From Runway to Registration: Trademark Protection in the Fashion Law Industry

Abstract

The fashion industry represents a dynamic intersection of creativity, commerce, and intellectual property rights. As fashion brands increasingly rely on distinct identities to compete in global markets, trademark law has emerged as a critical mechanism for protecting brand reputation, consumer trust, and commercial value. This article examines the role of trademarks within the broader framework of fashion law, tracing the evolution of legal protection for fashion-related assets and highlighting the economic significance of the fashion industry. The study explores the concept and functions of trademarks, the requirements for trademark registration, the various categories of registrable signs, and the principle of distinctiveness that underpins trademark protection. It further analyses the registration process and discusses landmark judicial decisions that have shaped fashion law jurisprudence. In an era characterized by globalization, digital commerce, and increasing counterfeiting activities, the article emphasizes the growing importance of effective trademark protection in safeguarding fashion brands and fostering innovation. The study concludes that a robust trademark regime is indispensable for preserving brand identity, promoting fair competition, and ensuring the sustainable growth of the fashion industry.

Keywords

Fashion Law; Trademark; Intellectual Property Rights; Brand Protection; Trademark Registration; Distinctiveness; Luxury Fashion; Counterfeiting; Trade Dress; Fashion Industry.

1.Introduction

1.1. Defining Fashion Law

Fashion law is the legal specialty that addresses the legal issues typically faced by fashion companies and fashion designers. As with other legal specialties at the intersection of business law and intellectual property (such as entertainment law, sports law, or art law), fashion law is actually a compilation of legal disciplines. Thus, fashion law incorporates relevant concepts from intellectual property, contracts, corporate law, commercial sales, real estate, employment, advertising law, and international trade and customs, among others. While its growth has been extraordinary, the concept of fashion law is still a relatively new one, with the first American college course in fashion law taught in 2006 (at the Fashion Institute of Technology) and the first law school course in 2008 (at Fordham University). An increasing number of lawyers now refer to their professional practice as fashion law. Since business lawyers are often called on to give a mixture of business and legal advice, this chapter also provides an overview of relevant aspects of the fashion business, which later chapters will explore in greater depth.[1]

1.2. Background of Fashion Law

Fashion law is a specialized and evolving field of legal study that addresses the diverse legal issues arising within the fashion industry. Although recognized as a distinct legal discipline only in recent decades, the principles underlying fashion law have long been embedded within various branches of law, including intellectual property law, contract law, commercial law, labor law, consumer protection law, and international trade law. The emergence of fashion law reflects the growing recognition of the fashion industry as a significant economic and cultural force requiring a comprehensive legal framework to protect its commercial and creative interests.

Historically, the fashion industry has been closely associated with creativity, innovation, and artistic expression. However, the absence of a dedicated legal framework meant that disputes relating to fashion designs, branding, and commercial exploitation were traditionally resolved through general legal principles. Countries with established fashion industries, particularly France, pioneered legal mechanisms for the protection of fashion designs and artistic creations. For many years, copyright law and trademark law served as the primary tools for safeguarding the interests of designers and fashion houses against unauthorized imitation and commercial misappropriation.

One of the most persistent challenges confronting the fashion industry has been the widespread replication and imitation of original designs. The practice of copying fashion creations has existed for centuries, posing significant threats to creativity, innovation, and fair competition. Consequently, intellectual property rights emerged as a crucial legal mechanism for protecting fashion-related assets, including trademarks, trade dress, artistic works, design elements, and brand identity. The increasing prevalence of counterfeit products and unauthorized reproductions further underscored the necessity of robust legal protection within the fashion sector.

The globalization of fashion markets, expansion of luxury brands, growth of e-commerce platforms, and increasing cross-border trade have substantially transformed the legal landscape of the fashion industry. These developments have generated complex legal issues relating to trademark infringement, counterfeiting, licensing, advertising practices, labor rights, sustainability, and international trade. As a result, fashion law has evolved into an interdisciplinary field that integrates multiple legal disciplines to address the unique challenges faced by fashion designers, manufacturers, retailers, and multinational fashion corporations.

