The Irish fashion market is a mixture of foreign-owned high street stores and independent Irish designers. Many international designers, such as Louise Kennedy, Paul Costelloe, Simone Rocha, Peter O’Brien, and Philip Treacy are originally from Ireland.

Trade mark protection in Ireland may be obtained by registering a national Irish trade mark, a European Union trade mark, or an International trade mark designating Ireland or the EU. National legislation is the Trade Marks Act 1996 (as amended) and the Irish Trade Mark Rules 1996 (as amended).

To be registered in Ireland a trade mark must be capable of:

• distinguishing the goods and services of one undertaking from those of other undertakings; and
• being represented on the Register, in such a manner which enables the public to determine the clear and precise subject matter of the protection afforded to the proprietor of the mark.

To maintain protection in Ireland the trade mark must be renewed every 10 years through the payment of a renewal fee.

A trade mark may be removed from the Register where it has not been put to genuine use in Ireland in relation to the goods or services for which it is registered for a continuous period of five years and there are no proper reasons for non-use.

In Ireland, a series of trade marks may be applied for. The marks must resemble each other but may differ in respect of non-distinctive elements that do not substantially affect the identity of the mark.

Colour marks. Irish law recognises colour marks, namely marks that consist exclusively of either a single colour without contours, or a combination of colours without contours.

Position marks. Irish law recognises position marks, namely a mark consisting of the specific way in which the mark is placed or affixed on the product.

Shape marks. Irish law recognises shape marks, namely a mark consisting of or extending to a three-dimensional shape. However, a sign will not be registered if it consists exclusively of:

• the shape which results from the nature of the goods themselves;
• the shape of the goods which is necessary to obtain a technical result; and
• the shape which gives substantial value to the goods.

Unregistered trade marks. Unregistered trade marks can be protected by the common law tort of passing off, which is an independent cause of action. This tort protects the goodwill of a business built up through use of a mark. The registration of a trade mark may be prevented by any rule of law protecting an unregistered trade mark.

Pattern marks. Irish law recognises pattern marks, namely marks consisting exclusively of a set of elements that are repeated regularly.

Black and white marks. Registration in black and white may protect against use in colour, unless the colour alters the distinctive character of the mark.

Irish law also permits the registration of:

• Certification marks, namely marks indicating that the goods or services in connection with which they are used are certified by the proprietor in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
• Collective marks, namely marks distinguishing the goods or services of members of the association which is the proprietor of the marks from those of other undertakings.

Registered design protection in Ireland may be obtained by registering a national Irish design, a European Union design, or an international design designating Ireland or the EU. National legislation is the Industrial Designs Act 2001 (as amended).

Designs are concerned with the outward appearance of a product or part of a product. Appearance can arise from lines, contours, colour, shape, texture and/or materials of the product and/or its ornamentation. A design can be anything from a pattern on a textile to the design of part of a product, such as a button. It is not concerned with how a product works or functions.

Unlike trade marks, design protection is not limited by reference to goods or services. A registered design can be enforced against any other design that creates the same overall impression regardless of whether it is being used in a completely different context.

A registered design gives the owner protection for five years, renewable for further periods of five years up to a maximum of 25 years. EU law also provides for unregistered community designs (UCD). UCD rights last for three years and come into being automatically, without the need to make an application for registration to the European Union Intellectual Property Office (EUIPO). There is no national unregistered design right in Irish law.

In Ireland, copyright protection is governed by the Copyright and Related Rights Acts 2000 (as amended). Copyright is an automatic right, there is no registration procedure for copyright. Copyright is deemed to exist from the moment of creation of the “work”. The act of creating a work also creates the copyright, which then subsists in the physical expression of the work. In general, the term of protection for copyright is 70 years after the death of the creator/author of the work but the term of protection varies depending on the type of work.

To benefit from copyright protection, a work must be “original”, it must not be a copy of a pre-existing work and must involve independent skill and labour.

