Case Studies

An Australian designer with three small retail outlets recently noticed that direct copies of her dress designs were appearing in another retail outlet close by. She wanted to take action against the trader, but was advised that without design protection for her original garment she wouldn’t be able to pursue the matter. She decided to begin filing for registration of her new designs before the styles were released. The other trader continued to copy her designs even though they were warned of the design registrations, but the designer can now enforce her intellectual property rights and is taking court action over the copying.

In the process, the designer learnt that registering and protecting designs from plagiarism by competitors is really important. It also showed that registration is only effective if it’s done before designs are released into the market and before they are shown to wholesale buyers or the media.

Only a registered design that has been examined and certified gives you a legally enforceable right to use your product’s design and prevent others from using your design without your permission. This means it’s important to know the different types of protection available and whether you can rely on a range of protection including designs and trade marks to protect a range of features of your products identity.

In 2002, a new Australian streetwear label registered a business name and started trading. The business grew rapidly and within a few years was attracting significant international attention, particularly in the US where a number of prestigious retail outlets began stocking their clothes.

Unknown to the Australian company, there was also a US footwear company with a very similar name. This company had registered its name as a trade mark in the US, as well as in Australia and a number of other countries around the world. Unfortunately the US company had registered its trade marks two years earlier and successfully sued the Australian company for trade mark infringement. The Australian company was forced to change its name to avoid any further infringement as a result.

This situation highlights the importance of conducting thorough searches on the availability of a trade mark, both in Australia and potential overseas export markets, before launching a brand. This early step can help ensure the mark has potential to grow internationally and that a company’s marketing and advertising investments are not lost.’

The importance of having registered trade marks in Australia has been experienced by a number of international brands, such as Diesel, who have found goods, which, while not copies of their styles, have featured their trade marks on items such as jeans, t-shirts and sunglasses. Having registered trade marks that protect all of your goods and services has allowed the brand owners to not only seize goods from traders dealing in the fake goods, but also to obtain court orders to allow searches of premises where the goods are being made or imported to, to seize products and documents relating to how many goods have been sold, and where they are coming from. This information is invaluable to the brand owner who has then been able to identify other traders dealing in such goods.

Trade marks other than just brand names or logos should also be considered by designers. A number of denim designers, such as Bettina Liano and Levis, have registered the distinctive pocket stitching on their garments as trade marks. Other distinctive features may also gain trade mark protection. The Burberry check for example has been registered as a trade mark, as has the red stripe on the heel part of a Prada shoe sole. While these other types of marks may be registered, it is through the use of them as trade marks that companies are able to distinguish their goods from those of other traders.