The academic and professional recognition of fashion law gained significant momentum during the twenty-first century. The introduction of specialized courses, research programs, and professional bodies dedicated to fashion law marked an important step in its institutional development. Today, fashion law is widely acknowledged as a dynamic and rapidly expanding area of legal practice that seeks to balance the protection of creativity and innovation with the commercial realities of a highly competitive global industry.

This growing importance of fashion law demonstrates the increasing need for effective legal mechanisms capable of safeguarding intellectual property rights, preserving brand value, and fostering innovation within the global fashion marketplace. As fashion brands continue to expand across international borders, legal protection—particularly through trademark law and international intellectual property frameworks—has become indispensable for ensuring sustainable growth and maintaining consumer confidence in the industry.

1.3. Economic Significance of the Fashion Law

The fashion industry is one of the largest and most influential sectors of the global economy. It includes apparel, accessories, luxury goods, and related services, generating significant revenue and employment opportunities worldwide. The growth of international trade and globalization has enabled fashion brands to expand their operations across borders, making the industry highly competitive and commercially valuable.

The increasing economic value of fashion products has made branding a crucial aspect of business success. Consumers often associate fashion products with a particular brand’s reputation, quality, and identity. As a result, trademarks and other intellectual property rights have become essential tools for protecting brand value, preventing counterfeiting, and maintaining fair competition in the global fashion market.

1.3.1. What is fashion marketing?

Fashion marketing is the application of a range of techniques and a business philosophy that centres upon the customer and potential customer of clothing and related products and services in order to meet the long-term goals of the organization. It is a major argument of this book that fashion marketing is different from many other areas of marketing. The very nature of fashion, where change is intrinsic, gives different emphasis to marketing activities. Furthermore, the role of design in both leading and reflecting consumer demand results in a variety of approaches to fashion marketing which are explored below.[2]

1.3.2. Employment Statistics of the Global Fashion Industry

The economic significance of the fashion industry is reflected not only in its contribution to global trade and commercial growth but also in its remarkable capacity to generate employment across various sectors. From design and manufacturing to retail, merchandising, and international distribution, the industry provides livelihood opportunities to millions of individuals worldwide. The expansion of global fashion markets has further strengthened its role as a major economic driver in both developed and developing countries. The following statistics illustrate the scale of employment and economic contribution of the fashion industry across different jurisdictions as of 2025.

Global Employment in the Fashion Industry: As of 2025, the global fashion industry provides employment to approximately 430 million individuals, accounting for nearly 11.9% of the global workforce. This highlights the industry’s substantial contribution to economic development, employment generation, and international commerce.

Fashion Industry Employment in the United States: The fashion industry in the United States employs approximately 1.9 million people, representing nearly 4% of the coutry’s total labour force, thereby establishing it as a significant contributor to the national economy.

Fashion Designers in the United States: The United States is home to approximately 18,000 fashion designers, reflecting the importance of creativity, innovation, and intellectual capital within the fashion sector.

Employment in Fashion Retail: Approximately 79% of the fashion workforce in the United States is engaged in apparel retail operations, demonstrating the critical role of retail distribution in connecting fashion brands with consumers.

Employment in Wholesale Trade and Merchandising: Around 145,000 individuals, constituting approximately 8% of the American fashion workforce, are employed in apparel wholesale and merchandising, facilitating the commercial distribution and market expansion of fashion products.

Employment in Apparel Manufacturing: Approximately 143,000 individuals, representing another 8% of the industry’s workforce, are employed in apparel manufacturing, underscoring the continuing importance of production and supply-chain operations within the fashion economy.

Fashion Industry in France: France, widely regarded as a global centre of luxury fashion and haute couture, employs approximately 340,000 individuals within its fashion sector and maintains a domestic market valued at approximately US$43.3 billion.

Fashion Industry in Germany: Germany’s fashion industry employs approximately 340,000 people and contributes to a domestic market estimated at US$83.6 billion, reflecting the sector’s significant economic influence within Europe.