Patents 

In Ireland, patents are governed by the Patents Act 1992 (as amended) and the Patent Rules 1992 (as amended). Patents may be “full-term” (20-year term) or “short-term” (10-year term). A European patent designating Ireland is treated as if it were a full-term patent granted under the Patents Act 1992 (as amended). An international (PCT) application designating Ireland is deemed to be an application for a European patent designating Ireland. Ireland is not yet participating in the UPC. In fashion, patents are often obtained, for example, for fastening devices or methods of production or technical features used to combat counterfeiting. 

Geographic Indications (GIs)

GIs are intellectual property rights that identify products having qualities, characteristics or a reputation due to natural and human factors linked to their place of origin. The recent approval by the European Parliament to approve the regulation of non-agricultural GIs to protect the names of local craft and industrial products, including jewellery and textiles, will benefit the fashion industry in Ireland.

Licence agreements 

Licence agreements provide an opportunity for a fashion house to, for example, extend its brand by giving rights in its IP to others in return for a monetary reward, such as a royalty. Key provisions include identifying the rights licensed, the term of the licence and any renewal rights, what use is permitted, relevant territories, whether the rights are exclusive or non-exclusive, the obligation to monitor for and enforce against IP infringement, and necessary targets and timelines. A prohibition on the licensee seeking to register any of the IP in its own name and change of control provisions should be considered. 

Non-disclosure Agreements (NDAs)

NDAs, otherwise called confidentiality agreements, are private contracts whereby valuable information is kept safe and out of the public domain. They may include a restrictive covenant, restricting some form of competition. NDAs may be mutual or one way.

Some IP rights demand novelty as a requirement for acquiring protection, e.g., patents. Therefore, disclosing an aspect of an invention that is intended to be patented should be done under an NDA. NDAs are crucial for protecting non-registered IP, such as trade secrets and know-how. NDAs should clearly define the confidential information and the purpose for which it can be used.

Subcontract agreements with suppliers/in-house manufacturing

Where a rights holder does not have capacity to manufacture in-house, subcontractor agreements may be used to, for example, have all or part of the relevant product manufactured on behalf of the rights holder. The agreement should be clear on what exactly the subcontractor is doing. Other provisions include the disclosure of IP, the consideration payable, the implications of breach, rights of inspection by the rights holder, and the necessary targets to be achieved. The rights holder may wish to acquire rights in any moulds used.

Agency agreement 

The law in Ireland relating to agents is governed by case law, together with the European Communities (Commercial Agents) Regulations 1994 and 1997, which transpose the Commercial Agents Directive (Council Directive 86/653/EEC of 18 December 1986 on the coordination of the laws of the Member States relating to self-employed commercial agents). To be valid, a commercial agency agreement must be in writing. An agent, whether so-called or not, is someone who has power to bind its principal. Generally, an agency agreement is for a fixed term. However, the Commercial Agents Directive provides that a lapse of a fixed-term contract, where both parties continue to perform their obligations under the contract, will give rise to a contract for an indefinite term. On termination, an agent may be entitled to compensation. The products to be dealt with by the agent should be defined in any agreement and whether the agreement is applicable to future products in the same or other classes. The agent may be granted a licence to use IP and the responsibility for dealing with infringements of IP should be addressed.

Selective distribution online in high-end fashion and trade mark protection

Selective distribution agreements are useful in controlling the quality of dealers who can market and sell a brand’s products. This is often of importance to brand owners at the prestige or luxury end. However, care needs to be taken to ensure that any such agreements do not fall foul of any applicable competition law. Any agreement should clearly specify the requirements to be a selective distributor.

In the Coty Germany case, (C-230/16 Coty Germany GmbH v. Parfumerie Akzente GmbH) the Court of Justice of the European Union (CJEU) confirmed that Coty was entitled to restrict distributors in a selective distribution network from selling through certain online platforms if this was necessary to preserve the luxury of the brand.

