OPINION: Tim O’Callaghan – design right protection

Tim O’Callaghan is a partner in Druces LLP, specialising in advice to the fashion and luxury goods business. In this month’s column, he talks about the basics of design right protection in the lingerie industry.

As connoisseurs of courtroom bikini battles are getting ready to book their ringside seats for the latest industry spat, it is worth reminding readers of the basics of design right protection in the industry.

This time, the rumpus concerns US swimwear designer Lisa Marie Fernandez accusing Lara Bingle and two other Australian fashion houses of allegedly copying her swimsuit designs. Fernandez views the alleged copying as “shameless” but many of my readers will know better – it almost seems like standard industry practice.

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Copying in the fashion industry is one of life’s certitudes and, whilst some designers may derive a frisson of satisfaction from the experience of being copied for the first time, that warm glow soon disappears with the thought of the sales revenue the copier will be enjoying from the creative work of the designer.

But what can be done to protect your signature designs from copying? Lingerie designers are increasingly relying on their legal rights, and specifically design right protection, to stand up to the copiers.

More often than not, the resolution of design right disputes do not end up in the press. Settlements are made, cheques are written and confidentiality provisions adhered to.

Prior to the advent of European design protection in its various forms, designers would generally have to rely on copyright infringement as the only possible claim. This inevitably limited the scope of any claim they could bring, as copyright is something of a blunt instrument. In fact, if a competitor made and sold an exact copy of your uniquely appointed brassiere, the law of copyright is likely to be as much use to you as a Victorian Bathing Machine to Pamela Anderson.

A far more effective weapon in your legal arsenal is design right protection, something that, in my experience, few designers know a great deal about and even fewer (until recently) take advantage of.

So what form does design right protection take and how can designers make the most of it?

You may rely on one or more of the following:
1. UK unregistered design rights;
2. Unregistered community design right;
3. UK registered design;
4. Registered designs at European community level.

The first two forms of right exist once you have created a design that is capable of registration. You need do nothing beyond creating the design to acquire the right.

The second two rights require you to actually apply for and obtain registration. There are also slight differences in what each of the rights protects and how long the protection lasts. Unregistered community design rights last for three years and the unregistered UK design right for 10 years, whereas registered designs can give what are effectively monopoly rights for 25 years.

It is important to appreciate that for any of these protections to apply, the design must be original and cannot be commonplace. A basic pair of trunks, for example, would not be capable of protection.

The unregistered UK right protects the design of any aspect of the shape of the registrable design. But, the unregistered community design right goes further, giving protection to the colours, shape, materials and embellishments of the garment.

As the two forms of registered design give substantially the same protection as their unregistered counterpart, many designers are understandably prompted to ask why they should bother to go for registration at all, and why go to the cost of applying.

The answer is, there is no stronger form of legal protection for your designs than registered design right. If ever you find someone has copied your designs, having a registered design number and certificate for your lawyer to wave under their nose will often be the beginning and end of any infringement action.

It also has the great advantage of helping to settle disputes almost as soon as they arise by discouraging the copier from going to the expense of defending a claim. That is not to say that you cannot succeed in bringing action on unregistered design right; you can, but you would actually have to prove on the balance of probabilities that not only does the infringers garment look similar; but also that it was a copy of your own.

There is an additional and less obvious benefit to registration; having a portfolio of registered designs makes your business more attractive to investors and potential purchasers, they like to see actual proof, in the form of design registration certificates, of the business’s intellectual property assets.

Registering your designs and enforcing those rights will also result in your brand acquiring a formidable reputation in the marketplace; no bad thing in these days when, notoriously, factories can make knock-off copies of designs within a fortnight of the originals appearing on the catwalk.

Yes, registering designs does cost, but as many intimate apparel brands are discovering; it can be worth it in the long run.




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