies of my products?
Even without IP rights, unfair competition and parasitism (free riding) laws in France enable you to act against a competitor to prohibit the litigious acts and obtain damages. The more you have invested in the brand and/or the product, the more likely these actions are to succeed.