4.1 Introduction
4.1.1 The Sneaker Revolution
Evidence suggests that sneakers were developed in the mid-nineteenth century for privileged elites to play tennis or croquet on grassy British lawns.Footnote 1 Since that time, sneakers have transformed from sports equipment – to everyday shoe – to fashion object – coveted by both men and women.Footnote 2 This transformation is one of the most significant developments in recent sartorial history and, commercially, sneakers now fuel a billion-dollar industry.Footnote 3
A question that arises is why? Why have sneakers become standard footwear for casual use, common on the red carpet and even seen in office wear?Footnote 4 Why are we now more likely to talk about ‘dress sneakers’ than to discuss high heels or lace-up wingtips? The reasons for the shift in aesthetics has triggered examinations from a variety of scholars across different disciplines.Footnote 5 For example, feminist scholars have discussed the increased participation of women in the paid workforce and documented the imposition of high heels as a feminist issue.Footnote 6 Sociologists and fashion scholars have also written of men’s everyday uniform moving away from the suit (and dress shoes) towards a more casual aesthetic.Footnote 7 Many have also examined the overall casualisation of the workplace both pre- and post-pandemic.Footnote 8 Another significant phenomenon is the emergence of ‘sneakerhead culture’ – defined as the admiration, collection and trading of sneakers – whose advent is credited to the 1970s hip-hop era in the United States but has since become a world-wide phenomenon.Footnote 9 This increased demand for sneakers (both as everyday footwear and as an object of fashion) has shaken up competition in the traditional sneaker market.
4.1.2 The Major Players in the Sneaker Market
In Australia, traditional sneaker brands such as Nike and Adidas still dominate the performance and lifestyle shoe markets. However, since the sneaker revolution, sneakers are a now a regular offering from many high street and luxury brands, enlarging the lifestyle market with additional (and often more expensive) options. For example, sneakers are now a critical product line from designers such as Balenciaga, Gucci and Alexander McQueen.Footnote 10 Conversely, traditional sneaker brands have expanded into more fashion-conscious markets. For example, Nike founded NikeLabFootnote 11 to create high end and occasionally avant-garde shoes and apparel. Likewise, Adidas maintains the brand Y-3, which is a long-standing collaboration with renowned avant-garde Japanese designer Yohji Yamamoto (Figure 4.1).Footnote 12 Most of the traditional sneaker brands also create capsule collections with successful athletes, for example, Naomi Osaka with Nike.Footnote 13 However, many collaborations are now with celebrity designers such as Victoria Beckham (with Reebok),Footnote 14 and Stella McCartney (with Adidas).Footnote 15 Occasionally, these high-profile relationships experience well-publicised implosions, for example, Adidas’ partnership with rapper Ye (formerly known as Kanye West).Footnote 16
Example of cross-market entrants – Adidas’ Y-3 Fall/Winter 2022 Collection.Footnote 17
4.1.2.1 Goliath v Goliath
As fashion designers have entered the lucrative sneaker market, traditional sneaker brands have launched a myriad of lawsuits to protect the distinctive aspects of their shoes including their shape. For example, Adidas are well known for suing any designer using angled stripes on sneakers.Footnote 18 Likewise, Converse (now owned by Nike) has filed dozens of trademark suits to protect its iconic ‘Chuck Taylor’ sneaker, which have sold over a billion units since 1917.Footnote 19 In the last few years alone, sneaker infringement cases against fashion designers have become almost commonplace. Recently in 2023, Ralph Lauren was sued by NBA hall-of-famer (and Nike collaborator) George Gervin in relation to its high-top basketball sneaker named the ‘Gervin Mid’. Gervin alleged violations of his right of publicity, trademark infringement and false designation of origin.Footnote 20 The case settled.Footnote 21 Also in 2023, Nike sued and settled a trade dress infringement lawsuit against designer John Geiger alleging his GF-01 shoes infringed Nike’s Air Force 1 trade dress (see Figure 4.2).Footnote 22 In another well-publicised case in 2022, Vans successfully restrained the sale of guerrilla art studio MSCHF’s ‘Wavy Baby’ shoes (a collaboration with singer Tyga), which Vans claimed were a copy of Vans’ iconic Sk8 shoes.Footnote 23
Nike Air Force 1 trade dress vs Geiger’s alleged infringing products.Footnote 24
Figure 4.2 Long description
The table demonstrates the designs the differences in design and branding between the genuine and infringing products. Two trade dress shoes are outlined in the first column. The genuine air force 1 shoes with a swoosh Nike logo is in the second column. The infringing or Geiger products illustrates six shoes that are arranged vertically. The shoes either have lace or no lace at all.
