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Whether you realise it or not, creative industries like design and fashion, are built entirely on intellectual property (think brand and design). 

Making informed decisions about intellectual property early-on maximises commercial opportunities and helps businesses drive a proactive strategy (rather than reactive).  

Fast versus forever 

Fast fashion follows fashion trends which change rapidly and perpetuate the cycle of moving clothing designs from catwalk to store. Historically, designers believed that fast-paced fashion designs did not justify protection via registerable intellectual property rights. However, with the growing urgency towards balancing commercial gains with environmental impact, there has been a shift towards sustainable and timeless fashion. A rethink of intellectual property rights for fashion designers is therefore warranted.

Timeless fashion and innovative design is always on trend; think Burberry’s trench coat or Dolce & Gabbana’s body-con dresses. Protecting what is valuable in the timeless fashion and innovative design can be commercially worthwhile. Some creative endeavours, especially those starting out, are built entirely around one or two innovative designs. Such endeavours can benefit from careful consideration of registrable intellectual property rights before the designs hit runways or stores.

The fashionable take on IP 

Registrable intellectual property rights (e.g., designs, patents) are commonly viewed in the fashion and design industry as a costly exercise with little commercial benefit. This opinion may hold for fast fashion, but for timeless fashion and innovative design, the approach can erode brand value and create missed opportunities. Registrable rights are often an afterthought. With designs and patents, it pays to be proactive by considering a strategic intellectual property approach at the outset. This can give a business the edge it needs to distinguish itself in the market, while protecting the investment made in developing the design(s).

An excellent example is State of Escape - an Australian business whose reputation rests on a flagship product called the Escape Bag.

Toting the value of IP protection 

The Escape Bag is a simple, arguably timeless unique design; a perforated neoprene tote bag with sailing rope handles and accents. State of Escape has encountered a number of copycats and is open about its challenges.[1] State of Escape also seeks to enforce its IP rights. Recently, State of Escape pursued a potential infringer in the Australian Federal Court. Among other consumer protection/passing off laws, State of Escape relied on copyright. No registered designs had been filed to protect the Escape Bag design before the bag was publicly disclosed. 

In Australia, dual protection under copyright and design law is not permitted. Further, copyright protection is lost once a three-dimensional design embodying the artistic work is mass-produced or when a design is filed. State of Escape’s totes had been mass-produced, so they appeared to lose copyright. However, they sought to rely on a narrow exception to this rule which is made for “works of artistic craftsmanship”.

In the Australian Federal Court’s recent decision, the totes were not held to be “works of artistic craftsmanship”. As a result, the State of Escape bag did not enjoy copyright protection, and no infringement can therefore be claimed. If State of Escape had established copyright in the handbag, the Federal Court indicated that they would have found infringement.[2] Had State of Escape simply applied to register its Escape bag design (a relatively low-cost exercise, especially compared to its court costs) the dispute could have been avoided entirely. 

Designing down-under 

Registering a design for a 3D work prior to commercialisation is critical in Australia. Currently, a design must be applied for before being disclosed publicly. The Designs Amendment Bill 2020 which will be passed soon, includes a 12-month grace period for self-disclosure. This does not mean however, that designers should continue to be reactive. Instead, this will allow designers to test the market before filing a registered design.

Design law provides a registrable right in Australia and is a straightforward, clear-cut way to obtain design protection and enable the enforcement of design rights (such as handbags). Every business should seek comprehensive protection against wannabe copycats. This includes a considered use of both registrable and non-registrable IP rights. A holistic intellectual property strategy is integral at the outset and important to revisit and revise.

For further information, please contact Griffith Hack. 

 

[1] https://ausfashioncouncil.com/council-of-textile-fashion-blog/2019/12/12/state-of-escape-talk-copycats; The Australian, “State of Escape wins injunction over copycat of its neoprene bags” 

[2]State of Escape Accessories Pty Ltd v Schwartz [2020] FCA 1606 (6 November 2020) at paragraph 134.

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