Co-branding and co-marketing 

Co-branding uses the cross-licensing of IP from different businesses to brand a product or service, with a view to attracting consumer interest and increasing sales. While there are a lot of pros to co-branding, if not properly controlled with key contractual terms, a co-branding campaign can harm one or more of the parties involved. Adverse consequences may include marketplace confusion, loss of goodwill due to a partner’s shortcomings, tarnished reputation, dilution, loss of trade mark rights due to overexposure, or improper trade mark use. Therefore, careful evaluation of all stages of the campaign is required: pre-launch, co-branding period and following termination. Any co-branding agreement should also deal with ownership of and the right to utilise the co-branded marketing and promotional materials.

Franchising and alternative sales model agreements 

Franchising is a mechanism used in the fashion industry to extend a business into new markets. A franchise is essentially a licence of the franchisor’s proprietary business concept and knowledge, processes and intellectual property. Franchisees need to be chosen carefully for their ability to develop the business. Franchise agreements are usually accompanied by a detailed manual setting out how, for example, any brands should be used. Key provisions to expect in a franchise agreement would be those specifying the rights granted and the relevant territory, the fees payable, obligations to ensure compliance with the manual, the provision of training, use of the intellectual property, financial and reporting obligations and post-term restrictions. Competition law considerations will also be relevant. 

Corner store arrangements/consignment stores/pop up stores can be of interest to fashion designers testing the market. A corner store arrangement or concession usually involves taking space in an existing outlet by way of licence rather than lease. Key provisions would be the period of occupation, the calculation of fees payable and insurance. Consignment store contracts might involve, for example, a designer giving pieces to a third party to sell (e.g. a boutique). The contract would include terms dealing with the fees payable to the consignee, the efforts to be made by the consignee, the passing of ownership and returns. A pop-up shop usually involves a temporary licensing of space in return for a fee. Key provisions would be the period of occupation, the calculation of fees payable and insurance.

Employing fashion models 

When employing fashion models for high-end fashion it is advisable to put in place a contract with the model, preferably with some level of exclusivity, particularly if they are the face of the brand for a significant period. Key provisions of any contract include a termination clause in the event of behaviour that would adversely affect the brand and, subject to applicable competition law, restrictive covenants (for example, upon termination restricting certain engagements with competing brands for a period).

Model release clauses are also important so that the images can be used in all relevant media.

Social media, influencers and brand ambassadors/celebrities 

Certain social media may be within the control of the IP owner, for example, its own social media platform, or outside its direct control, namely the social media platforms of third parties. For its own social media, an IP owner should have clear policies in place for its staff and outside agents to ensure consistent use of its IP. Staff handbooks may provide guidelines on what staff may say on their own social media, and the implications of so doing. The social media of third parties may be more difficult to control unless there are agreements in place with such third parties.

Regarding influencers and brand ambassadors, the Advertising Standards Authority for Ireland (ASAI) issued a Guidance Note on Recognisability of marketing communications. This Guidance Note, together with the ASAI Code of Standards for Advertising and Marketing Communications (ASAI Code) and applicable competition law, should be considered when drafting agreements with brand ambassadors and influencers. Some important considerations are:

• Endorsement disclosures. A clause that specifies compliance with the provisions of the ASAI Code that requires disclosure when social media posts are paid advertisements. The context of the post or accompanying hashtag must make this clear and where unclear, the ASAI Code requires that clear ‘flags’ are used, for example ‘#ad’.
• Manage rogue behaviours. A “continuity of persona” clause requiring consistent character and tone (for example during a campaign), and listing topics to avoid.
• Specific activities. A clause detailing the activities required during a campaign, for example, frequency, types, and lengths of posts.
• Content ownership. Any given piece of content may contain several IP elements. How IP rights will be owned, licensed and used should be agreed.
• Misinformation. A clause limiting the spread of misinformation by forbidding the sharing of obviously fake news.
• Measurement. Having effective mechanisms to measure the effectiveness of brand ambassador marketing campaigns, for example.

