Legal advice is the one thing that every fashion brand needs but not everyone can afford or makes time for, particularly for young designers and fashion start-up brands.
Annabelle Gauberti is also the founder of Crefovi, a law firm for the creative industries, and answered some questions that had been put to us via hashtag #Askdessy on Twitter.
What do designers need to do to protect their intellectual property from day one?
First of all, they need to find a name (word mark) for their brand that doesn’t conflict with another, if possible through hiring an Intellectual Property (IP) lawyer. They should then register it at a national level or European level, depending on their customised IP protection strategy. It can then be extended internationally, says Annabelle Gauberti.
I recommend that you do this trademark international extension wherever you intend to sell in the future and where you manufacture. I further recommend that you always register your trademark in China. There’s a high risk of counterfeiting and a high proportion of trademark trolls there.
Could a young designer issue a cease and desist letter to someone without legal advice, if they found someone infringing on their intellectual property or trademark?
This is a rather delicate action to do by oneself, as I have noticed that many creatives may not have received prior business or legal training.
In addition to this risk of prejudicing your own legal position by not setting out appropriate wording in your letter before court action, you could end up being sued. In England & Wales, there is a legal action that a company, which is the recipient of a cease and desist letter, can take, which is called a “groundless threats’ action”. If the recipient of the letter before court action ends up suing you, you will need to prove – in court – that they have, indeed, infringed your intellectual property rights.
I would, therefore, recommend that you take legal advice before sending out a letter before court action, in relation to the infringement of your intellectual property rights. It may be best, as well, to get support from a lawyer to work out an alternative solution to a lawsuit with your infringer (for example, a settlement and some financial compensation, a licensing deal, etc.), says Annabelle Gauberti.
What challenges do you face as a legal expert for the creative industries?
I come across some fashion designers who have not been keeping accurate records of their creative process. If your print or pattern is being “knocked off,” having accurate records of your creative process can be used as evidence of you making that print or pattern, in any IP litigation case. You get automatic copyright from the moment when you create original artistic work, including illustrations.
I would, therefore, recommend that archive your design and drawing processes and file them, to safeguard your position in case you later have to sue a third party for copyright infringement.
Likewise, I come across fashion designers who have not properly registered registrable IP rights, such as designs, trademarks and patents. This is a big issue when such IP rights get infringed because these fashion designers end up having little or no evidence at all that these IP rights really belong to them. I recommend that you consult an IP solicitor or IP attorney early on in the life cycle of your fashion business, in order to create, manage and organise your IP rights portfolio in the most cost-effective and protective way.
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