When one design looks much like another, what are your rights?

Posted by Rachel Cox and Peter Kearney

From 25-31 August, Brisbane will host the Mercedes-Benz Fashion Festival. Emerging and established designers and well-known Australian labels will showcase their latest collections. In an industry where one of the key drivers is to capitalise on popular trends and have the 'it' item, copycat fashion is rife. In these circumstances, how can designers and fashion labels protect their designs and brand from copycats?

Registered designs

The Designs Act 2003 allows for the protection of the overall appearance of the product resulting from one or more visual features ie shape, configuration, pattern or ornamentation. For example, this could include ruffles, pleating or a signature fabric pattern. To be registrable, a design must be new and distinctive compared to other designs. The design must not be identical or give a substantially similar impression when compared with other designs. As such, prior publication of a design (photo spreads in magazines, runway shows) can affect whether a design is registrable.

It is important to keep a design confidential until an application is made for a registered design. The process to obtain a fully registered and enforceable design involves two general steps: registration and certification.

1. Registration: The applicant for a registered design has six months in which to decide whether to seek a registered design. Provided that an application complies with formal requirements, registration is usually 'automatic'.
2. Certification is a rigorous process which can be instigated by the design owner or a third party. It is during this process that the design is assessed against the 'new and distinctive' and 'not substantially similar' criteria. If the criteria are satisfied, the registration of the design will stand and the design will be certified. However, if the design is shown to be not new and distinctive or is substantially similar to another design, the registration of the design may be revoked.

Registration of a design gives the registered holder an exclusive right to use or licence use of the design. Certification of the design enables the design owner to undertake infringement proceedings if necessary to prevent others from using the design without their permission. The initial term of registration of the design is 5 years from the date the application was filed (with an option to renew the registration for a subsequent term of 5 years).

Practicalities

The full certification process can be time-consuming and costly and it is not guaranteed that a design will pass certification. It can be particularly difficult for emerging designers or small players to register every design they create for a short season.

Designers should keep in mind that the Designs Act enables applicants to file an application containing several designs of the same classification class. Once an application for a registered design is filed, the applicant has six months to decide whether to register any of the designs. This means that if one or more styles are copied, the applicant need only register the infringed designs. Given the cyclical nature of the fashion industry, this may provide adequate protection, particularly where designs are trend focussed and unlikely to be used for an extended period of time.

If an application does proceed to registration, it can be beneficial to deter infringement by placing a registered design notice on the swing tag or packaging.

Other methods of protection

Design registration generally only protects the shape and configuration of designs. These factors are not necessarily the most important component of every design and other methods of protection relevant to the fashion industry can include:

• copyright to protect photos, graphics, logos and swing tickets as 'artistic works';
• trade marks to protect branding and names and unique signature elements of designs like fabric patterns and buckles; and
• patents to protect inventions and innovations.