Australia: First Victory For Australian Designer Under The Designs Registration Regime

Last Updated: 20 March 2008
Article by Anthony B. Watson

Prior to 2003, fashion designers could sue copyists of their original designs under copyright law. In the Federal Court decision of Muscat v Le, Justice Finkelstein held that Theresa Muscat owned copyright in her dress making patterns for a pair of V-shaped dance pants. His Honour found that the respondent in copying these dance pants would have produced dress making patterns which infringed Ms Muscat's dress making patterns in breach of her copyright rights.

However, changes in 2003 to the Copyright Act 1968 (Cth) and the introduction of the Designs Act 2003 (Cth) meant that if fashion designers want to protect their original designs then they need to register designs for their garments with IP Australia.

Review had issued a large number of copyright infringement proceedings against copyists prior to the 2003 amendments. Since the amendments to the law on copyright and the introduction of the Designs Act 2003 (Cth), Review introduced a company policy to file design applications for its new designs.

Sometime in May 2006, an employee of Review visited a Charlie Brown store at DFO in Moorabbin and purchased a 'lili' branded dress that was very similar to a Review branded dress which had been designed by Review's in-house design team. Review requested registration and examination for this design with IP Australia and design infringement proceedings were issued in the Federal Court of Australia against Innovative Life Style Investments Pty Ltd and Clothing Outlets Pty Ltd.

Innovative Life Style Investments Pty Ltd is the registered owner of the 'lili' trade mark which is one of the brands belonging to The Discovery Group.

Justice Jessup heard the parties at trial in December 2007 and he has since handed down judgment in this matter. In his judgment, Justice Jessup awarded $7,500 in damages to Review based on damage which it suffered to its reputation due to the existence of the copy 'lili' branded garment.

He also ordered the respondents to pay additional damages in the sum of $10,000 based on the fact that the respondents continued to sell the copy 'lili' garment after they were put on notice of the registered design for the Review garment. His Honour also ordered that the respondent's pay Review's legal costs.

Justice Jessup was not required to make a finding on whether the 'lili' dress complained of infringed the design for the Review dress as the respondents conceded that the 'lili' dress was substantially similar in overall impression to the Review garment.

However, Justice Jessup did find that due to the lack of creation evidence presented by the respondent's at trial and the striking similarities between the two garments, an inference that the 'lili' dress was a copy of the Review dress is justifiable.

Peter Strain, one of the founding directors of Review, said that Review was very pleased with the result.

"Review is committed to protecting its original designs through the design registration regime," Mr Strain said.

"This decision confirms that the Courts are willing to recognise original clothing designs that are created by Australian designers and protected through the Australian Design Registration system.

"It is important for Review to protect its original clothing designs so that its loyal customers are guaranteed that the garments which they purchase from Review stores are not knocked off by other traders. It is also important for Review to issue court proceedings when its designs are copied to ensure that Review's reputation as an innovative designer is retained and upheld."

Tony Watson, a Partner of Middletons who acted for Review said: "Since amendments were made to the copyright laws in Australia which precluded designers from bringing actions for copied garments pursuant to copyright in dress making patterns, Australian designers have been forced to seek protection through the Australian Design Registration system.

"This decision clearly shows that the Courts are prepared to recognise design rights in fashion garments.

"Review takes the copying of its original designs seriously and it currently has three proceedings on foot in the Federal Court of Australia against the brands "Alive Girl', 'Spicy Sugar' and 'Redberry' for infringing a number of its registered designs for innovative garment designs.

"Middletons acts for a number of Australian fashion designers and it has been assisting these clients to register designs for their garments so that action can be brought against traders who copy their original garment designs. Designers need to protect their designs through IP Australia's design registration system otherwise they will have no recourse against copyists of their designs."

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.

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