Presentation at the Practical Approaches to Intellectual Property Utilization in Africa Workshop in Dar es Salaam, Tanzania.

1. Designing
for
Success:
Protec1ng
Design
and
Fashion,
and
Reaping
the
Benefits.
Miriro
Matema
and
Beryl
Kanyowa
Zim
Fashion
Council
Dar
es
Salaam
March
2013
1

2. Introduc?on
• Intellectual
property
dis?nguishes
protec?on
of
aesthe?c
work
from
its
func?onality.
The
ul?mate
goal
for
the
intellectual
property
system
is
to
foster
innova?on
and
originality
by
valuing
industrial
property
rights.
• Today,
the
global
fashion
industry
is
driven
by
crea?vity
and
the
intellectual
property
invested
in
it.
Intellectual
property
protec?on
acts
as
a
valuable
yet
intangible
asset
for
fashion
designers
although
the
security
is
limited.
It
is
fundamental
to
find
ways
of
developing
these
methods
of
design
protec?on
for
a
beJer
and
successful
industry.
• Design
protec?on
extends
only
to
works
that
are
primarily
ornamental,
for
example,
embroidery
on
a
compartment,
as
opposed
to
the
compartment’s
overall
design.
With
this
in
mind
we
can
work
with
the
general
overview
of
how
to
protect
one’s
product
design.
The
accessible
ways
of
protec?ng
intellectual
property
in
Africa
are
through
copyrigh?ng,
design
patents
and
trademarks
which
aids
in
deterring
others
from
design
exploita?on.
2

3. The
Paris
Conven?on
Registra?on
• Protec?on
can
also
be
obtained
by
an
interna?onal
registra?on
procedure
which
can
be
referred
to
as
a
conven?on
applica?on,
by
which
a
person
of
any
na?onality
of
a
country
which
is
a
state
party
to
the
Paris
Conven?on
for
the
Protec?on
of
Industrial
Property
(Paris
Conven?on)
(1886)
may,
within
six
months
of
filing
an
applica?on
in
a
Conven?on
country,
apply
for
the
protec?on
of
a
design
in
the
Conven?on
member
of
countries.
• The
Conven?on
(so
called
interna?onal)
applica?on
is
a
single
applica?on
in
which
the
applicant
is
offered
the
facility
to
seek
protec?on
in
as
many
countries
of
choice
as
they
desire.
Its
merit
lies
in
its
removal
of
the
hassles
of
having
to
file
separate
applica?ons
in
each
desired
country
in
which
protec?on
is
sought.
As
such,
not
only
is
it
a
convenient
streamlined
acquisi?on
procedure,
but
a
cheaper,
faster
or
?ring
process.
In
virtually
all
jurisdic?on,
the
creator
‘prima
facie’
is
the
applicant
of
first
appeal
except
where
there
exist
certain
alterna?ve
arrangements
or
circumstances
to
the
contrary.
Alterna?ve
cases,
in
which
the
creator
would
not
be
the
applicant,
include:
3

4.
1.
Commissioned
work,
in
which
event
the
person
on
whose
behalf
the
design
was
made
becomes
the
applicant.
2.
Employee-­‐made
design
by
virtue
of
which
the
employer
is
the
righul
owner,
hence
qualified
applicant.
3.
Design
joint
ownership,
whereby
two
or
more
persons
are
to
apply
for
a
design
registra?on
as
joint
owners.
In
this
event,
each
of
the
par?es
would
be
en?tled
to
enjoy
equal
undivided
shares
in
the
ownership
and
commercial
exploita?on
of
the
registered
design,
unless
of
course
there
is
an
agreement
to
the
contrary
by
the
par?es.
4.
Employee
designs,
similar
to
patents,
the
employer
is
only
en?tled
to
be
the
proprietary
owner/applicant
of
designs
made
within
the
course
and
scope
of
their
employee’s
contract
of
employment.
By
course
of
employment
is
meant
designs
created
during
the
period
of
the
contract
of
employment
and
during
the
designated
working
hours.
4

5. Formali?es
for
registra?on
• The
applica?on
as
lodged
must
contain
all
the
statutorily
s?pulated
documenta?on,
with
full
informa?on,
and
accompanied
by
the
prescribed
fees,
or
else
it
would
fail
to
be
registered
for
lack
of
compliance
with
formality
requirements.
• It
must
contain
the
descrip?ve
statements
which
the
capacity
of
protec?on
sought
would
be
determined
and
thereby
dis?nguished
and
limited.
• The
design
registra?on
is
par?cular
to
a
class
or
classes
of
goods.
Design
registra?on
with-­‐respect-­‐to
classes
of
goods
is
very
significant
as
it
is
key
to
issues
of
infringement.
There
would
be
no
viola?on
of
similar
design
outside
of
the
stated
class(es)
of
goods.
5

