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

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.