Julia Blind

Can you patent clothing?

The Knitted Shoe Battle: Nikevs. Adidas

Dr. Julia Blind

Welcome

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Julia Blind

Patents in Fashion

� Patents on fashion products? They exist.

� Fashion is more than design, création, haute-couture

� Fashion products contains also technical aspects, f. e. zippers

§ Elias Howe received a patent in 1851 for an 'Automatic, Continuous Clothing Closure.'

§ Forty-four years later, Mr. Whitcomb Judson marketed a 'Clasp Locker' a device similar to the 1851 Howe patent.

§ Gideon Sundback increased the number of fastening elements from four per inch to ten or eleven, had two facing-rows of teeth that pulled into a single piece by the slider, and increased the opening for the teeth guided by the slider. The patent for the 'Separable Fastener' was issued in 1917.

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Patents in Fashion

� Patents are increasingly being sought in the textile manufac-turing industry.

� A number of new textile and fibre technologies developed have been patented.

§ W.L. Gore & Associates, Inc.

§ Sympatex Technologies GmbH

� Patents have also been used to protect some functional sports garments.

§ Nike International Ltd.

§ Adidas International Marketing B.V.

§ Speedo International Ltd. Slid

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Nike vs. Adidas

� The two main players fight for their patent rights …

� Feb. 2006: Nike filed a legal complaint against in the U.S. District Court for the Eastern District of Texas. The complaint identifies several top adidas products using adidas’ a3 cushioning system that allegedly infringe upon Nike’s patented SHOX cushioning technology.

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The battle „Nike vs. Adidas“ continued 2012

� Nike filed on 23.08.2012 for a preliminary injunction against Adidas for alleged patent infringement of EP 1 571 938 B1 in Nuremberg.

� This European patent is in Germany in force

� It concerns a shoe, the upper part of which contains fibres of a meltable polymer material arranged in a certain order. → reduction of amount of material used to make the shoe + reduction of costs of manufacturing

� Nike realized this patent with its flyknit-shoe. This shoe debuted in February 2012.

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Patent-in-suit EP 1 571 938 B1

� Claim 1 reads:

An article of footwear having a sole structure and an upper secured to said sole structure, said upper comprising:

§ a fused area of a textile, said fused area being at least partially formed from a plurality of first strands being formed of a first thermoplastic polymer material, and said first strands being fused to said second strands in said fused area; and

§ an unfused area of said textile, said first strands being unfused to said second strands in said unfused areas.

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Patent-in-suit EP 1 571 938 B1

� Claim 19 reads:

A method of manufacturing an upper for an article of footwear, said method comprising the steps of:

§ providing a plurality of strands, at least a first portion of the strands including at least a first thermoplastic polymer material;

§ incorporating the strands into a textile that forms a portion of the upper; and forming a fused area of the textile by fusing at least the first portion of the strands to a second portion of the strands at only selected locations of the upper, while not fusing the first and second portions at other non-selected locations of the upper.

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Subject-matter: adizero primeknit

� subject-matter of that proceeding was the adizero primeknit-shoe of Adidas

� This shoe was presented at the Olympic Games in London with few samples, but Adidas also announced the worldwide launching for autumn 2012.

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The proceeding in Nuremberg, Germany

� 28.08.2012: Court in Nuremberg issued an ex parte preliminary injunction (an ex parte injunction in patent law is in Germany very exceptional)

� 24.09.2012: injunction was served to Adidas

� Adidas filed an appeal against the injunction and applied for a stop of execution

� The court stopped the execution of the injunction with effect of 10.10.2012 (such a stop is in Germany very exceptional)

� 17.10.2012: Adidas filed proceedings for nullity of the patent-in-suit with the German Federal Patent Court, Munich

� 24.10.2012: oral hearing in Nuremberg

� 07.11.2012: injunction was lifted Slid

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Judgment of 07.11.2012

� Court was based on the means of evidence allowed in a injunction proceeding not convinced of a patent infringement

§ Claims 1 e) and f) are not fulfilled

§ Claim 19 d) iii) is not fulfilled

§ Doubts on the validity of the patent-in-suit due to lack of novelty

•In general: infringement court is bound to an issued patent

•But: the infringement court is entitled to take into consideration its assessment of the outcome of the nullity proceeding

� No appeal was filed; no main action proceedings are pending Slid

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Conclusion

Patent protection is an important aspect in the fashion sector!

� Patents are issued for technical inventions of goods or processes

� The main requirement for patent protection is the novelty, anywhere in the world, before the date of filing.

� Particularity In Germany: new technologies can also be protected by (registered) utility models. The substantive requirements for a utility model are the same as for patents, however the utility model is granted without examination of the requirements (novelty, inventive step and industrial applicability) by the German PTO.

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Thank you for your attention!

Dr. Julia Blind

Specially accredited for intellectual property law

KLEINER RechtsanwälteAlexanderstrasse 370184 Stuttgart, Germany

phone: (0711) 601 708-30email: jblind@kleiner-law.comwww.kleiner-law.com

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