6. Commercial
exploita?on
of
designs
The
owner
of
the
design
is
at
liberty
to
either
commercially
exploit
the
design
by
themselves
or
through
third
par?es.
Third
party
commercializa?on
may
either
be
through
licensing
or
assignment
of
the
design
rights.
-­‐
Assignment
of
Designs
-­‐
is
the
outright
and
uncondi?onal
surrender
of
the
rights
and
?tle
to
the
design
to
the
assignee
-­‐
Design
licensing
may
be
done
in
whole
or
in
part
upon
specific
terms
and
condi?ons
without
devolu?on
or
permanent
transmiJal
or
transfer
of
ownership
in
?tle
of
the
design
to
the
licensee.
Adequacy
of
expression
of
the
contractual
terms
and
condi?ons
is
cri?cal
not
only
to
the
licensing
arrangement
but
to
its
performance
and
enforcement.
Thus
the
contrac?ng
par?es
have
to
sa?sfy
themselves
that
the
following
fundamental
maJers
and
controversial
issues
are
clearly,
precisely
and
concisely
captured.
6

7.
1.
The
possibility
of
premature
contractual
termina?on
on
good
cause
shown
and
upon
due
no?ce
being
given,
and
par?es’
rights
in
such
an
eventuality.
2.
Accoun?ng
and
verifica?on
of
financial
data
with
respect
to
royal?es
en?tlement.
3.
Minimum
royal?es
payable
and
mode
of
payment.
4.
Responsibili?es
of
the
par?es’
renewals
and
maintenance
fees
payments.
5.
Quality
control
and
product
liability,
and
6.
Jurisdic?on,
applicable
law
and
mode
of
dispute
resolu?on
and
seJlement.
7

8. Legal
Validity
• The
licensing
agreement
is
automa?cally
terminated
upon
lapse
or
expira?on
of
the
protec?on
period,
and
thus
mutual
obliga?ons
between
the
par?es
thereby
cease.
•
The
right
to
make
the
design
ar?cles
also
carries
with
it
the
implied
absolute
rights
to
use,
work
with,
prac?ce,
dispose
of
or
import
the
ar?cle;
• Any
condi?on
that
restricts
or
prohibits
the
licensee
from
using
any
ar?cles
other
than
those
under
the
design
licenses
require
the
licensee
to
acquire
other
related
ar?cles
not
related
to
the
licensed
design
from
the
licensor,
or
prevent
the
licensee
from
working
the
design
in
other
countries
where
protec?on
is
not
sought
would
be
legally
invalid
and
unenforceable
from
the
onset.
8

9. Why
Protect
Fashion
Design
in
Africa?
As
an
industry
that
is
on
the
rise
it
is
vital
to
shield
Intellectual
property
for
financial
and
cultural
benefit.
Advantages
of
protec?ng
fashion
designs
are:
– Boos?ng
of
income
through
sales
– Improvement
of
a
business’
market
share
– Reduc?on
of
risk
of
viola?on
of
design
piracy
– Raise
of
profit
margins
– AJrac?on
to
poten?al
investors
and
financial
ins?tu?ons
Furthermore,
as
an
African
industry
we
should
be
cau?ous
of
other
industries
such
as
the
Western
fashion
industry
to
whom
we
have
served
as
inspira?on
for
decades
e.g.
the
most
recent
tribal
print
trend
par?cularly
the
Jean
Paul
Gaul?er’s
Spring
2005
Collec?on
which
had
paJerns
of
the
Masai
beading
as
inspira?on.
If
the
Masai
paJern
design
was
protected
by
the
Kenyans
and
Tanzanians,
J.P
Gaul?er
would
not
have
had
the
right
to
expose
the
respected
cultural
paJern.
9

10. Conclusion
Despite
the
limited
intellectual
property
protec?on
available
in
fashion
design
especially
in
Africa,
piracy
remains
a
major
threat.
In
order
to
advance
and
sustain
the
crea?vity
of
the
rising
African
fashion
industry,
an
independent
regime
of
fashion
design
protec?on
should
be
established.
Africa
must
follow
the
lead
of
the
EU,
who
offers
a
plaorm
of
design
protec?on
for
a
registered
community
and
for
a
non-­‐registered
community
of
designers.
This
can
be
useful
to
designers
or
businesses
with
limited
budgets
and
for
those
who
simply
want
to
test
the
market
before
registering.
Unfortunately,
this
system
has
no
guarantee
of
permanently
eradica?ng
design
piracy
but
it
is
this
kind
of
protec?on
that
will
serve
as
a
powerful
restric?on
against
design
infringement.
10