4.1.2.2 Approaches Vary across Jurisdictions
These examples demonstrate that it has never been more important for sneaker designers to protect their distinctive trademarks or innovative designs. This competitiveness, coupled with the globalisation of brands, has heightened interest in cross-jurisdictional protection for footwear designs and revealed important differences between legal systems. Of relevance to shoes, this includes the treatment of 3D shape trademarks, the role of design laws, overlap rules and the treatment of functional signs and designs. For example, in the EU, UK, Singapore and Australia, fashion designers have access to both trademark rights and some form of registered or unregistered design rights. In contrast, shoe litigation in the United States typically proceeds as infringement of ‘trade dress’ – a trademark doctrine originally limited to packaging but that has expanded since the 1980s to ‘the shape and design of the product itself’.Footnote 25 The limits of the latter doctrine continue to lead commentators to demand some form of sui generis fashion or design right.Footnote 26
This chapter uses Australia as a case study to illustrate the empirical impact of the sneaker revolution on registered trademark and design rights. This case study also serves as a cautionary tale for those advocating sui generis design rights for fashion designers. This chapter reveals the problems with the Australian system, which implemented a registered design right (without a grace period for self-disclosure) and also allows for concurrent 3D shape trademarks (where there is no statutory bar against functional shapes). In addition to these technical lacunae, this chapter will argue that aspects of culture are relevant in designing an optimal IP framework. This chapter argues that there are unusual aspects of Australian culture as well as IP law that shepherd designers towards registering the overall appearance of a product (such as a shoe) as a 3D trademark but. not as a registered design. This is a problem because in Australia (as with many jurisdictions), a preference for trademark rights over other time-limited rights such as patents or designs can lead to perpetual trademark registrations and anti-competitive monopolies.
4.2 A Culture of ‘Casual Piracy’
In comparison to the jurisdictions discussed in this book, Australia is unusual in the sense of being a relatively wealthy countryFootnote 27 but one that has a notorious attitude of casual piracy towards designer goods.Footnote 28 By ‘casual piracy’, I am not referring to ‘frequency of downloads’, as that phrase is used in a copyright piracy context.Footnote 29 Nor am I referring to so-called ‘benign copying’ done by design-intensive countries, which begets fresh innovation (typically discussed as the piracy paradox).Footnote 30 ‘Casual piracy’ in this context refers to an observation that in Australia, buying and using copies of designer goods is not a hidden shame. Surveys have shown that from a cultural perspective, Australians are more accepting of counterfeit or replica designer products than other developed nations.Footnote 31 For example, YouTube videos can be found of Australians instructing others where to buy the best fake bags in Bali (a popular holiday destination for Australians).Footnote 32 This kind of ‘casual piracy’ is often open and frequently normalised. This casual attitude to piracy has been discussed in a copyright context,Footnote 33 but I argue that the normalisation of piracy exists in the design context as well.
In a recent IP Australia survey,Footnote 34 industry respondents reported ‘that consumers and other businesses in Australia do not sufficiently value original design or appreciate the impacts (financial and otherwise) of copying designers, particularly in fashion and furniture’.Footnote 35 In reviewing public sentiment, IP Australia found that although designers were concerned about unauthorised copying, this concern was not reflected in the broader public conversation.Footnote 36 In other words, Australians seem to have a strong appetite for replica goods particularly where the price for the original is much higher than the price for the copy.