Fashion Industry in the Netherlands: The Netherlands employs approximately 87,910 individuals in the fashion industry, with the sector contributing an estimated US$16.5 billion to the national economy.

Fashion Industry in India: India occupies a prominent position in the global fashion, textile, and apparel sector, providing direct employment to more than 45 million people. The industry contributes approximately 2–2.3% of India’s Gross Domestic Product (GDP), around 11–13% of manufacturing output, and nearly 12% of total exports. Furthermore, India accounts for approximately 4% of global textile and apparel trade, making it one of the world’s leading producers and exporters of textiles and garments.

2.Trademark in Fashion Industry

“A trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.”[3]

This definition comprises two aspects, which are sometimes referred to as the different functions of the trademark, but· which are, however, interdependent and for all practical purposes should always be looked at together:

In order to individualize a product for the consumer, the trademark must indicate its source. This does not mean that it must inform the consumer of the actual person who has manufactured the product or even the one who is trading in it: the consumer in fact often does not know the name of the manufacturer, still less the geographical location of the factory in which the product was made. This is not necessary for the trademark to fulfil its purpose of indicating origin. It is sufficient that the consumer can trust in a given enterprise, not necessarily known to him, being responsible for the product sold under the trademark.

The origin function as described above presupposes that the trademark distinguishes the goods of the given enterprise from those of other enterprises; only if it allows the consumer to distinguish a product sold under it from the goods of other enterprises offered on the market can the trademark fulfil its origin function. This shows that the distinguishing function and the origin function cannot really be separated. For practical purposes one can even simply rely on the distinguishing function of the trademark, and define it as “A sign which serves to distinguish the goods of one enterprise from those of other enterprises.”

2.1. What Constitutes a Registrable Trademark?

A trademark is any sign capable of identifying the goods or services of one enterprise and distinguishing them from those of others. For a mark to be registrable, two essential requirements must be satisfied:

There must be a sign.

The sign must possess distinctiveness, enabling consumers to identify the source of the goods or services.

2.1.1. Signs

It follows from the purpose of the trademark that virtually any sign that can serve to distinguish goods from other goods is capable of constituting a trademark. Trademark laws should not therefore attempt to draw up an exhaustive list of signs admitted for registration. If examples are given, they should be a practical illustration of what can be registered, without being exhaustive. If there are to be limitations, they should be based on practical considerations only, such as the need for a workable register and the need for publication of the registered trademark.

If we adhere strictly to the principle that the sign must serve to distinguish the goods of a given enterprise from those of others, the following types and categories of signs can be imagined:

Words:

This category includes company names, surnames, forenames, geographical names and any other words or sets of words, whether invented or not, and slogans.

Letters and numerals:

Examples are one or more letters, one or more numerals or any combination thereof.

Devices:

This category includes fancy devices, drawings and symbols and also two-dimensional representations of goods or containers.

Combinations of any of those listed under (i), (ii) and (iii), including logotypes and labels.

Coloured marks:

This category includes words, devices and any combinations thereof in colour, as well as colour combinations and colour as such.

Three-dimensional signs:

A typical category of three-dimensional signs is the shape of the goods or their packaging. However, other three-dimensional signs such as the three-pointed Mercedes star can serve as a trademark.

Audible signs (sound marks):

Two typical categories of sound marks can be distinguished, namely those that can be transcribed in musical notes or other symbols and others (e.g. the cry of an animal).

Olfactory marks (smell marks):

Imagine that a company sells its goods (e.g. writing paper) with a certain fragrance and the consumer becomes accustomed to recognizing the goods by their smell.

Other (invisible) signs: Examples of these are signs recognized by touch.

2.1.2. Distinctive signs

 We have seen that the trademark serves to distinguish the goods of one enterprise from those of others, so, in order to function as a trademark, it must be distinctive. A sign that is not distinctive cannot help the consumer to identify the goods of his choice. The word “apple” or an apple device cannot be registered for actual apples, but it is highly distinctive for computers. This shows that distinctive character must be evaluated in relation to the goods to which the trademark is applied.

