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Patterns of deception

12 Mar 2008

Fashion and textile designers spend valuable time and money creating fabric prints that are eye-catching, distinctive and unique. Over time, prints regularly applied to a designer’s range become recognisable by buyers as a print belonging to a particular designer or fashion house. This is true of prints such as Burberry’s well-known check print, Louis Vuitton’s LV monogram and damier print.

More and more regularly, budget fashion retailers are copying well-known prints, and using them on cheaper products. Customers get confused and loyal customers become outraged that inferior products can be bought at lower prices. The inevitable loss of sales can be disastrous for the designer.

Fashion designers can protect their brand and prints against such copying.  But how a print can be protected depends on what rights have been infringed in each instance. 

Usually, the two intellectual property rights infringed by copied prints are copyright and trade mark rights. An action for copyright infringement is available without a designer having had to take any action to register their print.  However, by having a print registered as a trade mark, the fashion designer would find it much easier to prove their case.

Copyright infringement
Copyright automatically exists in the original print designs that appear on fabrics or the decorative features that appear on garments. 

The Diane Von Furstenberg (DVF) fashion house recently sued US retail giant, Target, for infringing its copyright in its “Spotted Frog” print design dress.  The Target dress, when compared side-by-side with the  DVF Spotted Frog dress, looked almost identical.  It had a similar shape, the fabric had a similar print, and an almost identical colour way. 

If the Target dress had been sold in New Zealand or Australia, DVF would have a strong case for copyright infringement of the print that appears on the dress, provided the design was original and created in-house or commissioned by DVF.

Registering the print as a registered trade mark in New Zealand and Australia would also provide added protection against copying in each country.

Trade mark infringement
Trade marks link products with their designer. They communicate quality, performance, dependability, and price to customers. It is easier to enforce rights against another party if the trade mark is registered.
 
The most common trade marks copied by fashion counterfeiters are brand names.  However, counterfeiters will copy anything that links the products back to the fashion designer they are copying.  This includes prints as shown in the case of the copied “Spotted Frog”. 

If a fashion designer has created, or is using an original print then one way of protecting that print is by registering it as a trade mark.  By obtaining registered trade mark protection, the designer can enforce their registered rights against a counterfeiter relatively easily.

Designers should consider registering their original prints as trade marks whenever they believe the print may be used repeatedly by them on their future designs.  They should also register prints as trade marks if they want to try to prevent competitors from using the same prints.

Once a print is registered, a trade mark infringement action is generally easier to prove than an action under the laws of copyright, passing off or the Trade Practices Act (Australia) and the Fair Trading Act (New Zealand).

Examples of prints that have been registered as trade marks include the well-known Burberry check print and Louis Vuitton’s various prints, including the damier print and the famous LV monogram print.

Emma McBride
Associate, A J Park Auckland
emma.mcbride@ajpark.com
DDI +64 9 353 6809

An edited version of this article was published in Apparel magazine, March 2008