Lessons in Litigation – YSL, H&M, Trade Dress, and Handbags 

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September 25, 2015
Darren Grady; Dennis Schell
SmithAmundsen Fashion Law Alert
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In the fashion industry, the protection afforded by intellectual property laws is at the forefront of concern for brands and designers. With the proliferation of "fast fashion," legal sparring is becoming more and more prevalent, and these disputes often involve world famous brands, designers, and fashion houses. Though high-fashion litigation may seem merely anecdotal and often worlds away (the issues are often addressed in Europe), for smaller designers or shop owners, lessons can be learned from these high-profile cases.

For instance, Yves Saint Laurent has been entangled in a legal dispute with "fast fashion" retailer H&M for several years. The case revolves around a particular YSL handbag that became wildly popular in the mid-2000s. Shortly before the bag's rise in popularity, YSL filed for Community design protection (the European analog of U.S. design patents that protect the ornamental or aesthetic design of products). Shortly after the bag's rise in popularity, H&M sought to have the protection vacated. Pointing to a similar design that pre-dated the YSL bag, H&M essentially argued that he bag lacked "individual character," a requirement for protection. Presumably, H&M was seeking revocation of the protection, so that they could start selling similar handbags. Not so fast. In September of 2015, after eight years of legal sparring, a European Court held that the YSL bag had enough unique characteristics from the prior design for the protection to be upheld. Specifically, the Court believed that the two bags would have a different impression an "informed user."

So what can be learned from this high profile bag battle? First of all, it is critical to note that YSL did the right thing; they availed themselves of the legal protection afforded to them to protect their design. H&M also did the right thing for its business and challenged YSL’s rights. In this case, YSL prevailed and reaped the benefits of securing early protection.

If YSL had waited until after the bag's rise to prominence to secure the protection, YSL may have exceeded the grace period available to file an application (which expires 12 months after a new design is introduced to the public) and thereby lost all opportunity to obtain registration.  In which case, H&M simply could have started producing, and legally profiting from, a bag that some might have called a “knock off” or “rip off.” In the United States, design patent protection can be utilized to make sure your ornamental designs stay yours. It is important to learn about all of the legal protection available to those in the fashion industry and act accordingly before the application filing deadlines expire and before potential infringers take notice of a popular design.