Imagine for a moment that some upstart revolutionary proposed that we eliminate all intellectual property protection for fashion design. No longer could a designer secure protection for a unique design. Unscrupulous mass-marketers could run off thousands of copies of any designer’s evening ensemble and flood the market with cheap imitations. In the short run, perhaps, clothing prices would drop as legitimate designers tried to meet the prices of their free-riding competitors. In the long run, though, the diminution in the incentives for designing new fashions would take its toll. Designers would still wish to design, at least initially, but clothing manufacturers with no exclusive rights to rely on would be reluctant to make the investment involved in manufacturing those designs and distributing them to the public.
The majority of analyses begin with an investigation of trademarks by reference to the English case of Southern v. How. This may imply that the use of trademarks is a comparatively modern phenomenon. Nevertheless, this is erroneous as property in trademarks, both exclusive and absolute, has been in use in many different civilizations far before the earliest recorded jurisprudence.
Trademark is a mark that shows the trade of the maker. It is among the most important and valuable assets of a designing company. Regardless of whether trademarks are strictly symbols or not, it is reasonable to state that the power of trademarks and the legal privileges attached to them are extraordinary. Trademarks endow their proprietors with an inherent value which can last infinitely.
The Nigerian Trademarks Act in section 67 defines a trademark as follows:
“Trademark means, except in relation to a certification trademark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods, and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trademark, a mark registered or deemed to have been registered under Section 43 of this Act.”
To be a registrable trademark, a name or symbol must be able to identify and distinguish a product from other goods in commerce. Marks that are arbitrary or fanciful qualify for trademark registration almost immediately, while marks that are descriptive, including surnames, must acquire “secondary meaning” before they may be registered. Secondary meaning is a specific type of distinctiveness that is acquired through use of the trademark in the marketplace and requires the formation of a link in the mind of the consumer between the trademark symbol and the company for which it is serving as a signifier. So, while fanciful marks for clothing, such as “Banana Republic” are easily registrable, descriptive marks such as “Tommy Hilfiger” requires a considerable amount of investment before they may become registered trademarks.
The fashion industry involves significant creativity and innovation — satisfying the criteria of both aesthetic design and utility to consumers. Globally, fashion is a multi-billion dollar industry (with revenues reaching an average $10 trillion per year, representing 4% of global GDP) and creates jobs for designers, models, beauticians and make-up artists, producers, textile designers and manufacturers, event organizers, and more. It is also intrinsically linked to other creative industries, including the arts, film and music. Unsurprisingly, then, the question of intellectual property protection for fashion design has commanded attention from designers, litigators, policy makers and consumers. Nevertheless, growth in the industry’s economic importance and in the ease of pirating fashion designs has both outpaced legal change.
The weakness, from a fashion perspective, is that only the mark is as a matter of course protected and not the entire garment or accessory. Trademarks are really most valuable for well-known, recognizable brands. When small, emerging designers get copied, the copier will typically take everything but the trademark—which is in essence all the value, since their trademark is unknown and therefore not valuable. This is probably why most emerging fashion outlets do not really care about creating or registering their trademarks.
Still, trademark can add great value to the fashion industry in many ways. Big fashion houses value their brand equity. Most develop a bond with their customers through their brand names and fiercely protect these through registration of trademarks. Such approach is just as important for a small or start-up company in the fashion industry.
Enumerated below are some advantages of trademark in the fashion industry
- A trademark is permanent. It can endure indefinitely so long as the registrant continues to use it in commerce. If a designer can conflate logo and design, then he can conveniently obtain permanent rights to the design.
- The use of trademarks has become a means for reducing search costs. The search cost theory proposes that the use of a consistent mark on products originating from the same source with the presupposed knowledge that counterfeiting is prohibited lowers the search costs consumers face.
- A trademark is a representative of the qualities (both tangible and intangible), values, and attributes that a designer infuses into its products.
Having considered the advantages of having a registered trademark, let’s also consider the disadvantages of not having one.
Available research shows that over 80% of Small and Medium Scale Enterprises (SMEs) fail to register their trademark. As aforesaid, most of these SMEs think it is simply not worth the effort to protect their trademarks, while some lack the understanding of the process of registration. Yet, by failing to register their brands, these businesses are not only damaging their brands and reputation, they also put their business at great risk.
An erudite lawyer once said:
“We hear this from business owners all the time: ‘Oh, we’re too small. It’s too early. We’re still thinking. We’ll think about trademarking once we grow bigger…’ Let me be blunt with you, this is utter nonsense on so many levels. You must not make trademarking decisions based on where your business is today. You must make these decisions based on where your business will be if it’s as successful as you hope it might become.”
Coca-Cola registered its trademark in 1892, just days after the company was incorporated. The brand is now worth almost $80 billion.
Here, on the other hand, are some of the disadvantages of using an unregistered trademark.
- In the first instance, the failure to register a trademark leaves a company exposed and vulnerable. A rogue designer could imitate a product and then pass it off to unsuspecting customers under an unregistered, but relatively popular trademark of a fashion label. Thereby ripping off the label, taking advantage of the emotional attachment and the bond that they (the fashion label) may have built with their customers over time. Of course, the company whose reputation has been exploited could sue, but proving all the ingredients of the tort of passing-off, especially as regards an unregistered trademark, can be difficult.
- Using an unregistered trademark dramatically increases the likelihood of another business using your mark. An unregistered trademark—which though automatically subsist and gives some common rights to the user—can be ‘stolen’ and registered by another, obviously because the mark is not listed with any regulatory authority and is therefore available to be registered.
- Certain rights/benefits accrue from having a registered trademark. The opposite is painfully true. In a modern business environment, it is tantamount to negligence for a company not to seek registration of its trademark.
Africa’s fashion designs have great potential to compete in the global fashion industry. It therefore becomes important to appreciate how the IP system operates beyond the continent’s borders, particularly within key export markets. Fashion is a global business and IP rights extend into the international trading system through various international treaties.
It is vital for fashion enterprises to obtain sound legal advice at an early stage in order to appropriately protect their creativity through IP rights, and be able to realize their commercial potential. Fashion SMEs need to develop an IP strategy and incorporate it into their overall business strategy.
Ademola Adeyoju who is a Graduate Legal Intern at Infusion Lawyers, an IP & IT Law firm. A motivated individual with great interest in IP protection and enforcement, Ademola blogs for ogaVenue, and is a Contributor for Nigerian Law Today.
 Jessica Litman, Digital Copyright: Protecting Intellectual Property on the Internet (Amherst, New York: Prometheus Books, 2000), 105-06.
 Southern v. How  Popham’s Reports 143
 S. Diamonds, ‘The Historical Development of Trademarks’ (1983) 73 TMR 222, 223-226.
 Guillermo C. Jimenez, Fashion Law: Overview of a New Legal Discipline.
 15 U.S.C. §§ 1058–1059.
 The search cost theory considers trademarks as tools for enhancing the information situation of consumers and as vehicles that enable producers to inform their consumers about their products. When producers have a reliable means to communicate information about their products, they will have an incentive to maintain consistent quality.
 Andrei Mincov, the best-selling author of ‘The Ultimate Insider’s Guide to Intellectual Property’, and the founder and CEO of Trademark Factory