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Fashion Law. Data Fashion (VI)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

  Data Fashion

Data has undoubtedly become of one the most valuable intangible assets of any organization. The fashion sector is no exception and technology has helped to increase sales in the sector and reduce costs, as well as bring companies closer to their customers and enable them to identify their customers’ needs.

In this regard, intelligent analysis and appropriate management of data protection can be a competitive weapon for companies and an additional means of securing the loyalty of existing customers and attracting new customers, provided that they are conducted in a transparent manner and with respect for customers and users. Big Data is a very powerful tool, although various precautions must be taken to avoid breaching the rights and freedoms of the users whose data will be subjected to mass data processing, particularly if it is combined with or supplemented by automated decisions, one of the biggest threats in the mass processing of data, together with so-called “artificial intelligence”.

The General Data Protection Regulation has brought with it greater obligations with respect to the processing of personal data. In this regard, those organizations using Big Data processing will in all probability have to conduct a data protection impact assessment on the processes involved, and designate a Data Protection Officer.

Behavioural marketing allows companies to track the behaviour of users in order to then create detailed profiles and classify individuals and target advertising in accordance with their tastes and preferences. This monitoring of behaviour can be more or less invasive and conducted using different means. In the fashion sector, this can be in public spaces, through a range of different geolocalisation techniques (RFID labelling, geofencing, beacons, GPS, mobile localization services), in the new commercial spaces shared by different brands, in the establishment itself through the implementation of a range of technologies that can convert it into a smart store, and via the Internet (thanks to social networks, cookies and similar devices, mobile applications, wearables, etc.).

Whatever the chosen data processing method, brands must place customers and users at the heart of their business and this will require them to treat their customers with care and show them that they are important to the business, and thus ensure that the interests of customers and users are respected. This means that all processing of their data must be lawful, fair and transparent.

To that end, data processing in the fashion sector will generally need to be based on one or more of the following premises:

  • A contractual or pre-contractual relationship exists between the brand and the customer or potential customer justifying the processing of their data (for example, the sale of any product to a customer);
  • The brand has a legitimate interest that prevails over the rights and interests of the customer or potential customer (for example, in certain cases, direct marketing, except e-mail marketing, which generally calls for the express consent of the e-mail recipient);
  • The brand has a legal obligation (for example, tax or accounting obligations); or Express consent is held from the different interested parties (for example, for the distribution of a newsletter).

Finally, in order to ensure that all data processing carried out is fair and transparent, all fraudulent or misleading means, in both the collection and subsequent use of data, must be avoided, and the individuals whose data is being processed (customers, potential customers, contacts, employees, etc.) should be provided with information on the characteristics of the processing of their data, information which can be limited to identifying who is processing their data and the method involved, with whom the data is shared, whether the data will be sent or accessed from outside the European Economic Area, and specifying their rights in relation to the data processing.

 

Author: Ruth Benito 

Visit our website: http://www.elzaburu.es/en

 

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

 

Fashion Law. Image rights in the fashion sector (V)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

 

Image rights in the fashion sector

Image rights are an essential part of the fashion world, with trends in this sector having evolved towards attempts to create a dialogue between the brand and the consumer, where the image associated with the brand symbolizes a lifestyle.

The chapter that we have prepared deals with the concept of image rights and their limitations, applicable legislation, the most common uses of image rights in the fashion sector, and defence of image rights.

We underline the importance of authorization for exploitation of image rights by means of a contract setting out the object of exploitation (image, voice and/or name), listing the authorized rights (for example, image capture, distribution), and stating the purpose (for example, advertising), authorized formats and media, time scale and territorial scope, as well as any possible obligations relating to participation in promoting the product, and any exclusivity or non-competition clauses.

Since image rights are personal rights, they are unwaivable and inalienable, and may therefore be revoked. That is, authorization may be “cancelled” at any time, provided that there is compensation for any damage caused, including legitimate expectations.

This chapter also touches on the concept of “brand ambassadors” and the new players on social media (influencers, bloggers, youtubers, and Twitter personalities), who are selected to represent fashion brands based on their personality and character, and who, in some cases, are even required to preserve the brand’s reputation.