In a classical paradigm, a designer might protect their goods from a copier by applying a trademark to the face of the article. However, under common law concepts of trademark law, the equity protected is in the trademark itself and not in the underlying product. Therefore, a counterfeiter could avoid trademark infringement by replicating the underlying article – for example, shoe, bag or dress – but omitting the trademark.Footnote 37 In Australia and elsewhere, there would arguably still be a strong demand for this unbranded replica product. This has led some fashion houses to embrace the ‘logo-fication’ of their goods. For example, some designers with strong trademarks may incorporate or weave their trademarks into the surface of the articles. For example, Burberry’s check trademark and Louis Vuitton’s monogram trademarks have been incorporated into the entire surface of clothing, handbags and shoes (Figure 4.3).Footnote 38 This is a sub-optimal choice for weaker brands and also for well-branded fashion houses who may refuse to confine their creativity to logo-fied goods.
Logo-fication of designs: (left) Burberry’s check trademark used upon a sneaker;Footnote 39 (right) Louis Vuitton quatrefoils and flowers trademarks used upon a sneaker.Footnote 40
In Australia, for those designers who cannot or will not ‘logo-fy’ their products but want to protect the overall appearance of their goods, the most attractive option is to pursue protection for the overall appearance of the underlying article, for example, to pursue shoe protection as a 3D shape or as a registered design. In other words, the legal impetus to protect fashion items as 3D IP is important in Australia due to its culture of casual piracy (which happily consumes un-branded ‘knock-offs’) and where logo-fication is an unavailable or unappealing option.
4.3 Legal Options for Fashion Designers in Australia
If a fashion designer seeks to prevent the copying of an object itself – apparel, shoes, bags, etc – there are many options available to a designer under Australian IP law. For example, a designer can access formal registered IP rights under the Designs Act 2003 (Cth), Trade Marks Act 1995 (Cth) or Patents Act 1990 (Cth) or unregistered rights under the Copyright Act 1968 (Cth). Designers may also access allied rights under statutory consumer law or the common law tort of passing off.Footnote 41 However, this chapter argues that Australian law maintains peculiar lacunae within, and between, copyright, designs and trademark law that shepherd designers towards relying upon 3D trademark rights to protect their designs rather than other types of rights. This is an outcome most jurisdictions try to avoid due to anti-competitive issues specific to trademark law. The concern is that because registered trademarks can be renewed indefinitely, a perpetual monopoly over a shape (particularly a functional shape) might be granted to a designer/trademark owner. To understand how this sub-optimal situation arose and why designers nevertheless may default to, or strategically use, shape trademarks, a brief overview of relevant aspects of Australian copyright, designs and trademark law is required.
4.3.1 Copyright and Design Overlap Laws
In Australia, as with many jurisdictions, copyright subsists automatically once a work assumes material form; registration is not required, and copyright terms are long, typically the life of the author plus 70 years after death of the author.Footnote 42 This can make copyright an attractive ‘default’ if a fashion designer has not, or cannot, obtain other forms of protection, for example, a registered design right. In line with other Commonwealth jurisdictions, the Australian Copyright Act 1968 (Cth) prescribes a closed list of categories for copyrightable works.Footnote 43 However, as with the United Kingdom, in Australia the exclusion of utilitarian works is via case lawFootnote 44 rather than expressly proscribed by statute as in the United States.Footnote 45
In contrast to the United States, Australia also maintains sui generis design laws that were originally modelled on UK legislation.Footnote 46 However, unlike the United Kingdom and many EU member states,Footnote 47 Australia pursues a strict approach to demarcation and limits the cumulation of copyrights.Footnote 48 The legislative overlap provisions are complex, but essentially designers lose copyright protection if they apply their design industrially, that is, where the design is reproduced 50 times through embodiment into a 3D product.Footnote 49 So a sketch of a shoe retains copyright as an artistic work (e.g., as a painting) if it is printed on a T-shirt (a 2D reproduction of an artistic work as surface ornamentation) but loses copyright if the reproduction is as a 3D product, for example, a shoe.Footnote 50 In effect, these provisions tacitly encourage designers to use shorter-lived registered design rights rather than rely on lengthy unregistered and unsearchable copyrights for 2D sketched designs.Footnote 51 For reasons discussed later, an increased interest in registered designs failed to materialise.