The test of whether a trademark is distinctive is bound to depend on the understanding of the consumers, or at least the persons to whom the sign is addressed. Very often, however, a sign has not been used before it is filed for registration, and so the question can only be whether it is capable of distinguishing the goods to which it is to be applied.

A sign is considered distinctive when consumers recognize, or are capable of recognizing, it as an indication that particular goods originate from a specific commercial source. Distinctiveness is not a fixed characteristic; it may be acquired, strengthened, or lost over time. Factors such as long-term and extensive use of a mark can enhance its distinctiveness and influence the decision of trademark authorities regarding registration. Trademark law generally classifies marks into different categories based on their degree of distinctiveness:

Fanciful or Coined Marks:

Fanciful or coined marks are invented words that have no existing meaning in any language. Because they are entirely original, they possess the highest degree of inherent distinctiveness. A classic example is Kodak, a word created solely for trademark purposes. Although such marks often require significant advertising and marketing efforts to become recognizable to consumers, they enjoy the strongest level of legal protection once established.

Arbitrary Marks:

Arbitrary marks consist of common words that are used in a context unrelated to their ordinary meaning. These marks are highly distinctive because there is no logical connection between the word and the product it represents. Examples include Apple for computers and Camel for cigarettes. While these words are familiar to consumers, their use for unrelated goods makes them powerful identifiers of commercial origin and therefore highly protectable under trademark law.

Suggestive Marks:

Suggestive marks occupy a middle ground between arbitrary and descriptive marks. They indirectly hint at or suggest certain qualities, characteristics, or benefits of a product without directly describing them. Consumers must use some degree of imagination or reasoning to connect the mark with the goods. Because they do not explicitly describe the product, suggestive marks are generally considered distinctive and are eligible for trademark registration. Determining whether a mark is suggestive or descriptive is often one of the most challenging aspects of trademark examination.

Descriptive Marks:

Descriptive marks directly describe the nature, quality, purpose, characteristics, or origin of the goods or services. As a general rule, such marks are not registrable because they lack inherent distinctiveness and should remain available for use by all traders in the market. Trademark law seeks to prevent any one business from obtaining exclusive rights over words that competitors may legitimately need to describe their products.

3.Trademark Registration

3.1. Who can apply for registration of a trademark?

In general, any person who intends to use a trademark or to have it used by third parties can apply for its registration. That person can be either a natural person or a legal entity, even a holding company.

The laws of some countries provide that the applicant must exercise a commercial activity involving the goods for which he requests trademark protection. There is, however, a tendency to abandon the requirement. This is true in Europe, as a consequence of the proposed introduction of a Community Trade Mark for which any person may apply. Germany and Italy, and also Switzerland, are about to abandon the requirement. Further requirements exist in Canada, the Philippines and the United States of America. In Canada and the United States of America a trademark can be filed for registration on the basis of intent to use, but use does have to commence before the trademark is allowed registration. In the Philippines (following the old American law, which was changed in 1989) use is even a condition for filing an application for registration of a trademark.

It is important to note that Article 2 of the Paris Convention provides that a country must extend the same treatment for the nationals of all other member countries of the Union as it extends to its own nationals. Member countries are therefore not allowed to discriminate against foreigners as compared with their own nationals.[4]

3.2. Registration Requirements for a Trademark

The registration of a trademark involves fulfilling certain legal and procedural requirements established by national trademark laws. These requirements ensure that the trademark can be properly examined, recorded, and protected. While the specific procedures may vary from country to country, the fundamental requirements remain largely similar.

Application Form and Applicant Details

The registration process begins with the submission of a trademark application. In many countries, the use of a prescribed application form is mandatory. The applicant must provide essential information, including their name and address.

For foreign applicants, additional requirements may apply. They may be required to provide an address for service within the country or appoint a local trademark agent through a power of attorney. In some jurisdictions, further formalities such as notarization and legalization of documents may also be required, although these procedures are often considered costly and time-consuming.

Representation of the Trademark

The trademark that is sought to be registered must be clearly represented in the application form or attached as an annex. Where the trademark consists of something other than a simple word, an appropriate visual representation must be provided.

