•Design registration and copyright are the central mechanisms for IP protection of the appearance of fashion garments, and trade mark law may seem of little relevance at first glance.
•However, since the adoption of the World Trade Organization’s TRIPS standards for registered trade mark protection, the dividing line between product and trade mark has become much less pronounced. In particular, the shape of goods and colours as such are eligible for trade mark registration. Other decorative features, such as patterns (the Burberry check for instance) or stitching, and other non-traditional trade marks may also be registered under certain conditions. This presents interesting opportunities to fashion labels, which can obtain perpetual protection for some of their most striking or memorable visual features through trade mark registration.
•This article compares the state of the law on this topic in Australia and France, contrasting jurisdictions in terms of the underlying legal systems but also in terms of the relative importance of the fashion industry. Although the formal requirements and tests of the law in the two countries seem quite different, very similar results are obtained in many respects. In both countries there are serious obstacles to registration, and once a non-traditional mark is registered it is not easy to obtain a remedy against a competitor who adopts a similar feature. The concept of use of a mark as a mark, both for the sake of registration on the basis of acquired distinctiveness, and in enforcement, concerns judges in both jurisdictions. Infringing use is also problematical.
Atkinson, V., Azard, V., Canlorbe, J., & Van Caenegem, W. (2018). A comparative study of fashion and IP: Trade marks in Europe and Australia. Journal of Intellectual Property & Law Practice, 13(3), 194-211. https://doi.org/10.1093/jiplp/jpx190