In brief - Design and trade mark registration grants owners exclusive rights
Australian law can protect designers' intellectual property, but designers should take the necessary steps to ensure that their brands and designs are protected. These steps generally include registering their designs and their brands and trade marks. Reliance on copyright laws alone may not provide sufficient protection.
Knock-offs can affect sales and value of the design
The Council of Textile and Fashion Industries of Australia estimates that the entire fashion and design industry (including its design, wholesaling, manufacture and retail components) contributes approximately $27.5 billion to the national economy.
Product designers realise that an inability to protect designs, brands, trade marks and other intellectual property ("designer IP") from unauthorised copies and cheaper knock-offs damages them in terms of both lost sales and loss of value to their new work, existing portfolio or inventory.
Intellectual property should be registered in all relevant markets
Australian law provides protections to designers through registration that can grant them exclusive rights to their designs, brands and trademarks in Australia.
It is important to note that protection granted in Australia will not provide protection overseas. Owners of valuable designer IP are well advised to register their designer IP in all relevant commercial markets.
Designer IP is usually protected in Australia under:
- design registration
- trade mark registration
- consumer protection legislation, including "passing off" actions
New and distinctive designs may be registered in Australia
Design registration protects designs which have an industrial or commercial use. A registered design gives the owner an exclusive right to use it and to prevent others from using it without the owner's permission.
Design registration is possible in Australia if the design is both:
- "new" - not identical to any design previously disclosed anywhere in the world (including on the internet), nor any design previously used in Australia, and
- "distinctive" - not substantially similar in overall impression to any design previously published anywhere in the world (including on the internet), nor any design previously used in Australia
Designers must consider registration before they begin marketing or sharing any aspects of the product. If a designer has already publicly disclosed his or her design (e.g. exhibited, sold copies, or posted it on a website), protecting the design may not be possible as it may not be considered to be new and distinctive at the time of examination.
Trade mark registration does not protect the design
A trade mark is a way of identifying a unique product or service. There is a difference between trade marks and business, company and domain names.
A trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these that is applied to a product or a service used commercially.
Trade mark registration extends only to the trademark and not the design. This can leave designers who only utilise trade mark registration vulnerable to others copying their design.
Copyright may not protect designs without design registration
Copyright protection is automatic in Australia and protects the original expression of ideas, not the ideas themselves. Copyright applies to the exact expression, i.e. the exact words in a document.
Copyright arises the moment an idea or creative concept is documented. Because it is automatic in Australia, there is no official registry or application process for copyright protection and it is without cost to obtain.
Copyright protection gives the creator (or creator's employer) exclusive rights in regard to the work and its further use. Copyright rights vary based on the work. For example, the rights for artistic works are different from those for literary and musical works.
Copyright doesn't protect designers against independent creation of a similar work. Copyright will not generally protect a design that could have been subject to a design registration that was not pursued or which failed. Fashion designers are legally expected to make use of the more relevant design protections, rather than relying on the more general copyright protection.
Consumer protection laws may protect against misleading or deceptive conduct
Consumer protection and other legislation in Australia can also be used to stop false, misleading and deceptive activities in the marketplace. For example, "passing off" actions have been used when a designer has attempted to create unauthorised copies, or goods that are substantially similar to another's, that wrongfully utilise the reputation and goodwill that another individual or fashion designer has developed.
As an example, high-profile celebrity Rihanna successfully claimed that a designer, who had paid for rights to an image of her in limited context, could not still utilise this image in a fashion design without her further approval, as by doing so, the designer was unfairly profiting from the reputation she had developed.
While it may be easy for Rihanna or a high-profile fashion designer to prove a market reputation, it can be difficult for fashion designers who have not yet established a recognised brand or design style to prove their reputation in the market, and then proceed to prove that someone else was unfairly profiting from it.
Provisions of Australian Consumer Law that relate to misleading and deceptive conduct may be used where another designer's work is likely to mislead a consumer into believing that there was a connection between one fashion designer and another. An example of this sort of action would be a designer who attempted to mislead consumers into believing that its portfolio of menswear was the same as, or similar to, another better known designer when this connection did not actually exist.
Signed agreements and commercial agreements will also help designers to protect their IP
In addition to the protections set out above, designers should make sure that all of their employees, contractors and service providers associated with the creation process have agreed in writing that their contribution to the design belongs to the designer.
Designers should also use commercial agreements with manufacturers and wholesale and retail distributors to ensure that each will respect their designer IP rights and bring any known or suspected violations to their attention.
This is commentary published by Colin Biggers & Paisley for general information purposes only. This should not be relied on as specific advice. You should seek your own legal and other advice for any question, or for any specific situation or proposal, before making any final decision. The content also is subject to change. A person listed may not be admitted as a lawyer in all States and Territories. © Colin Biggers & Paisley, Australia 2021.