The requirements may vary depending on the nature of the mark:

If the mark includes a logo, symbol, design, or device, a clear representation of the mark must be submitted.

If registration is sought in a specific colour or combination of colours, the applicant must claim those colours and provide either a coloured specimen or a description of the colours.

If the trademark is three-dimensional, protection for the three-dimensional form must be expressly claimed.

The representation must be sufficiently clear and capable of reproduction so that it can be recorded in the trademark register and examined by interested parties, including owners of prior rights.

Specification of Goods and Services

An important part of the application is the identification of the goods or services for which trademark protection is sought. Trademark laws generally require applicants to classify their goods and services according to an established classification system.

Some countries require a separate application for each class of goods or services, while others permit a single application covering multiple classes. Modern trademark systems generally favour the latter approach because it simplifies the registration process.

The Nice Classification System

The classification of goods and services is largely based on the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, an important international treaty that establishes a uniform classification system for trademark registration purposes.

Under this system:

Goods and services are grouped into different classes.

Applicants must indicate the class or classes in which protection is sought.

Some countries allow applicants to claim protection for all goods within a class.

Most countries, however, require applicants to specifically list the goods or services for which trademark protection is requested.

The latter approach is generally preferred because it provides greater clarity regarding the scope of protection.

Payment of Registration Fees

Trademark registration also requires the payment of prescribed fees. Different countries adopt different fee structures.

Some jurisdictions charge a single comprehensive fee covering the entire registration process, while others impose separate fees, such as:

Application fee

Class fee

Examination fee

Registration fee

Each system has its own advantages and disadvantages. A single fee structure is generally simpler and more cost-effective. However, separate fees may be fairer in situations where an applicant withdraws the application, either wholly or partially, during the registration process due to objections from trademark owners or issues raised by the registrar. In such circumstances, many legal systems provide for partial reimbursement of the fees already paid.

4.Landmark Cases in Fashion Law History

Knitwaves v. Lollytogs (1995)[5]

A large childrenswear company, Lollytogs, was sued by a smaller competitor, Knitwaves, for deliberately knocking off a line of sweater de-signs. The court’s decision notably featured an in-depth analysis of copyright and trade dress protection for fashion items. Applying the “ordinary observer” test to determine whether the overall look of Lollytogs’ designs was substantially similar to Knitwaves’ designs, the court ruled that the minor changes carried out by Lollytogs had been in-sufficient to preclude a finding of copyright infringement. However, since the designs were not widely recognized by the public as having been produced by Knitwaves, no relief was granted on the claim of trade dress infringement.

Wal-Mart v. Samara Bros. (2000)[6]

In what is arguably the most important case in fashion law jurisprudence, the Supreme Court held that fashion designs could never be sufficiently “inherently distinctive” to receive trade dress protection. In this case, Wal-Mart had knocked off an entire line of children’s clothing produced by Samara Brothers. Wal-Mart employees had simply photographed the Samara items and sent the photos to a sourcing factory in the Philippines. Although there was no question that Wal-Mart had copied Samara’s entire line, Justice Scalia, writing for the Court, held that in order to receive trade dress protection for designs, it is necessary to show that the designs have achieved secondary meaning in the minds of consumers (as identifying the brand or manufacturer that was the source of the designs). In practice, this means that it is much safer to knock off the designs of a relatively unknown company than those of a famous one.

Calvin Klein v. Warnaco (2001)[7]

Although this dispute was settled before trial and there-fore did not yield a significant judicial precedent, it is nonetheless noteworthy. Calvin Klein sought $200 million in damages, underscoring the increasing importance of fashion litigation. The case attracted media attention due to the widely publicized personal conflict between Klein and Warnaco’s CEO, Linda Wachner. The case illustrates the crucial role of licensing in the fashion industry, and consequently of the vital need for clear and precise drafting of licensing contracts. Although Klein’s licenses with Warnaco had made him a wealthy man, his lawsuit was based on the premise that Warnaco’s practice of selling to big-box retailers such as Costco had tarnished his brand’s prestige.

