The smoking dress: Dress design infringement, priority dates, and documentation

A recent designs case in the Federal Court involving two dress retailers and allegations by each party of copying various dress designs has highlighted the need for good documentary evidence (Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd [2010] FCA 228).

Two frock sellers

Rosemin and Gasp both operated retail stored in Melbourne, selling party dresses for women aged 16 to 25 years. Rosemin was the registered owner of Australian Design Registrations for six dresses, and claimed that dresses sold by Gasp infringed the Rosemin Designs pursuant to section 71 of the Designs Act 2003 (Cth).

Gasp admitted that:

• the Gasp Dresses embodied designs that were identical or substantially similar in overall impression to the Rosemin Designs; and
• it sold or offered to sell or otherwise disposed of the Gasp Dresses.

However, Gasp cross-claimed, seeking revocation of the registration of the Rosemin designs on the basis that the Rosemin designs were not registrable because the Gasp dresses had been sold or offered for sale by Gasp before the priority date for the registration of the Rosemin designs.

Consequently, the sole issue in the case was whether the Rosemin designs' registrations were valid.

To support its cross-claim, Gasp relied on the evidence of Gasp employee and director witnesses as well as documentary evidence dated before the priority date of the Rosemin designs, such as purchase orders, shipment receipts, tax invoices, sales contracts and sales reports. Evidence was also given of a photo shoot that was alleged to have occurred before the priority date for a particular Rosemin Design.

Rosemin's evidence

Justice Middleton pointed out that Rosemin did not need to demonstrate that it created the Rosemin designs as the Gasp dresses were sold or offered for sale before the Rosemin designs' priority date. Nevertheless, on the evidence he could not be satisfied that Rosemin created the designs because:

• Rosemin's designer had not studied design or patternmaking and only commenced designing clothes for commercial sale in 2005;
• there was almost no documentary evidence demonstrating the actual creation of a design or the making of the samples alleged to be an inherent part of Rosemin's design process;
• Rosemin led no evidence whatsoever in relation to the creation process from the individuals working closely with the designer; and
• Rosemin's designer was unable to provide any specificity in relation to the construction of the dresses, stating it was her patternmaker who constructed the dresses.

Conclusion

On the totality of the evidence Justice Middleton found that Gasp had shown that it was selling the dresses before the priority date of Rosemin's designs. He therefore dismissed Rosemin's application and made orders revoking the registrations of the Rosemin designs.

Further Justice Middleton found that even if Rosemin had shown that its registered designs had been infringed, Justice Middleton would not have awarded it damages for lost sales or damage to reputation. This is because:

• in respect of lost sales, Rosemin had managed to sell 81 percent of the dresses, but could not show what, if any, impact the Gasp dresses had on its sales; and
• there was no independent evidence of the existence of Rosemin's reputation, and Rosemin's claim that the alleged infringement led to the entire downturn in its business and the closure of one of its stores was exaggerated.

Justice Middleton also ordered that Rosemin pay Gasp Jeans costs of the proceedings.