H&M has been trying to invalidate two of YSL’s designs which protect its Tribute tote bag since 2009. It has been unsuccessful at every step of the way and this continued yesterday when the General Court of the EU upheld the decision of the EU designs registry and confirmed that the two registered designs for the Tribute tote were valid.
H&M possibly tried to invalidate YSL’s designs because it wished to prevent a design infringement claim from YSL if H&M marketed a bag that was similar to YSL’s registered designs.
We have noticed a general trend towards upholding registered designs for fashion items whether clothing, accessories or footwear. This latest decision supports that trend.
The decision is however in contrast to that of LVMH, which recently lost two registered trade marks for its famous chequerboard design (see here). Perhaps if the chequerboard had been registered as a design it may have been upheld, as the criteria for design registration is different to trade mark registration (although that particular chequerboard pattern is more than 25 years old so any registered design would have lapsed by now).
Other advantages of EU registered designs are that they are quick and cheap to file, cover the whole of the EU, last for 25 years and you do not need to prove copying to succeed in an infringement claim.
Finally, this may not be the last we hear of the case as H&M could appeal to the Court of Justice of the European Union. Given H&M’s lack of success to date, it may be time for H&M to pack its bags and call it a day.