An important exception to the overlap provisions exists for products categorised as works of artistic craftsmanship (WOACs).Footnote 52 WOACs may receive copyright protection even if registered or registrable under the Designs Act 2003 (Cth).Footnote 53 There is no definition of a WOAC in the Copyright Act 1968 (Cth), but UK and Australian courts have cited as examples the works of ‘silversmiths, potters, woodworkers, hand embroiderers and many others’Footnote 54 whose works are seen as deserving of longer protection due to ‘special training, skill and knowledge’.Footnote 55 The absence of a strict definition has meant designers of more modern products, such as boat hulls,Footnote 56 corkscrewsFootnote 57 and handbagsFootnote 58 have tried to shoehorn themselves into copyright in the absence of registered design right protection.
In relation to fashion, in a 1998 case,Footnote 59 the knitwear brand Coogi successfully argued that a length of its highly textured knitted fabric (which featured three-dimensional elements) was a work of artistic craftsmanship.Footnote 60 However, it failed to make out that copyright in this WOAC had been infringed.Footnote 61 Unlike Coogi, most other fashion plaintiffs have failed in subsistence arguments, that is, that their products rose to being works of artistic craftsmanship. For example in 2003, a court held in Muscat v LeFootnote 62 that mundane black pants lacked the requisite artistry and artistic intent to be classed as a WOAC.Footnote 63 In a more recent case, the handbag designer of Escape’s popularFootnote 64 neoprene tote bag failed to convince the Federal Court of Australia that the prototype for the bag was a WOAC (Figure 4.4).Footnote 65 In that case, the court held that ‘whether the bag is a work of artistic craftsmanship turns on the extent to which the Escape Bag’s artistic expression, in its form, was unconstrained by functional considerations’.Footnote 66 The court could not equate the designer’s choices, for example, of neoprene fabric or using sailing rope for handles, to that of an ‘artist-craftsperson’;Footnote 67 instead, they were considered ‘an evolution in styling’Footnote 68 rather than an act of artistic craftsmanship.
These cases indicate that copyright protection for a 3D object is theoretically possible if the work expresses the necessary artistry and artistic intent to be considered a work of artistic craftsmanship. However, the bar for such classification is extremely high. In Coogi, there was significant evidence of artistic decision-making in Coogi’s unusual stitch structures and colours.Footnote 69 There was much evidence of conscious design choices incorporated into the 3D forms of the knitted textiles. Designers of less unusual forms will likely fail to qualify their products as WOACs and (as the legislature intended) should consider alternative rights, such as a registered design right. Unfortunately, as discussed below, Australian design law has had significant limitations.
4.3.2 Design Laws
In Australia, the Designs Act 2003 (Cth) seeks to protect the interests of designers for up to ten years.Footnote 71 The scope of the registrable interest is limited to the ‘overall appearance of the product’ where that appearance results from ‘one or more visual features’,Footnote 72 so long as it is ‘new’ and ‘distinctive’Footnote 73 when compared with the prior art base.Footnote 74 Fashion, including apparel and shoes, is theoretically well suited for registrations as designs. In addition, Australia differs from many other TRIPS members by allowing functional features to be registered as designs.Footnote 75 Liability for infringement is found if a design is ‘identical to’ or ‘substantially similar to’ the overall impression of a registered design.Footnote 76 An online application starts from A$250, with additional fees required if a designer elects to have their design examined and certified.Footnote 77
4.3.2.1 Design Registrations
Design applications are underused in Australia, particularly by Australian residents. Recent studies show that applications have stagnated and are relatively low in number (2,500–3,000 applications a year between 2001 and 2017).Footnote 78 In contrast, the number of design applications worldwide has doubled each year.Footnote 79 Indeed, non-residents constitute the majority of applicants for Australian design registrations.Footnote 80 An exception to this trend is for clothing manufacturing, where applications from Australians outnumber those from non-residents. Indeed 20% of all Australian design registrations in 2016 were for clothing manufacturing with just 4% coming from non-residents.Footnote 81 The most prolific applicant is Australian designer Zimmermann with 668 applications primarily for dress designs.Footnote 82
A question that emerges is – where are the foreign fashion designers? It seems paradoxical that foreign applicants dominate the Australian designs register except with regard to clothing manufacturing. One explanation is likely to be the historical absence of a grace period in Australia. That is, Australia (until recently) did not allow a grace period prior to the file date, meaning that if a designer staged a live fashion show or posted images onto social media, this would populate the prior art base and prevent design registrations of those exposed designs. While Australian-based designers would be aware of this trap, foreign designers may be less aware of Australian law, or they may consider Australia too small a market, or a season (and a hemisphere) outside the collections shown in Paris, Milan, London and New York to prioritise a design registration.
