Fashion brands are underpinned by intellectual property (IP). This is as true for global brands as it is for tomorrow\u2019s start-up.<\/p>\n
This is certainly recognised by Nike, which puts a great deal of store behind its IP. But sometimes things can go awry, as was shown recently when Nike faced a legal challenge in respect of its registered Community Design for a lateral strap-like component of its Air Huarache Run Ultra trainer (Contested Design). \u00a0<\/p>\n The challenge was brought by Italian designer Alfredo Langella before the EU Intellectual Property Office (EUIPO). It appears that he needed to knock out the Contested Design in order to create freedom within the market for his designs.<\/p>\n Langella claimed that the Contested Design failed to create a different overall impression when compared to an earlier patent for another Nike sneaker design which dated back to 1992 (US patent No. D330,452) and as such the Contested Design lacked individual character, which is one of the requirements which must be met to achieve protection as a registered design.<\/p>\n Examples of how the prior (left) and Contested Designs (right) were incorporated in Nike\u2019s shoe models are shown below:<\/p>\n Nike argued that the Contested Design created a different overall impression on the informed user to the design disclosed in its earlier Patent.\u00a0 Nike\u2019s arguments were twofold<\/p>\n The EUIPO rejected Nike\u2019s arguments.<\/p>\n It declared the Contested Design invalid for its lack of individual character. This was because the EUIPO considered that:<\/p>\n In reaching its decision the EUIPO also relied upon the previous decisions of the European Court of Justice concerning the role of market trends on design freedom.\u00a0 It was the Court\u2019s view that a general design trend cannot be regarded as a factor that restricts the designer\u2019s freedom, since it is precisely that freedom on the part of the designer that allows them to discover new shapes and new trends or even to innovate in the context of an existing trend.<\/p>\n This case highlights the challenges fashion businesses face in securing and maintaining strategic IP portfolios in a competitive and saturated market.\u00a0<\/p>\n For brands and their designers, it is important to be aware of the legal need for designs to be sufficiently different to the existing prior art in order to achieve protection.<\/p>\n The case also serves as a cautionary tale for businesses which seek to extend their IP protection towards the end of the life of the IP right in question by filing fresh design applications. This decision shows that the EUIPO is clamping down on the practice by seeking to expand the 20-year duration afforded to patent protection, through the registration of a registered designs which can offer protection for a longer period of 25 years.<\/p>\n![\"\"](\"https:\/\/www.foxwilliams.com\/wp-content\/uploads\/2025\/05\/image.jpg\")
<\/figure>\nNature of the dispute<\/h2>\n
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<\/figure>\nNike\u2019s arguments<\/h2>\n
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The decision\u00a0<\/h2>\n
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Implications for the fashion industry<\/h2>\n
Top tips for registered design protection<\/h2>\n