IP and the Fashion Industry

1 July 2010

Within the fashion industry, the originality of a design is invaluable to a designers reputation and growth within the market, giving a designer that leading edge and constituting an important part of a designer’s intellectual property.  In Australia, original designs can be protected at law and we strongly recommend that designers obtain legal advice on and implement appropriate measures to protect the intellectual property in their designs and brand names.  Amendments to the laws on Copyright and Designs have brought about changes which affect the manner in which designers are able to protect their designs as well as pursue infringers of their designs.  Designers who operate in the retail sector need to register their original designs under the Designs Act 2003 (Cth) ("Act") prior to disclosing them to the public and consider other legal avenues to protect their intellectual property, as copyright protection is, generally speaking, not available other than in limited circumstances.  Designers should also consider registering their brand names as trade marks under the Trade Marks Act 1995 (Cth) in order to protect their right to use their valuable and well known marks.

It may be said that the inherent nature of the fashion industry means that it is unsuited to the measures of protection offered by intellectual property law.  Each season brings with it new trends and designs, often radically different to those which have come before it.  However, within the industry, copying the designs of other designers is still rife and it is no secret that within the fashion industry, some just see “copying” as a part of the fashion business.  Accordingly, whilst expenses will be incurred in seeking protection of a new season's design or artistic creation or brand name, the benefits of any such registration, particularly where any later infringement occurs, outweighs these initial costs.

The decision of the Federal Court in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 illustrates the benefits of design registration under the Act and demonstrates that some designers are keen to stamp out the practice of "copying" within the industry.

In the case, a dress designed in May 2005 by Review Australia Pty Ltd ('Review'), a retailer of women's clothing, was registered under the Act as a design in June 2006.  Innovative Lifestyle Investments Pty Ltd ('Innovative') noticed Review's dress on the market and caused a similar dress to be manufactured and sold (known as the 'Lili' dress).

In June 2006, Review's solicitors wrote to Innovative informing them that Review's design had recently been registered and that the continued sale of the Lili dress would entitle them to damages under the Act.  Despite this, Innovative continued to manufacture and sell the Lili dress.  Consequently, Review brought proceedings against Innovative in the Federal Court arguing infringement of their registered design.

Review sought damages on several grounds, including damages by reference to lost profits and injured reputation.  Review submitted that the presence of the Lili dress in the market damaged their reputation, and that their claim to originality was subsequently lost.

The Court ultimately found that Innovative had infringed Review's intellectual property rights in its registered design.  It was more than willing to acknowledge that a designer may have a certain reputation in the market, which may be diluted by replicas.  Justice Jessup found that the perceived originality of Review's garments was an important aspect of its image in the market.  He stated that if Review "had a reputation, however diffuse, for originality of design, a consumer might well show a particular interest in [Review's] range of products, and be alert to the appearance of new designs from time to time…If garments bearing a substantial similarity to those of the applicant started to appear in other outlets and under other brands, the consumer’s perception of the originality of the applicant’s designs would necessarily be weakened".

The Court was also willing to find that the market presence of the Lili dress brought about a “minor dilution” of Review’s reputation for originality and awarded Review $7,500 in damages.  The fact that Innovative continued to trade in the Lili dress, once having been directly informed in writing of Review's registered design, attracted an award of additional damages in the sum of $10,000.  Innovative was also ordered to pay Review's legal costs.

It is therefore important that designers (and other traders) remain alert to any copying of their products, as well as implement the necessary steps to protect their intellectual property.  Timely protection and effective use of intellectual property rights and laws encourages ongoing originality and creative expression in the marketplace and Meerkin & Apel lawyers is able to assist you with any queries or issues you may have in relation to intellectual property protection as well as the enforcement of your intellectual property rights at law.