by Perpetua Mwangi

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The annual Kenya fashion awards, various fashion shows currently airing on local stations, fashion segments in local dailies, the myriad fashion events and other platforms mirror the existence of a budding fashion industry in Kenya. There is also a growing awareness to be authentic by adorning Kenyan designs while also embracing a strong sense of Kenyan pride. Whilst the aforementioned reflects a yearning among Kenyans to keep up with the joneses and fashion in particular, in the intellectual property (IP) space, it reflects the presence of a pool of protectable IP. Fashion is as dynamic as the digital revolution in that what is in season today in a couple of months, it is ‘so out of season’. It is thus crucial to seek IP protection(s) that will be relevant even after the society has migrated to the newest trend. However, there are timeless items which withstand the test of time and for which rely on or would require strong IP protection.

One fashion item/article would have to be protected by multiple areas of law in Kenya because currently we do not have a separate system of protection for ‘fashion designs’ compared to the European Union whose members aside other areas of national law can make use of the 2002 regulations on Community designs. This blogpost is an attempt to explore how Kenya’s current IP regime can offer protection in the fashion industry as well highlight some issues particularly relating to copyright protection.

Trademarks (TM)

Kenya’s Trade Marks Act, cap 506 of the Laws of Kenya defines trade mark to mean;

‘a mark used or proposed to be used in relation to goods [services] for the purpose of indicating a connection in the course of trade between the goods [provision of services] and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person or distinguishing goods [services] in relation to which the mark is used or proposed to be used from the same kind of goods [services] connected in the course of trade with any person’

In summary, trade mark means a mark used or proposed to be used for the purpose of distinguishing goods or services from that of another in the same or similar industry. It serves as a badge of origin and has value in business. Trademark protection in this industry is a no-brainer. Fashion power houses are recognized by their names, logos, slogans whereas fashion cities are identifiable by their look, feel and people. Just like the Trade mark laws in other countries, Kenya’s TM Act makes provision for what can be protected as a trademark. A registered trade mark lasts for an initial period of ten years after registration and is subject to renewal after every ten years.
For those familiar with the signature Christian Louboutin red outsoles stilettos will remember that the US federal Court of Appeals in the case of Christian Louboutin v Yves Saint Laurent ruled that CL owns TM right in his distinct red outsoles contrasted with the remaining upper surface of the shoe. He is identified as the sole legitimate source of such shoes.

The case is significant because it demonstrates that a mark can almost be anything, in the above, case it was colour. Incidentally, the TM Act provides a non-exhaustive list of what a mark may be. A distinctive signature stitch work or pattern for instance may be protected as a TM, as long as it fulfils the legal criteria for TM protection. Industry players if they are not doing so, ought to protect their brands by registering their trademarks. A trademark will denote origin meaning that Kenyan’s and other regional and global customers will associate their quality work by the brand and importantly to have a legal claim against infringers as well as enhance their competitive edge in this fast growing industry.

Industrial Property Rights (IPRs)

The Industrial Property Act (IPA) cap 509 of the Laws of Kenya regulates the protection of innovations and inventions in Kenya. The IPA defines industrial property rights to mean

‘rights under Patents, Certificates of Utility models and includes technovation and registration of industrial designs’

‘Innovation means utility models, technovation models, and industrial designs and any other non-patentable creations or improvements that may be deemed deserving specified IPRs; and Invention means a new and useful art, process, machine, manufacture or composition of matter which is not obvious, or any new and useful improvement thereof which is not obvious, capable of being used or applied in trade or industry and includes an alleged invention’.

The recently concluded GES 2015 Summit in Kenya proved that there is a very promising innovative culture in Kenya and Africa generally.Even in the fashion industry, there is a lot of untapped and possibly unprotected inventions and innovations. It is important for inventors and innovators to take advantage of the protection that the IPA can offer.

Industrial design (ID)

The IPA defines an ID to mean:

‘any composition of lines of lines or colours or any three dimension form, whether or not associated with lines or colours provided that such composition or form gives a special appearance to a product of industry or handicraft. Protection does not extend to anything that solely serves to obtain a technical result’.

For an ID to be registrable it must be new; its new if it has not been disclosed to the public anywhere in the world. For instance a manufactured garment, button, hand bag, even jewelry can be protected as an ID. In the recently concluded fashion awards, there was a lady who wore an elegant dress by Yvonne O. of Afro Street collection which she accessorized with a striking and quite interesting leg jewelry by Achiko. Such could (if it’s already not) enjoy protection through the registration of an ID. Many handmade craft works which are popular accessories among Kenyans can/could have enjoyed this protection. Protection as an ID is valid for an initial period of five years and is renewable for a further two terms lasting five years each.

