Fashion design is a significant creative industry and therefore the relevant settings of intellectual property law matter. This article focuses on a common law jurisdiction (Australia) with an emergent creative fashion industry and a civil law jurisdiction with a well-established industry dominated by global fashion houses (Italy). There are considerable differences between these jurisdictions as far as the scope and availability of IP remedies are concerned. However, the focus here is on registration of non-traditional (shape, pattern, decorative) trademarks in particular, since this is a relatively new option that has generated considerable interest in the contemporary brand-driven fashion industry. The article concludes that both jurisdictions adopt formally different approaches to arrive nonetheless at similar outcomes, allowing registration only in a narrow category of cases and placing restrictions on what constitutes infringement. Although it is difficult to argue that levels of protection are not appropriate, there is considerable uncertainty about outcomes because complex governing principles require fine judgments. Such uncertainty domestically and between jurisdictions is detrimental to smaller players and new entrants without the necessary resources to navigate complex and evidence-driven legal issues.

A Comparative Study of Fashion and IP: Non-traditional Trademarks in Italy and Australia

Ciani Sciolla Jacopo
First
;
2019-01-01

Abstract

Fashion design is a significant creative industry and therefore the relevant settings of intellectual property law matter. This article focuses on a common law jurisdiction (Australia) with an emergent creative fashion industry and a civil law jurisdiction with a well-established industry dominated by global fashion houses (Italy). There are considerable differences between these jurisdictions as far as the scope and availability of IP remedies are concerned. However, the focus here is on registration of non-traditional (shape, pattern, decorative) trademarks in particular, since this is a relatively new option that has generated considerable interest in the contemporary brand-driven fashion industry. The article concludes that both jurisdictions adopt formally different approaches to arrive nonetheless at similar outcomes, allowing registration only in a narrow category of cases and placing restrictions on what constitutes infringement. Although it is difficult to argue that levels of protection are not appropriate, there is considerable uncertainty about outcomes because complex governing principles require fine judgments. Such uncertainty domestically and between jurisdictions is detrimental to smaller players and new entrants without the necessary resources to navigate complex and evidence-driven legal issues.
50
9
1101
1130
https://link.springer.com/article/10.1007/s40319-019-00881-2
3D marks; Decorative marks; Distinctiveness; Fashion; Marks consisting of appearance of goods; Pattern marks; Trademarks
Ciani Sciolla Jacopo; Ghidini Gustavo; Atkinson Violet; van Caenegem William
File in questo prodotto:
File Dimensione Formato  
Pre-print non edited version A comparative study of fashion and IP.pdf

Accesso aperto

Descrizione: pre-print non editoriale
Tipo di file: PREPRINT (PRIMA BOZZA)
Dimensione 439.83 kB
Formato Adobe PDF
439.83 kB Adobe PDF Visualizza/Apri
Ciani et al, A Comparative Study of Fashion and IP: Non-traditional Trademarks in Italy and Australia.pdf

Accesso riservato

Descrizione: articolo principale
Tipo di file: PDF EDITORIALE
Dimensione 599.91 kB
Formato Adobe PDF
599.91 kB Adobe PDF   Visualizza/Apri   Richiedi una copia

I documenti in IRIS sono protetti da copyright e tutti i diritti sono riservati, salvo diversa indicazione.

Utilizza questo identificativo per citare o creare un link a questo documento: https://hdl.handle.net/2318/1842081
Citazioni
  • ???jsp.display-item.citation.pmc??? ND
  • Scopus 2
  • ???jsp.display-item.citation.isi??? 2
social impact