Advertising standards, relevant authorities and advertising practice 

Advertising rules in Ireland are set out under both legislation and codes of practice. The main legislation covering advertising in Ireland is the Consumer Protection Act 2007 and the EC (Misleading and Comparative Marketing Communications) Regulations 2007 (S.I. No. 774/2007) which protect consumers from misleading or false advertising.

The ASAI is an independent self-regulatory body set up and financed by the advertising industry. Its role is to promote high standards of advertising and sales promotion. It publishes the ASAI Code, which covers commercial marketing communications and sales promotions in all media in Ireland.

Complaints can be made to the ASAI about a misleading or false advert and an advert found to be in breach of the ASAI Code is required to be amended or withdrawn. In the case of a sales promotion, the promoter may be requested to make the necessary changes to the way the promotion is communicated or conducted and may also be asked to recompense any consumers who have been adversely affected.

The Competition and Consumer Protection Commission (CCPC) is an independent statutory body with responsibility for enforcing competition and consumer protection law in Ireland. A consumer can complain to the CCPC if they believe that an advert is misleading or false and this had a major effect on their decision to buy. The CCPC has certain enforcement powers when there is a breach of consumer legislation or fair trading, for example to take court action, where appropriate, against businesses that have misled consumers with misleading or false advertising.

Coimisiún na Meán which replaced the Broadcasting Authority of Ireland is the regulator of broadcasting in Ireland and publishes its own code of practice known as the General Commercial Communications Code (the Code). Coimisiún na Meán also performs a complaints function. 

Online marketing is currently governed by many different pieces of legislation, for example:

• The General Data Protection Regulation (GDPR) and the Data Protection Acts 1988 to 2018 dealing with privacy and data protection.
• The ePrivacy Regulations (European Communities (Electronic Communications Networks and Services) and (Privacy and Electronic Communications) Regulations 2011) dealing with cookies.
• The ASAI Code discussed above.
• The EU Digital Services Act and Digital Markets Act, when fully operative, will impose extensive obligations on online activity and may, for example, assist in identifying the sellers of illegal goods.

The Consumer Protection Act 2007 transposed the EU Directive on Unfair Commercial Practices (Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (Unfair Commercial Practices Directive)) into Irish law. It allows the CCPC to take enforcement action when there is a breach of consumer legislation.

The Consumer Rights Act 2022 makes some widespread changes to consumer protection law including stronger consumer rights, protections and remedies. These include stronger redress rights including, stronger rights to cancel and delivery rights, a blacklist and greylist of terms, and a prohibition on fake reviews. There are new CCPC enforcement powers including the power to take action where a business refuses or fails to provide a repair, replacement or refund for faulty goods. 

In Ireland, it may be possible to obtain copyright protection for online store layouts under literary or artistic work. However, no case has been determined or litigated on this point.

In light of the CJEU decision in Apple Inc. v. Deutsches Patent- und Markenamt (Case C421/13) given on 10 July 2014, trade mark protection may be afforded to the layout of a physical store as a three dimensional trade mark for goods and services under the Trade Marks Directive (Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks). The CJEU ruled that the layout of a retail store may be registered as a trade mark with a specification consisting of services relating to goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the trade mark applicant from those of other undertakings.

Competition law in Ireland is concerned with abuse of a dominant position, and the prohibition on agreements, arrangements and concerted practices, which prevent, restrict or distort competition. The principal legislation in Ireland is the Competition Acts 2002-2022. The Competition and Consumer Protection Act 2014 established the CCPC, which is the regulator for competition and consumer protection law in Ireland.

The Competition Acts list some specific types of behaviour which are expressly prohibited. These include agreements which:

• fix prices; 
• limit or control production or markets;
• share markets or sources of supply;
• apply dissimilar conditions to equivalent transactions with other trading parties; and/or
• make the conclusion of contracts subject to acceptance by the other parties of supplementary obligations which by their nature or according to commercial usage have no connection with the subject of such contracts.