Finally, we cite some examples where image rights have been infringed as a result of breach of contract, brands exceeding the authorized use of the image, breach of contract due to infringement of the right to exclusivity by the owner of the image rights, and even as a result of identity theft or unauthorized use by brands.

 

Author: Cristina Espín 

Visit our website: http://www.elzaburu.es/en

 

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

Fashion Law. Protection of fashion through copyright (IV)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Protection of fashion through copyright

We cannot resist including in this summary the quote from Balenciaga mentioned at the beginning of the chapter. The Basque couturier remarked that a couturier must be an architect for design, a sculptor for shape, a painter for colour, a musician for harmony, and a philosopher for temperance.

This desire to promote fashion design to the category of work of art also extends to the legal front, in efforts to extend copyright protection to a variety of creations, mostly textile creations, whose natural source of protection is something quite different.

This is not surprising, given that the protection offered by copyright is in many respects more beneficial than that offered by industrial designs, for example. The most obvious advantage is the duration of copyright protection (70 years post mortem auctoris), but there is also the absence of any formal requirements for obtaining protection and the series of moral rights to which the author is entitled.

However, it is not quite so easy. A creation, whatever the artistic field, must possess a specific degree of originality and creativity in order to obtain copyright protection. It is thus a question of determining what constitutes an original creation that is eligible for this type of protection.

This is the most controversial issue in the area of copyright law. There is no definition in either the Copyright Act or the Industrial Design Act that might serve as a basis for determining which creations are covered by copyright and which ones call for other means of protection, such as designs or unfair competition law.

However, based on the most recent case law, it appears to be a question of degree rather than concept. That case law also focuses on the different purposes that designs and copyright are intended to serve, which would imply that the choice of one means of protection or the other would be determined to a certain degree by the extent to which the design is intended for industrial use and the intellectual works are intended to serve an ornamental, decorative or merely aesthetic purpose.

The task of the legal practitioner in this field is therefore to pinpoint the boundary between the originality required of a design (Article 5 of the Industrial Design Act refers to novelty and individual character) and that required for it to qualify as an artistic work.

The reality is that prêt-à-porter fashion is intended for mass production and consumption and therefore the natural source of protection would be that offered by an industrial design, which has a much shorter term of protection and is aimed at fostering, among other things, the smooth functioning of the market and of production and marketing of consumer goods.

Therefore, few creations in the world of fashion can be considered especially creative and afford their creators the privileged status of author of an artistic work. But who would dare to say that Yves Saint Laurent’s famous dress evoking Mondrian’s “Composition with Red Blue and Yellow” is not a work of art?

 

Author: Patricia Mariscal 

Visit our website: http://www.elzaburu.es/en

 

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

Messi scores against Massi

In 2011, the FC Barcelona player Lionel Messi filed European Union trademark application No. 010181154, with the following design, at the EUIPO to cover goods in classes 9, 25 and 28:

That same year, the owner of the earlier European Union trademarks Nos. 3436007 and 414086 MASSI (word), registered in classes 25, 9 and 28 respectively, filed opposition against said application, arguing that there was a likelihood of confusion and/or association (Article 8.1 EUTMR) between the trademark filed by Leo Messi and the earlier MASSI marks.

Having considered the parties’ arguments, in 2013 the EUIPO issued its decision, accepting in full the opposition filed by the owner of the MASSI marks and thus refusing Leo Messi’s application, on the basis that there was a likelihood of confusion between the marks in dispute.

In 2014, the Argentinian superstar lodged an appeal against the refusal, but the EUIPO dismissed the appeal, finding that there was a likelihood of confusion, given that the dominant elements of the marks, that is, MESSI and MASSI, are practically identical both visually and phonetically.

Thus, Leo Messi decided to contest the decision and in September 2014 he lodged an appeal with the General Court of the European Union on grounds that the marks MESSI and MASSI were perfectly able to coexist on the Register, as the EUIPO had not taken into account the importance of the conceptual aspects when analyzing the matter.

Having conducted an in-depth analysis of the case, the General Court issued a judgment on 26 April 2018 accepting Leo Messi’s appeal and annulling the EUIPO’s refusal decisions and thus granting the European Union trademark MESSI.