Patents and Utility models

Under the IPA, Patent protection is granted to inventions which may be or may relate to, a product or a process. An invention is patentable if it’s new, involves an inventive step and is industrially applicable or is a new use. The same requirements applies for a utility model save for the requirement of inventive step. The IPA is elaborate on what can and cannot be protect by Patent or Utility model. A Patent last for twenty years whereas Utility model lasts for ten years.

A new fashion product may enjoy protection through the grant of a Patent or certificate of Utility model in Kenya. The world most famous blue denim jeans’ genesis cannot escape the mention of Patent protection demonstrating how Patent can evolutionize and/or revolutionize the fashion industry. On May 20, 1873, the USPTO granted a Patent to Jacob W. Davis who assigned the same jointly to himself and Levis Strauss & Co. Patent No. 139, 121 related to copper rivet fasteners for denim trousers. The metal rivets were used to fasten men’s work pants which proved to be both desirable and durable. Today blue jeans are almost a must have in everyone’s wardrobe, men, women, children indiscriminately.

Understanding that time is of the essence in fashion, protection through the IPA which requires an extensive examination period may not be an ideal protection measure. This perhaps necessitates the need to consider exploring a separate system of protection for this industry like the EU.

Trade secrets

This is yet another area of IP that players in the fashion industry can make use of to give themselves a competitive edge over others. In fashion, it can be a design, pattern, practice or process not openly known by others.

Copyright

For a work to be protected in Kenya just like in many jurisdictions, it must fall within one of the categories set out in Section 22 of the Copyright Act (CA). Considering the Berne Convention and our Copyright Act, in the world of fashion, artistic work is what is applicable. Artistic works in Kenya means, inter alia drawings, prints, photographs, works of artistic craftsmanship, pictorial woven tissues and articles of applied handicraft and industrial art.

Unlike the other IP protections mentioned above, copyright protection is automatic making it quite a unique area of IP law. An artistic work in Kenya is protected if it is original and has been reduced to material form. These requirements are fairly easy to achieve. To achieve originality, the law requires an author to expend some sufficient effort as for fixation, once it is made into some form, it fulfils the requirement for material form.

The Maasai jewelry and prints are quite popular in Kenya and East Africa, raising the question whether such is capable of copyright protection. To make a determination, would entail analyzing Kenya’s Copyright regime which as it currently stands, such works fall within the definition of artistic craftsmanship and/or articles of applied handicraft. They should thus enjoy copyright protection. Using Achiko’s leg jewelry as an example, the same embodies sufficient creative effort and is also in a material form. On the face of it, there exists copyright protection. All this is however based on assumptions because our Courts have not yet had a chance to offer any interpretation and we would have to look to other jurisdictions. In the US for instance, the Courts have ruled that as much as a work is artistic, if it is made up of purely functional features, it will not enjoy copyright protection. For instance, if a piece of jewelry is made up of common shapes (which ideally are free for all to use), such would not be copyrightable by themselves. Copyright protects expression of ideas and not useful objects.

According to Section 26(1) of the Act, a copyright holder in artistic works enjoys the exclusive right of reproduction in any material form of the original work, or its translation or adaptation, distribution to the public, and the communication to the public and the broadcasting of the whole or a substantial part thereof, either in its original form or in any form recognizably derived from the original.

A designer who comes up with drawings/sketches which he/she intends to adapt into a garment(s) enjoys automatic copyright protection in those drawings/sketches. The adapted work similarly enjoys copyright protection and such owner enjoys the mentioned exclusive rights. To demonstrate this, the Katy Perry’s dress which she wore at this year’s Met Ball perfectly brings to light the surrounding intricacies in this area of law. The dress has become the subject of copyright infringement suit filed by a Brooklyn street artist popularly known as Rime. The suit is against designer Jeremy Scott and the design house Moschino. The artist alleges that the dress imitated his signature graffiti work that he painted on a Detroit building. It is alleged that the dress was created without his license.

Most local designers imitate design ideas straight from a magazine or photograph and create a garment oblivious of the fact that copyright exists in that photograph. This makes one wonder whether in such instances copyright protection in the fashion industry is a non-issue in Kenya or the time ripe for designers to be conscious of the underlying copyright protection.

Undoubtedly, copyright protection in this industry is complex and requires careful consideration. Creativity is to be nurtured and protected in a way that promotes growth without limiting the same. Surprisingly, the US fashion industry is grappling with this area of law as the fashion industry continues to lobby Congress to modernize its law so as to allow for greater protection of designs. Such a move would bring the US up to the same standard as countries such Italy, France and the United Kingdom, where fashion designs themselves are protectable.

In conclusion, works of fashion can be protected for starters through the various elaborate IP laws as the IP fraternity in Kenya begins to brain storm on whether protecting ‘fashion designs’ separately is a non-issue or protection is long overdue.