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

Jacopo Ciani, Gustavo Ghidini, Violet Atkinson, William Van Caenegem

Research output: Contribution to journalArticleResearchpeer-review

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.
Original languageEnglish
Number of pages30
JournalIIC International Review of Intellectual Property and Competition Law
DOIs
Publication statusE-pub ahead of print - 18 Oct 2019

Fingerprint

trademark
jurisdiction
Italy
industry
uncertainty
cultural economy
civil law
common law
intellectual property
remedies
Law
resources
evidence

Cite this

@article{dbddb6dca0a6434bb4a39ba5e952d949,
title = "A Comparative Study of Fashion and IP: Non-traditional Trademarks in Italy and Australia",
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.",
author = "Jacopo Ciani and Gustavo Ghidini and Violet Atkinson and {Van Caenegem}, William",
year = "2019",
month = "10",
day = "18",
doi = "10.1007/s40319-019-00881-2",
language = "English",
journal = "IIC International Review of Intellectual Property and Competition Law",
issn = "0018-9855",
publisher = "Verlag C.H. Beck",

}

A Comparative Study of Fashion and IP: Non-traditional Trademarks in Italy and Australia. / Ciani, Jacopo ; Ghidini, Gustavo ; Atkinson, Violet; Van Caenegem, William.

In: IIC International Review of Intellectual Property and Competition Law, 18.10.2019.

Research output: Contribution to journalArticleResearchpeer-review

TY - JOUR

T1 - A Comparative Study of Fashion and IP: Non-traditional Trademarks in Italy and Australia

AU - Ciani, Jacopo

AU - Ghidini, Gustavo

AU - Atkinson, Violet

AU - Van Caenegem, William

PY - 2019/10/18

Y1 - 2019/10/18

N2 - 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.

AB - 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.

U2 - 10.1007/s40319-019-00881-2

DO - 10.1007/s40319-019-00881-2

M3 - Article

JO - IIC International Review of Intellectual Property and Competition Law

JF - IIC International Review of Intellectual Property and Competition Law

SN - 0018-9855

ER -