5.Critical Analysis

Trademark law has become one of the most significant legal tools for protecting the commercial interests of the fashion industry. While fashion designs often enjoy limited protection under copyright law due to their functional nature, trademarks provide long-term protection for brand names, logos, symbols, trade dress, and other distinguishing features that consumers associate with a particular fashion house.

The article demonstrates how trademarks serve not only as indicators of origin but also as valuable commercial assets capable of enhancing consumer loyalty and brand recognition. In the modern fashion market, consumers frequently purchase products based on the reputation and prestige associated with a trademark rather than the product’s functional characteristics. Consequently, trademark protection plays a central role in maintaining market competitiveness and preserving brand identity.

However, despite the availability of trademark protection, several challenges remain. The rise of e-commerce platforms, social media marketing, and cross-border trade has significantly increased instances of trademark infringement and counterfeiting. Counterfeit fashion products continue to undermine legitimate businesses by causing economic losses and damaging consumer confidence. Additionally, enforcing trademark rights across multiple jurisdictions often involves complex legal procedures, high costs, and inconsistent standards of protection.

The landmark cases discussed in this article reveal the limitations of trademark and trade dress protection within the fashion industry. Judicial decisions have generally required proof of distinctiveness and consumer association before extending legal protection to fashion-related elements. While this approach prevents monopolization of common design features, it may also disadvantage emerging designers who have not yet acquired substantial market recognition.

Therefore, although trademark law remains highly effective in protecting established brands, continuous legal adaptation and stronger international cooperation are necessary to address evolving challenges in the global fashion marketplace.

Conclusion

Fashion law has evolved into a vital legal discipline that protects the creative and commercial foundations of the fashion industry. Among the various forms of intellectual property protection, trademarks occupy a particularly important position because they safeguard brand identity, distinguish products in the marketplace, and reinforce consumer trust.

This article has examined the relationship between fashion law and trademark protection by exploring the nature of trademarks, the requirements for registration, the concept of distinctiveness, and the procedural framework governing trademark registration. It has also highlighted landmark judicial decisions that continue to influence the protection of fashion-related intellectual property rights.

As the fashion industry becomes increasingly globalized and digitally interconnected, the importance of effective trademark protection continues to grow. Counterfeiting, online infringement, and international enforcement challenges require both legislative innovation and greater international collaboration. Ultimately, a strong trademark regime not only protects fashion brands from unauthorized exploitation but also encourages creativity, investment, and fair competition. The journey from runway to registration therefore represents more than a legal process—it is an essential mechanism for preserving the identity, value, and future growth of the global fashion industry.

Bibliography

Books

Jiménez G, ‘Fashion law: A guide for designers, fashion executives, and attorneys’ (2nd edition, Fairchild Books 2014)

Mike Easey, ‘Fashion Marketing Edited by Mike Easey’ (3rd edition, Wiley-Blackwell 2009)

Kunze MG, ‘Introduction to Trademark Law and Practice, 2nd Edition’ (2nd edition, World Intellectual Property Organization 1993)

Tan D, Fromer JC and Gangjee D, ‘Fashion and Intellectual Property’ (Cambridge University Press 2025)

[1] Jiménez G, ‘Fashion law: A guide for designers, fashion executives, and attorneys ’ (2nd edition, Fairchild Books 2014)

[2] Mike Easey, ‘Fashion Marketing Edited by Mike Easey’ (3rd edition, Wiley-Blackwell 2009)

[3] Kunze MG, Introduction to Trademark Law and Practice, 2nd Edition (2nd edition, World Intellectual Property Organization 1993)

[4] Kunze MG, Introduction to Trademark Law and Practice, 2nd Edition (2nd edition, World Intellectual Property Organization 1993)

[5] Knitwaves Inc v Lollytogs Ltd (1995) (US Court -71F3d 996 (2d Cir1995))

[6] Wal-Mart Stores v Samara Brothers (2000) (US Supreme court) (529 US 205 (2000))

[7] Calvin Klein Trademark Trust v Warnaco (2001) (State District Court for the Southern Disctrict of New York ( SDNY)) 129 F. Supp. 2d 248