4.3.2.2 No Grace Period – Impact and Reforms
Different government reviews of the designs system found that Australia was one of the few industrialised countries without a ‘grace period’Footnote 83 and this was a major deterrent from using the design system.Footnote 84 For example, the Australian Council for Intellectual Property (ACIP) found that designers would ‘inadvertently or due to ignorance of the law’ publish or reveal their design and thereby ‘forfeit all possible rights in that design’ by seeding the prior art base.Footnote 85 In IP Australia’s 2020 survey, designers complained that the linear design rights system was in conflict with good design practice that ‘is iterative, with rounds of ideation and prototyping based on different inputs’.Footnote 86 Designers complained about having to register a design before disclosing it (to test market demand), and this dissatisfaction was compounded by the inability to change that design after applying to register it.Footnote 87
It is argued that for many designers with concerns about prior disclosures, registering a shape trademark for an object, such as a shoe, would be an attractive option. Trademarks are not tested for ‘newness’ against the prior art making any prior exposure of a design irrelevant. In addition, there are no cumulation bars to dual design/trademark rights (nor patent/copyright and trademark rights) in Australia.Footnote 88 Therefore, while the copyright/design overlap provisions would typically expel a fashion designer from copyright and towards designs protection, the limitations on design rights (particularly the historic lack of a grace period) might shepherd fashion designers, particularly international designers, to seek a shape mark for 3D objects.
Recent reforms to the Designs Act 2003 (Cth) in effect from September 2021 have introduced a 12-month grace period (prior to filing) and brings Australia closer to international norms.Footnote 89 This, and other changes designed to provide flexibility and simplicity, may influence the patterns of registrations from September 2021.Footnote 90 Nevertheless, the inherent benefits of securing a shape mark (discussed in Section 4.3.3) would likely still attract designers to trademarks, though the reforms might mean that more dual design and trademark rights are applied for post-reforms.
4.3.3 Trademarks
The advent of the Trade Marks Act 1995 (Cth) introduced major changes to comply with Australia’s obligations under the TRIPS Agreement.Footnote 91 The definition of a ‘sign’Footnote 92 was broadened to expressly include shapes, sounds, colours and scents.Footnote 93 The protection of 3D shapes therefore has a different foundation to US trade dress law, which was influenced by state-based unfair competition law.Footnote 94 In Australia, unlike the United States, there is no requirement to show actual use or an express intention to use at the time of application; instead marks can be subject to removal for non-use after registration.Footnote 95 Indefinite renewals are permitted (without re-examination) so long as the renewal fees are paid.Footnote 96
As with other TRIPS member countries, there were concerns that the express codificationFootnote 97 of shape trademarks could have an anti-competitive effect if mark owners were to have monopolies over functional shapes.Footnote 98 A classic example is a basic bottle shape, or in a fashion context, the shape of a basic T-shirt. Both have an opening and a shape designed to contain a substance, for example, a liquid or a human torso. These basic shapes serve a critical utilitarian function and to grant a trademark monopoly over such shapes might inhibit competition.
