Design patents get active in Lululemon v Calvin Klein

High-end yoga clothing designer Lululemon’s patent infringement suit against Calvin Klein has piqued the fashion industry’s interest in design patents. The Vancouver retailer of athletic apparel claims Calvin Klein’s Performance line “includes substantially the same waistband design elements and pant style” as its Astro yoga pant. Since the US does not offer copyright protection for fashion designs, the case could bolster the only alternative there is to trade mark protection for the industry. A bill was last year introduced to offer copyright protection for fashion designs but is still moving through Congress.

Professor Susan Scafidi of Fordham University’s School of Law spoke with Managing IP about some of the implications of the Lululemon case.

The fashion industry tends to use trade marks rather than patents to protect its intellectual property. Why do designers so rarely apply for patents?

Patents require prior review – as do trade marks – but patent review is more intensive. Given that fashion is seasonal, it’s simply too expensive for most items. It takes far too long to be effective - except for perennials such as yoga pants, which you can incorporate season to season in various forms.

When fashion brand owners decide to apply for a patent, what kinds of issues do they run into?

The design has to be new. Even if 10% of things that go down the runway are new, to prove this, we have to submit prior art. Imagine the difficulty of submitting prior art for a pair of trousers. It could be an enormous task.

In more general terms, perhaps the biggest challenge for a designer approaching the patent office is the lack of shared professional experience. The patent office hires agents who are chemists, biophysicists, software engineers, but to my knowledge has yet to run an ad for a fashion expert to review those applications.

Why do you think Lululemon has chosen to use patents in this instance?

It’s a signature design of theirs, so in terms of their brand identity and marketing there’s a reason to protect this design. It’s not an item that’s going to be on the racks for two months then get thrown into the bargain bin.

What other fashion products might brand owners want to consider protecting with patents?

We see the same thing happening with a number of athletic shoe companies, which will patent a unique heel, or with something like a handbag clasp. Those elements are then repeated season after season, in different colour combinations or other variations.

If Lululemon is successful in this claim, do you think more designers will be encouraged to apply for design patents?

I think the numbers of patents relative to trade marks are likely to remain similar. You can never be too sure that the signature waist band is going to be something that the creative director is going to repeat, whereas you can be sure that the logo is going to be used consistently.

Despite their limited scope of protection, trade marks are still going to be the sharp dagger in the armoury of fashion designers.

A spokesperson for Lululemon, declined to comment while the case is in progress. A spokesperson from Calvin Klein did not respond to a request for comment.