The assistance of Tina Nguyen, Paralegal, in writing this article is appreciated.
As part of a joint initiative, the Australian Fashion Council, Council of Textile and Fashion Industries of Australia and IP Australia (the Australian Government Agency responsible for administering intellectual property rights) have launched 'Fashion Rules', which is a guide to intellectual property for the Australian clothing and fashion design industry.
Fashion Rules acts as an important tool for Australian designers, as it highlights awareness of intellectual property rights within the fashion industry to ensure that designers are better equipped to protect intellectual property (IP) rights associated with their designs, including labels or brands, distinctive fabric patterns and packaging.
The guide provides a specific overview of the four primary IP rights in Australia (designs, trade marks, patents and copyright) in respect of the clothing and fashion industry. Further, the guide also provides useful information for those designers wishing to expand their business operations internationally.
Outlined below is a summary of specific information in respect of the four primary IP rights, which are available to Australian designers to protect their designs.
Designs
In Australia, design registration is the primary IP protection available for clothing designs. A design is the visual appearance of a product, such as a skirt with ruffles or the cut or decorative pattern of a shirt. A registered design provides designers with the legal right to use, sell or license products made in accordance with the registered design and prevent others from using or copying the design without their permission. A design registration gives designers protection for the visual appearance of the product, not the feel, material or function of a product.
In order for a design to be registered, the design must be new and distinctive, meaning it cannot be the same as or similar to designs produced previously either by another party or the designer themselves (even a sketch of a particular item of clothing).
Australian artist Ken Done was able to register pillowcases and quilt covers featuring his unique artwork as a registered design because they were shown to be new and distinctive. Similarly, while a designer would not be able to register the feel, material or function of jeans, Australian designers Sass and Bide were able to register a unique design for detailed straight leg jeans featuring particular designs of the pockets.
Design registration should be sought by designers wishing to mass produce or make multiple copies of products.
A designer must not disclose their design prior to lodging a design application, as disclosure may prevent registerability.
Trade Marks
Designers can use trade mark law to protect not only logos and brand names, but also other distinct features of a product. For example, Bettina Liano has registered the distinctive pocket stitching on her garments as a trade mark, while British fashion house Burberry holds trade mark rights in both the trade mark "Burberry" and the Burberry check pattern. Burberry has enforced its trade marks in many jurisdictions against counterfeits including a recent action in the US District Court.
Copyright
Copyright law provides limited protection for a designer's designs. Copyright does not encompass ideas, information, styles, techniques and names; it may however include original artistic works such as sketches and patterns. However, this protection is limited as copyright law will not protect the "reverse engineering" of a garment.
One-off fashion designs, such as an haute couture item and jewellery items may be protected as copyright works if they can be shown to be "works of artistic craftsmanship". However, if you intend to mass-produce, make multiple copies of the items or use the items on a commercial scale, you should rely on design law rather than copyright law.
Copyright And Designs Overlap
Fashion Rules refers to the overlap between copyright and registered design protection. This is a complicated principle which reflects the policy behind the legal regime which establishes registered designs. Copyright in a paper pattern for a design; say a bikini design, may be lost once bikinis are made to that design unless the relevant bikini design is the subject of a registered design.
In other words, unless a clothing pattern is the subject of a registered design, third parties may be able to copy that pattern without infringing the designer's IP rights.
Patents
Designers may be able to patent new, inventive and useful devices. Artistic creations cannot be patented and therefore patents are not widely adopted by designers. However inventions by Buck Weimer and CSIRO which control odour and body temperature respectively in garments have been successfully patented.
International Protection
The publication of the guide corresponds with the push by designers' internationally for a more uniform approach to IP in order to protect designers' rights. There is no blanket method currently for the world-wide protection of designs despite the existence of an International Convention for the Protection of Industrial Property which currently has 100 signatories, including Australia. Information about IP in the international fashion industry is detailed in the guide for the benefit of designers wishing to expand their business internationally.
The launch of Fashion Rules coincides with international IP-related developments in the fashion industry, including the recent introduction of the proposed Design Piracy Prohibition Act in the US Senate on 2 August 2007.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.