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HEC Luxury Certificate – 26 May 2014
Intellectual property & the fight against counterfeiting in the luxury sector
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How and why is intellectual property (IP) the foundation of a sound luxury business?
Intellectual property & the fight against counterfeiting in the luxury sector
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What are intellectual property (IP) & IP rights?
Intellectual property & the fight against counterfeiting in the luxury sector
Author
Creativity/Innovation
Society
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Which IP rights are available to luxury houses?
PATENT
CONFIDENTIAL INFORMATION
TRADE MARKS
PASSING OFF
COPYRIGHT
MORAL RIGHTS
UNREGISTERED DESIGN RIGHTS
REGISTERED DESIGN
Intellectual property & the fight against counterfeiting in the luxury sector
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What are the remedies for IP infringement?
Intellectual property & the fight against counterfeiting in the luxury sector
REMEDIES
FINAL REMEDIES
PECUNIARY
ACCOUNT OF PROFITS
DAMAGES
NON PECUNIARY
DECLARATION
DELIVERY UP
COURT ORDER REVEAL
RELEVANT INFO
INJUNCTION
INTERIM REMEDIES
INTERIM INJUNCTIONS
EX PARTE ORDERS
SEARCH ORDER
FREEZING INJUNCTION
WITHOUT OR ON NOTICE
PROCEEDINGS
CRIMINAL SANCTIONS
THREATS
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How do these IP rights get used in the luxury goods sector?
Intellectual property & the fight against counterfeiting in the luxury sector
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Patent law
Katerina Plew v Victoria’s Secret
PATENT
INVENTION
NOVELTY
INVENTIVE STEP
INDUSTRIAL APPLICATION
Intellectual property & the fight against counterfeiting in the luxury sector
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Trade mark law
• Conventional trade marks • Non-conventional trade marks
TRADEMARK
CLEAR
PRECISE
SELF-CONTAI
NED
EASILY ACCESSIBLE
& INTELLIGIBLE
DURABLE
OBJECTIVE
Intellectual property & the fight against counterfeiting in the luxury sector
• Christian Louboutin v Zara • Christian Louboutin v Yves Saint
Laurent
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Trade mark law
Unfair advantage?
Detrimental? Yes!
Intellectual property & the fight against counterfeiting in the luxury sector
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Passing off
• Goodwill • Misrepresentation • Damage
Intellectual property & the fight against counterfeiting in the luxury sector
Rihanna v. Topshop
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Copyright law
• The idea/expression dichotomy • Originality • Fixation & tangibility
Intellectual property & the fight against counterfeiting in the luxury sector
COPYRIGHT
LDMA/PRIMARY WORKS
LITERARY WORKS
DRAMATIC WORKS
MUSICAL WORKS
ARTISTIC WORKS
ENTREPRENEURIAL/SECONDARY/
DERIVATIVE WORKS
SOUND RECORDINGS
FILMS
BROADCASTS
TYPOGRAPHY RIGHT
• Thierry Berthelot v Van Cleef & Arpels
• Ownership of copyright & the employee author
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Design law
• European directive on the legal protection of designs (1998)
• European regulation on community designs (2002)
• North American Innovative Design Protection Act (IDPA)
Intellectual property & the fight against counterfeiting in the luxury sector
REGISTERED DESIGN
ELEMENTS • DESIGN • NOVELTY • INDIVIDUAL CHARACTER • EXCEPTIONS TO REGISTRATION
INFRINGEMENT
PROTECTION OF SPARE PARTS
SECONDARY
DESIGN RIGHT
REQUIREMENTS • A DESIGN • QUALIFICATION OF THE DESIGN • ORIGINALITY • DESIGN MUST BE RECORDED • DESIGN MUST NOT BE
EXCLUDED
OWNERSHIP
INFRINGEMENT • PRIMARY • SECONDARY • EXCEPTIONS
REMEDIES
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Position statement
Is it preferable for luxury goods companies to protect their IP rights from the inception of their newly created products & services? Should luxury businesses allocate substantial resources for the registration of appropriate trade marks, patents, designs, copyrights, etc.?
Intellectual property & the fight against counterfeiting in the luxury sector
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Case study: Gucci v Guess
Intellectual property & the fight against counterfeiting in the luxury sector
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The dark side of success: counterfeiting, the fight against it, regulating e-commerce & consumer protection
Intellectual property & the fight against counterfeiting in the luxury sector
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Counterfeiting: a problem?
What?
Where? By whom?
Intellectual property & the fight against counterfeiting in the luxury sector
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Does counterfeiting cause any damage?
Intellectual property & the fight against counterfeiting in the luxury sector
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How does a luxury house keep products from being counterfeited?
Intellectual property & the fight against counterfeiting in the luxury sector
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How to address the sale of counterfeits online?
Best practices for Marketplace
Sites
Best practices for
Shopping Sites
Best practices for Search
Sites
Best practices for Payment Service Providers (PSPs)
Best practices for Trademark Owners
Intellectual property & the fight against counterfeiting in the luxury sector
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Position statement Do you agree with Patrizio Bertelli, Prada CEO and Miuccia Prada's husband, that counterfeiting organisations are good for business, because they create jobs and also give additional fame and appeal to companies which goods are counterfeited?
Intellectual property & the fight against counterfeiting in the luxury sector
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Conclusion
IntIntellectual property & the fight against counterfeiting in the luxury sector
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IP law & luxury course @ HEC Luxury Certificate: Intellectual property & the fight against counterfeiting in the luxury industry
Annabelle Gauberti Founding partner [email protected] @Crefovi on Twitter
Intellectual property & the fight against counterfeiting in the luxury sector