The arguments put forward by the General Court in its judgment are the following:

  1. First of all, the General Court states that the signs making up the marks in conflict have an average degree of visual similarity, given that the dominant element of the MESSI mark is extremely similar to the word element of the MASSI mark.
  2. However, the Court holds that the EUIPO committed an error when comparing the signs on the conceptual front and considering that the Argentinian footballer’s reputation only concerns football enthusiasts and sports fans in general.
  3. The General Court also underlined that the well-known nature of Leo Messi’s surname means that it is highly unlikely that consumers will not associate the MESSI mark with the player’s surname, since the goods covered by the marks in dispute are sporting articles and clothing.
  4. The General Court therefore concludes that although the marks MESSI and MASSI are very similar, the conceptual differences between them are such as to counteract the visual and phonetic similarities. Moreover, the Court states that a significant part of the relevant public will associate the term “Messi” with the surname of the famous footballer and, consequently, will perceive the term “Massi” as conceptually different.

As usual, the analysis carried out and the arguments put forward by the General Court for this decision are, in our opinion, well-founded and correct, given that the wide recognition and reputation of the FC Barcelona player worldwide among the average consumer of sports-related goods make it hard to believe that any confusion and/or association could arise between the goods offered under the MASSI marks and those offered under the surname making up the MESSI mark.

Furthermore, this decision only reinforces the protection enjoyed by celebrities in the course of trade through the registration of trademarks, bearing in mind their reputation and wide recognition as a result of appearances in the media (press, TV, radio, Internet, etc.).

In any case, it should be noted that the judgment may yet be subject to appeal before the Court of Justice of the European Union (CJEU). We shall see whether the opponent gives up and Leo Messi wins the match or whether the owner of the MASSI marks lodges an appeal, providing for an exciting end to the match.

We will keep an eye on the scoreline.

  Author: Manuel Mínguez Visit our website: http://www.elzaburu.es/en  

Fashion Law. Patent protection in the fashion sector (III)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Patent protection in the fashion sector

Politics was transformed by the French Revolution in 1789. Fashion, on the other hand, has been transformed over the past 200 years as a result of many small revolutions. From changes in clothing to changes in household linen or technical fabrics. Each of these transformations has created new and valuable intangible assets. This chapter “fashion as a patentable invention” aims to show the clear impact of innovation on the field of fashion. There are many relevant examples of patents throughout history, and one wonders what our everyday lives would be like without inventions such as the zip, velcro or bras. Some of the most representative current examples showing that patents are a powerful tool in the world of fashion are Gore-tex®, Geox’s waterproof shoes, Procter & Gamble Company’s bleaching technology, or Grindi SRL’s Suberis fabric, among others.

Nowadays, thanks to increased awareness and concern for the environment, there is a greater focus in fashion innovation on creating new fabrics with less environmental impact. Examples of this change can be seen, for example, in new biodegradable filaments produced by bacteria or fungi or a Puma shoe prototype produced using leather made from pineapple.

The chapter touches on the trend of “smart clothing”, which has seen features added to products which go beyond the usual scope of use in an effort to achieve innovations that make users’ lives easier. From t-shirts that measure temperature and heart rate, Human Sensor clothing which changes colour to reflect the levels of air pollution in the surrounding environment, odour-resistant clothing, wrinkle-free and stain repellent clothing, sports clothing or bags with a built-in deodorant device, to Nike’s HyperAdapt trainers, which are able to adapt to fit the user’s feet and feature self-adjusting laces. The scene in “Back to the Future”, in which Doc offers Marty McFly some special shoes which automatically adjust to fit his feet, is already close to becoming a reality.

The conclusion drawn in this chapter is that we should regard patents as a powerful commercial tool given that a patent confers on its holder the right to prevent others from manufacturing, using, offering for sale, selling or importing its product or process. This exclusive right is a decisive factor in companies succeeding in such a dynamic and demanding environment as the fashion sector, enabling them to establish a solid position and gain a competitive advantage in the marketplace.

 

Author: Marina Reig 

Visit our website: http://www.elzaburu.es/en

 

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

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