What happened? 

Recently, Swedish fashion behemoth, H&M, initiated a copyright infringement lawsuit against the Chinese fast-fashion brand, Shein, in Hong Kong. H&M alleges that Shein has copied their designs and sold infringing goods in Hong Kong. H&M is seeking undisclosed damages, but perhaps more importantly, an injunction to halt Shein’s alleged infringement of its intellectual property.  

Prior to this, Shein had been accused of intellectual property infringement by Levi Strauss & Co. (2018), Dr. Martens (2021), Ralph Lauren (2021), and even the government of Mexico (2022) for using traditional Mayan designs without permission. Artists and small fashion stores have also alleged that Shein copied their designs. In 2021, an independent designer, Mariama Diallo, posted pictures on Twitter in a bid to prove Shein copied her designs. 

Netizens were upset that Shein was copying designs from independent artists, small fashion brands, and established companies without permission and took to Twitter and TikTok to protest their dissatisfaction with Shein's practices. They used the hashtag #boycottShein, to encourage others to consider the ethical implications of their shopping choices. 

Fashion law sits at the crossroads of two distinct IP regimes, namely, registered designs and the copyright. These headlines were peculiar to us because the textbook cause of action would have been an infringement of registered designs not copyright. 

So, how come (assumingly well advised) H&M sued for copyright infringement, and in Hong Kong? 

Why sue for copyright infringement in Hong Kong?  

Having had a friendly (and geeky) legal discussion with our colleagues in Hong Kong, we realised the answer.  

Unlike in Singapore, where a designer will lose copyright in his/her work if he/she makes more than 50 reproductions of the same item, under Hong Kong law, an artistic work that is commercially exploited but not registered as a design would still be protected by copyright, although for a shorter period (15 years instead of life of the author plus 50 years). 

Differences between Singapore and Hong Kong Laws 

With respect to this overlap between registered designs and copyright, these two jurisdictions have different IP protection mechanisms even though the overarching philosophies for protection are arguably similar – to forge an incentive for creativity and innovation. 

Singapore 

In Singapore, the registered designs regime covers the features of a shape, configuration, colours, pattern or ornament applied to any article (or non-physical product) that give the product its appearance. In other words, the regime protects the external appearance of the article or non-physical product – where the designs are registered.  

A design necessarily involves some sort of creativity and artistic input, which would typically entitle the said design to copyright protection as an artistic work. This results in a significant overlap between these two distinct intellectual property rights. This overlap has been recognised by the legislators and is so pronounced that the entirety of Part 5, Division 14 of the Copyright Act as well as Section 9 of the Registered Designs Act is dedicated to dealing with it.  

For brevity, here are three differences between copyright and registered designs in Singapore:

1. Copyright subsists in a work regardless of registration and lasts for life of the creator plus 70 years, while a design must be registered to enjoy 15 years of protection.  

2. Copyright only protects against copying, whereas a registered design is protected even against an independent creation if that creation results in a design which is not substantially different from the registered design.  

3. The burden of proof is lower in a registered designs case – for registered designs, the plaintiff need only prove that the allegedly infringing design is not substantially different, while for copyright, the plaintiff must prove that the allegedly infringing work is substantially similar.  

In Singapore, copyright protection does not extend to an artistic work that could have been registered as a design but was not, and, has been used in relation to more than 50 manufactured products (See Section 274, Singapore Copyright Act).  

Hong Kong 

In Hong Kong, copyright lasts for a shorter duration (life of the author plus 50 years). Registered designs, however, last for a longer (compared to Singapore) duration of 25 years.   

When it comes to the overlap between registered designs and copyright, there is no equivalent of Section 274, SCA, under Hong Kong copyright law. This means that copyright may subsist in the 2-dimensional drawings, a 3-dimensional product design, or even may be used for mass production.  

That being said, it may render the registered designs regime nugatory if Hong Kong law permits protection for designs that could have been registered under copyright law for a longer duration than the 25 years allowed for registered designs. Therefore, 87(3) of the Hong Kong Copyright Ordinance provides that an unregistered design may be copied after a period of 15 years from end of the calendar year when the designs were first marketed, as perhaps a compromise between the competing considerations.  

In other words, in Hong Kong, a design that could have been registered would still enjoy copyright protection but for a much shorter period of 15 years instead of life of the author plus 50 years.  

Analysis  

Experts have suggested that the purpose of this rule is to encourage product designers to register their designs. Professor Ng-Loy Wee Loon, S.C. commented that this was to avoid giving them concurrent or dual protection under two regimes.

Singapore law seeks to achieve this purpose by prescribing a harsh disincentive against failing to register one’s designs – register or lose protection forever. Hong Kong on the other hand, takes a softer approach by permitting copyright to protect unregistered designs, albeit for a shorter duration of 15 years. 

Perhaps H&M did not register their fast-fashion designs and that’s why they chose to commence copyright proceedings in Hong Kong. Ultimately, the law of the land is what matters, and in Singapore, if you have a Sheiny new design that you want to mass produce and sell, we highly recommend registering it.  

Practically though, not many fashion brands, especially fast-fashion brands, actually register their designs. This is because it is usually not commercially viable for such fast-fashion brands to protect their IP through registration. By their very nature, fast-fashion brands prioritise speed in bringing new designs to the market. Registering designs can involve costly and time-consuming processes, which are unlikely to be able to keep up with the lifecycle of a fashion trend. By the time a design is registered, and protection is obtained, the trend might have already passed, making the registration less valuable. Conversely, this leaves fast-fashion designs vulnerable to imitators.

In light of the commercial realities in fast-fashion, the Singapore IP regime could consider adopting a softer (Hong Kong-like) approach to create incentives for fast-fashion brands and independent labels. In the meantime, if H&M can’t stop Shein in Singapore, all we can do is #boycottShein. That being said, if it is not legally wrong to copy, would it still be morally wrong?

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We hope you enjoyed reading this article as much as we did in writing it. If you have any further queries about copyright, registered designs or any other IP matters in Singapore, do feel free to reach out to us. Also, if you would like to receive our content updates in a timely manner, follow us on your favourite social platforms.

Disclaimer 

This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. That.Legal LLC represents neither party in this dispute and is not privy to any confidential information pertaining to the parties. All facts stated herein are compiled from publicly available sources. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of That.Legal LLC accepts or assumes responsibility, or has any liability, to any person in respect of this article.