To protect fashion designs it is not sufficient to rely just on copyright, trade marks and design registrations. Fashion houses instead mostly rely on brand prestige, rapid style changes and stock control.

A recent court decision provides guidance on more ways to protect apparel designs or defend against claims of infringement.

Back on 24 January 2007 I noted that The Age in Melbourne reported that Rosemin, a fashion house, had accused rival chain Gasp (Gasp Jeans Chadstone Pty Ltd) of unlawful copying of a dress design.

The CIRCUMSTANCES can be easily overviewed.

  • The Rosemin claim was FOUNDED on designs registered in late 2006 by Rosemin Pty Ltd under the Designs Act 2003 (Cth).
  • Those late 2006 dates were Rosemin’s dates for claiming legal priority and monopoly for its designs.
  • In August 2009 the parties had their five days in court.
  • On 16 March 2010 Justice Middleton of the Federal Court of Australia released his decision.
  • He ruled that the Rosemin claim was groundless – Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd [2010] FCA 228. As we’ll see, the reason for this decision owes a lot to good record keeping by Gasp.

The legal ARGUMENTS were more interesting.

  • Yes, the dresses were similar. See the above photo to judge for yourself. The Age story featured a photo by Rebecca Hallas with the Gasp product on the left and the Rosemin on the right. I’ve cropped Hallas’ photo to highlight the similar dresses.
  • In documents filed in court Gasp took that same view. Gasp admitted that “the Gasp Dresses embody designs that are identical to or substantially similar in overall impression to the Rosemin designs”.
  • Gasp’s cross-claim relied on section 93(3)(a) of the Designs Act. Gasp argued that the Rosemin Designs were not registrable designs and should be revoked. To make out this case the onus was on Gasp to establish that “the Rosemin Designs were not registrable for the reason that they were not new or original or because of prior publication or use.” [Emphasis added]

Gasp’s PRESENTATION of its evidence is instructive.

  • During the five day hearing Gasp’s evidence of prior publication or use of identical or substantially similar designs was put by a range of witnesses.
  • Working his way through the evidence, Justice Middleton states in his judgement that he accepted the evidence of those witnesses. They included:
  • Mr Eddie Yilmaz, the Gasp operations manager
  • Mrs Shan Lian Qiu, a director of Gasp, and a trained fashion designer who studied fashion design in college in China
  • Ms Sandra Alameddine, a Gasp store employee, who gave evidence that the Gasp Pink Lips dress was in the Gasp store before the priority date of the Rosemin Pink Lips Dress
  • Mr Collosuomo, a hairdresser for models used in a September 2006 a Gasp photo shoot
  • Mr Frank Quilliam, a photographer for a Gasp photo shoot
  • Ms Lucinda Keily, a sales assistant, but relevantly used as a model, she said on 18 September 2006
  • The evidence of these witnesses connected to one or several records maintained by Gasp. The records were in evidence to establish Gasp published or used the designs before Rosemin. They included purchase orders, tax invoices and other MYOB account data, DHL Express shipment receipts, shipment reports, sales contracts, photographs, and catalogues.
  • There was only a matter of months between the evidence of publication or use by Gasp and Rosemin. Rosemin’s evidence had gaps, was very limited, and ultimately not persuasive.
  • Justice Middleton’s conclusion on the evidence was [emphasis added]:

“The totality of the evidence indicates to me that the Gasp Dresses were sold or offered for sale prior to each of the relevant priority dates. Counsel for Rosemin effectively made an attack upon all the documentation supporting Gasp’s claim, and in effect alleged that Gasp and a number of other witnesses or potential witnesses fabricated the evidence. I have rejected such a claim by looking at the documentation and the other evidence, after considering the submissions of Rosemin. The photo shoot evidence reinforces the conclusion that the claim of fabrication in relation to the Gasp Secret Dress was without foundation.”

Rosemin lost. Gasp’s cross-claim was accepted. Orders were granted revoking the relevant Rosemin design registrations. Rosemin’s general damages claim for loss of profits and loss of reputation were also rejected. In any event there was no evidence of further attempts to manufacture the relevant Rosemin dresses, or to prove any drop in sales of the Rosemin dresses once the Gasp dresses had been manufactured and offered for sale. Rosemin sought to attribute the entire downturn in its business leading to the closure of its Chapel Street store in 2009 to Gasp’s alleged infringement of the Rosemin Designs.

Rosemin got the wooden spoon, it has to pay the legal costs (see here for the costs hearing discussing the Gasp Calderbank Offer made to Rosemin). Good record keeping, good witnesses, and good legal work and presentation won the case for Gasp.

Noric Dilanchian