Businesses or individuals that breach competition law may be subject to civil or criminal sanctions. Since the implementation of the Competition (Amendment) Act 2022, the CCPC has the power to impose administrative fines for breaches of competition law. Undertakings can be fined up to EUR 10 million or 10% of turnover, whichever is the greater. 

Trade secrets regulations. The European Union (Protection of Trade Secrets) Regulations 2018 were implemented in Ireland on 9 June 2018. The Regulations implemented EU Directive 2016/943 (Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure) and provide for civil redress measures and remedies where a trade secret is unlawfully acquired, used or disclosed. 

All 56 members of the Council of Irish Fashion Designers have signed up to a sustainability charter requiring brands to agree to respect EU targets to reduce greenhouse gasses, produce limited product runs and work towards a zero waste business model. Ireland is one of the founding members of the European Fashion Alliance which aims to create a sustainable ecosystem for European fashion  (see www.irishexaminer.com/lifestyle/fashionandbeauty/arid-41130838.html). In Ireland, there is no regulation specifically addressing sustainability in the fashion industry. However, Ireland is subject to the following textile labelling regulations:

• EU (Textile Fibre Names and Related Labelling and Marking of the Fibre Composition of Textile Products) Regulations 2012 [S.I. No 142. of 2012].
• Industrial Research and Standards (Section 44) (Children’s Nightdresses) (Amendment) Order, 1979 [S.I. No. 215 of 1979]. 

Ireland is also subject to ISO 3758:2012 Textiles - Care labelling code using symbols.

The ASAI Code also addresses environmental claims. It specifies that symbols may imply environmental claims in themselves. They should be simple and used in such a way that they do not convey false impressions about the characteristics of goods or services.

In terms of the move toward more sustainability into the future, it is useful to point out that some brand owners are registering trade marks which are used to indicate their commitment to produce sustainable products. For example, Nike has registered a symbol (EU trade mark number 018242296) to coincide with their “Circularity” concept of creating products that last longer and are designed with the end in mind. It has also registered the word mark MOVE TO ZERO (EU trade mark number 018141344) to symbolise its journey toward zero carbon and zero waste.

The advancement of technology is seen to be a big factor in the growth of sustainability in the fashion industry. For example, 3D printers in fashion are used to supplement parts of a whole design, like embellishments, accessories, and buttons. The advantage of this is in the process of 3D printing, the item is printed layer by layer in its precise shape and form and is not created by “sculpturing” out materials such as rubber or plastic, thus significantly reducing scrap waste.

In Ireland, rights holders can use the provisions of Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 which enables customs authorities in the EU to detain goods which are suspected of infringing an IP right. An application for action must be made by a rights holder using official forms in accordance with the Regulation. Applications for action can either be national or European Union applications. Where goods suspected of infringing an IP right are detected, Irish customs will detain them. They will issue a notice of detention to the importer seeking consent to the destruction of the goods within 10 working days. They will notify the rights holder or its representative of the detention, seeking confirmation within 10 working days whether the goods infringe IP rights. If no response is received from the rights holder by the deadline, the goods will be released. Customs will destroy the detained goods where the rights holder has confirmed in writing within the appropriate time limit that the goods infringe IP rights and agrees to their destruction and the importer gives written confirmation of agreement to their destruction or doesn’t respond within the specified time limit.

How does the brand owner ensure that it is data protection compliant?

If the brand owner operates its own online platform, it is important that it has, at a minimum, terms and conditions, a privacy policy and a cookies policy that comply with applicable data protection laws, and that its staff are appropriately trained to deal with data protection issues.

How could the brand owner minimise online infringement?

This involves a multidisciplinary approach with constant and consistent monitoring, enforcement through online platforms’ takedown and complaints procedures, legal action if necessary, and utilising custom detention procedures.

How does the brand owner ensure they do not fall foul of applicable advertising regulations?

This may involve having to be compliant with the laws and standards of multiple jurisdictions, depending on the nature of the advertising and its reach.