Birkenstocks – iconic but not art

Like many well known brands, Birkenstock has faced its ups and downs in the fashion stakes, but its recent surge in popularity has coincided with a case before the German courts where the producer of the distinctive cork soled sandals argued that Birkenstocks were works of art and were, therefore, protected by copyright.

The claim arose in the context of a court action by Birkenstock to prevent three competing retailers from selling similar sandals. The distinctive Birkenstock sandal, the company argued, was protected by copyright and Birkenstock, therefore, had the exclusive right to use the design and the right to prevent others using the same or a highly similar design.

Unfortunately for Birkenstock, the German court ruled that copyright applied to works of art rather than items where practical design was the predominant feature. As the sandals in question were  constrained by the technical requirements of the footwear, the level of creative individuality required for works of art to acquire copyright protection was not reached.

While the ruling was issued by the German Federal Court of Justice, the decision covers many of the same issues which often arise in the UK when considering brand protection. It also highlights an issue which is very commonly faced by businesses and other organisations who know that they have developed a good product which they have invested significant amounts of time and money in developing, but are unclear as to which protections apply.

It can often be relatively easy to identify whether trading names and logos, paintings, photographs, music and written works are protected by copyright or could be registered as a trade mark, but some items and some processes can be much more difficult to fit firmly into any one of the widely recognised “intellectual property rights”. As this case highlighted, it can be difficult to identify where one right ends and another begins – such as the interaction between design rights and copyright (both recognised IP rights in the UK). The interplay between these rights can make matters confusing for business where the product does not clearly fall into one category of IP right, but it is clearly a business asset that may be of considerable value to the owner.

Owning a registered IP right, whether it be a trade mark, design right or patent, can make life considerably easier when it comes to enforcement of rights and preventing competitors taking advantage of the time, money and effort which has been investing in building up a brand or product. Even where registration of an IP right is not possible, it may still be possible to prevent a competitor from selling products or services which take advantage of a company’s reputation where “passing off” can be established – a right which enables business to prevent competitors from taking unfair advantage of well established brands.

Confidentiality or non-disclosure agreements and restrictive covenants can also assist in ensuring that disclosure of commercially sensitive information and businesses practices is limited and that former employees or contractors are restricted in the ways in which they can compete with the business.

Businesses are faced with a myriad of financial, logistical and regulatory issues in bringing new products and services to market and it is all too easy to overlook IP protection. Often, it only becomes an issue once infringement of IP rights has taken place, but considering what protection can be put in place at an early stage can often avoid higher costs in the long-run and avoid the need for litigation.

We would recommend that all businesses take some time to consider their IP assets and how they may protect them.

BTO’s IP, Tech & Data Protection Team is here to help with these issues.

Lynn Richmond, Partner & Accredited Specialist in IP

lyr@bto.co.uk

0131 222 2934