On November 20, 2012, after a widely reported settlement agreement had been reached, Lululemon Athletica Inc. filed for voluntary dismissal of its design patent infringement suit brought before the United States District Court for Delaware against Calvin Klein Inc. and its manufacturer G-III Apparel Group, Ltd.
This case centered around three design patents owned by Lululemon, namely, US D645,644; US D661,872; and US D661,281. The three design patents disclose yoga pants and flood pants where the waist band appears to be made of two pieces of fabric, overlapping to form a “v” shape in the front and back of the pant. To those familiar with Lululemon, this type of waistband is featured on its “Astro Pant” line of yoga pants.
The details of the settlement between the parties are confidential, however, Calvin Klein did not submit a statement of defence in court for these proceedings.
It has been noted that use of design patents, or industrial design registrations in Canada, to protect clothing designs is uncommon.
This case, though, shows the effectiveness of design patents to protect the purely aesthetic aspects of clothing designs. Once the criteria for design protection are met, the advantage of using design patents over trade-marks to protect design arises from the automatic monopoly over the design granted by the design patent or industrial design registration. When a design first arises, it is difficult to show the necessary link between the design and the source to satisfy the requirements for trade-mark protection.
After the end of the monopoly term, once the design is well associated with the source, it may be possible to extend protection over the design using trade-mark law.
If you would like to know how to develop an intellectual property portfolio to ensure that your creative designs are protected, feel free to contact us. One of our lawyers or Patent Agents will be happy to speak with you.