We’re joined by Tim Golder and Miriam Stiel, both Partners in the Intellectual Property team at Allens and joining us from Melbourne.  Miriam and Tim welcome back to BRR Media.

Thanks Kate.

Yeah thank you Kate.

Well Tim Fashion Weeks almost upon us and certainly many fashion designers will be conscious of protecting the design that goes into their clothes.  Does copyright offer adequate protection for fashion designers against copying?

Well Kate the short answer to your questions is no.  Fashion designers would wish that the answer was yes because copyright doesn’t cost anything, the moment they design something its automatically the subject of copyright so they’ve got no issues about paying registration fees, but unfortunately although all design drawings are protected as copyright there’s an intricate process under our legislation where basically the Government is saying if you’ve got an industrial design you need to go and register it under the Designs Act and if you don’t do that then effectively you can’t enforce your copyright.  So that for the most part will apply to fashion designers.  There are a few exceptions, if you’ve got a two dimensional print, for example if you’ve just got a print that you want to put on the front of an existing tee shirt and there’s no three dimensional aspect to it, then that will be still protected by copyright.  And there was a case a few years ago where a crowd called Elwood was able to succeed in suing Cotton On who had infringed the copyright in the print that they’d applied to the front of tee shirts.  There’s also some exceptions for what they call works of artistic craftsmanship and notwithstanding some claims many years ago in relation to the very distinctive Kogee designs that they are works of artistic craftsmanship fundamentally that’s not going to apply in the fashion industry.  So unless you are dealing specifically with a two dimensional print copyright is not going to be of assistance.

Tim you mentioned that first designs, there needs to be a desired registration in place, but looking at the fact that any given fashion house may have 100 garments in a range, and they’re not necessarily going to know which one of those garments is going to be successful and therefore worthy of protection, given that design applications have to be filed before the garments are offered for sale, doesn’t it make the cost of design registration prohibitive?

It can, but there is a way around it, that I’ll mention in a second.  The Designs Act changed in 2004 in an effort to, amongst other things, get designers more interested in registering their designs; previously it really didn’t feature at all in the fashion industry.  There’s now a bit of a more streamlined process where you take various steps and you don’t have to take the final fairly costly step unless and until you’ve identified an infringer.  But there still is the issue that you have to make your application of your design before you publish your design.  So if you’ve got say 80 or 100 garments in a range, if you were to file separate applications for each of those you’re looking at $200 per application, and that is prohibitive, for most designers.  But the way that we can get around it is this, it is possible and we do this on behalf of clients to file in one application all of the designs; so all the designs for garments can all be filed in one application with one fee of $200.  You’ve then got six months to request for that design to be registered, so you’ve got a period of time where you can see what’s happening in the market, you’ve actually got your priority date, so let’s say we want to file, we’ve got a new season coming out on 1 September, so let’s say we file one application in the last week of August, we’ve staked our claim in terms of our priorities so we don’t have any problems about prior publication.  And then we’ve got six months to see well which of these 80 designs actually takes off, which are the ones that we really want to put some money into.  And at the end of that period you request your registration, the Designs Office says well this application’s not appropriate it’s got 80 designs not one, I need you to split it out, and at that point you can say well these are the 15 garments that I’m still interested in, these are the ones I’m prepared to pay my $200 per design plus your legal fees to procure registration, so it gives you that capacity to pick and choose once you’ve got into the marketplace.  The downside caters unless you go to that registration stage, and go to another stage where you get an actual certificate to say that the design is validly registered and has been properly examined, you’re not in a position then to actually sue for infringement, but at least you haven’t spent money on designs that actually haven’t been successful in the market.

Yeah certainly.  Well Miriam I’d like to bring you in here is copyright and design the only avenues for protection for fashion designers?

No Kate, trademarks are also very important in this area.  I think people traditionally think of a trade mark as a brand, so for a fashion designer it might be their name or the particular label that they’ve given to their fashion house.  But it’s broader than that, it can also include a colour, so you think of the Christian Louis Vuitton’s famous red soled shoes, also a scent or an aspect of packaging, among a whole range of other things that can be protected as trade marks.  So trade marks can I think form a really important part of a fashion designer’s commercial success, because I think it’s safe to say that often it’s the label rather than the design of the garment itself which may motivate people to purchase a particular brand, and again as Tim was talking about the process of registration you don’t need to register in order to be able to enforce it, but it certainly does make the enforcement process far more efficient, so registering those trade marks is really crucial.

Yeah, and Miriam just finally can you give us some examples of how trade mark rights have been infringed in the fashion context?

Yeah well probably the most egregious form of infringement involves counterfeiting, so where the whole product, including the label and the logo and the packaging are copied so they’re actually an exact replica of the genuine item, and that happens quite regularly and people take action against counterfeit goods.  In the US earlier this year Burberry was awarded I think over $100 million against Chinese companies that were involved in counterfeiting some of their products.  But there are also a lot of cases where a competitor really adopts a brand or a logo which isn’t an exact replica of the original trade mark, but it comes close to it, so again looking at the US recently Gucci was successful in a case against Guess, where Guess had used the sort of the Gucci G logo and a variation of that on some products and the court found that that constituted an infringement and Gucci obtained a significant damages award from Guess.  Closer to home a few months ago the Australian Trade Marks Office refused to register a trade mark which included a logo of a polo player on the back of a horse and perhaps unsurprisingly the polo Ralph Lauren company opposed that trade mark on the basis that the logo was deceptively similar to its horse and polo player logo and the Trade Marks Examiner agreed with that.  So I think the lesson from these cases, for people in the fashion world is to make sure that you vigilantly monitor your competitors’ conduct and take steps to enforce your rights when you consider that they’re being infringed.  But also on the other side if you’re developing a new brand or a logo it’s important to make sure that you check what other people are doing and what’s on the trade marks register to avoid coming against an infringement claim that might be brought against you.

Well certainly some great tips for fashion designers looking to protect their designs and also their brands.  Tim and Miriam thank you so much for joining me today.

Was a pleasure.

Pleasure indeed.

That was Tim Golder and Miriam Stiel both Partners in the Intellectual Property Group at Allens.  Listeners if you have any questions for either Miriam or Tim send them through using the panel on your screen or otherwise via email to law@brrmedia.com.