Ask a question | Back to Q & A
Q & A
Can the manufacturer 'reverse engineer' legally?
As a swimwear designer you may create your own fabric prints to manufacture your swimwear designs. These fabric prints are protected by copyright law as artistic works and need not be registered to be protected. If a third party reproduced your fabric prints or substantially reproduced your fabric prints then this third party will have infringed your copyright rights in the fabric print if the reproduction is undertaken without your consent.
However, as a swimwear designer you may also create patterns for the manufacture of your swimwear garments. In order to protect the swimwear designs you will need to seek design protection of these designs through the design registration system if they are new designs. It is important that design applications for your swimwear designs are filed before you release your swimwear garments into the marketplace or before you show your swimwear designs to any third party outside of your business. If you do not file design applications before you release your swimwear garments or before you show your designs to a third party outside your business then you will invalidate your own design application. If you fail to protect your swimwear designs through the Australian design protection system then a third party including your garment manufacturer can 'reverse engineer' your garment designs and sell them to a third party and you will have no legal recourse against the persons who 'reverse engineered' your garment designs. However, if you fail to file design applications for your garment designs and they are "reverse engineered" by your manufacturer then you still my be able to bring an action against your manufacturer if you entered into a contract with your manufacturer in which it was agreed that your manufacturer would not copy or sell your designs to a third party.
Can the manufacturer outline the pattern from my cut fabric and reproduce the same garment under a different name legally?
As stated above, if you do not register your new designs for your swimwear garment designs then your manufacturer can reproduce your swimwear garment designs and sell them to a third party and you will have no legal basis to sue your manufacturer. However, if you enter into an agreement with your manufacturer in which it is agreed that your manufacturer will not copy or reproduce your garment designs and your manufacturer does then you may have a case against your manufacturer based on breach of contract.
What if the manufacturer only changes the colour? What if the manufacturer changes small details in the shape? How much needs to be changed in order to avoid infringement?
The test for determining whether a registered design has been infringed is whether the swimwear product embodies a design that is identical to or substantially similar in overall impression to the registered design. In making an assessment as to whether the the swimwear product is substantially similar in overall impression to the registered design more weight is to be given to the similarities as opposed to the differences. However, this is a question of fact to be considered by the Court. It is unlikely that, and recent cases have confirmed that, changes in colour or mere changes to the shape of a garment will be enough to avoid a finding of design infringement. Changes to colour and shape are matters that the court will consider in assessing whether a registered design has been infringed however whether these changes are enough to avoid a finding of infringement need to be considered on a case by case basis.
How do I make sure that my designs are not the same as another designers?
If you intend on seeking registration of your design in Australia, you could search the Australian Design register and also designs in the public domain to ensure that your design is new and distinctive. This can assist you in understanding the scope of other designs available in the marketplace at the time and therefore assess the distinctiveness of your swimwear designs.
However, you can conduct a search of the Australian Design Register to see whether there are any design registrations for swimwear designs. This can assist you in seeing whether there are any registered designs for swimwear that you may infringe should you create a similar swimwear design.
In addition, if you intend to export or manufacture and sell swimwear overseas, you may wish to search the Design Register in other countries. While the following links may be useful, not every country has a publicly available and easy to use database.
Ask a question | Back to Q & A