Most jurisdictions proscribe against registration of functional shapes though express statutory bars.Footnote 99 However, for reasons that remain ‘obscure’,Footnote 100 there are no express legislative provisions in Australia to refuse functional shapes despite inclusion of such provisions in earlier drafts of the current ActFootnote 101 and in similar Commonwealth jurisdictions.Footnote 102 Instead, functionality is dealt with as an aspect of distinctiveness at registration or when assessing an infringer’s impugned use (ie, where use of functional aspects of the mark are considered non-infringing).Footnote 103 In his comparison of different jurisdictions, Michael Handler has argued that this is a ‘suboptimal way of managing the problems raised by functional marks’.Footnote 104
The Australian Trade Marks Office (ATMO) tries to factor in functionality into the assessment of distinctiveness, that is, whether ‘other persons, trading in goods of the relevant kind and being actuated only by proper motives … will think of the sign and want to use it in connexion with similar goods’.Footnote 105 If a shape mark has ‘significant functional features there is a strong likelihood that other traders will need to use that shape for their similar goods’ in the context of fair competition.Footnote 106 However, evidence of use can be presented to show that a functional shape has become in fact distinctiveFootnote 107 or has acquired ‘distinctiveness through use’.Footnote 108 Nevertheless, it appears that using distinctiveness as a filter against functional marks is ‘imperfect’.Footnote 109 In his analysis of the Australian Register, Handler identified a ‘significant number’ of shape and colour marks that were prima facie functional. Conceding that it was impossible to know if functionality was considered by the ATMO as such records are not publicly available, Handler identified several shape marks that were rejected in other jurisdictions on functionality grounds but were accepted for registration in Australia by the ATMO.Footnote 110
4.3.3.1 Australian Shoe Shape Litigation
In Global Brand Marketing Inc v YD Pty LtdFootnote 111 (Global Brand) – the only reported shoe shape infringement case in Australia – details of the prosecution history were discussed in the judgment. In that case, Diesel S.p.A (Diesel) the licensee of Global Brand Marketing, was able to register the ‘Shape’ trademark (#986713) for the overall appearance of its popular square toed sneaker and the ‘Sole’ trademark (#986709) for the embossed under-sole of the shoe (Figure 4.5).
Registered shape marks of Diesel:Footnote 114 (left) shape mark (#986713); (right) sole mark (#986709).
The Federal Court of Australia noted that the ATMO examiner originally objected to the shape mark on the grounds that: ‘[The] trade mark consists of the shape of a shoe. The shape is an ordinary shoe shape. Other traders should be able to use an ordinary shoe shape in connection with goods or services similar to yours.’Footnote 112 In response, Diesel limited the registration with an endorsement emphasising distinctive aspects of the registration such as the ‘stylised letter D’, and the registration was accepted.Footnote 113
In evaluating the validity of the shape mark, the court reviewed the authorities and gave its support to the principle that non-functional shapes can operate as Australian trademarks. Moreover, the court in construing the infringement claim, declared that YD were also using its own shoe shape and sole as shape trademarks of YD. The court held that YD’s trademarks as used by YD were not deceptively similar to Diesel’s Shape and Sole marks and therefore not infringing. Although the plaintiffs were not successful, it was significant that Justice Sundberg found that both parties had valid trademark rights in the shape of their shoes as well as the soles of those shoes. In relation to the plaintiff’s registered marks, his Honour found that the non-functional and non-descriptive features overwhelmed the functional and common features of the marks.Footnote 115 This decision likely gave traders some confidence to apply for trademark registrations for distinctive shapes related to footwear.
Given all the factors discussed above – increased demand for sneakers, a culture of casual privacy, limitations of copyright and designs law and favourable trademark courts – it is hypothesised that shoe designers are increasingly reliant on protecting footwear by registering them as 3D shape trademarks. Although causation is not argued, it is suggested that 3D shoe registrations may be on the increase due to these various factors.
4.4 Method
To examine whether and how fashion designers have employed Australian trademark and design registrations in relation to shoes, publicly available trademark and design registration data from IP Australia was extracted. In relation to trademarks, this study uses two sources of data. First, trademark application data from IPGOD2021Footnote 116 was extracted by a research assistant for the period January 1, 1996 (commencement of the Trade Marks Act 1995 (Cth)) until December 31, 2021 (25 years).Footnote 117 This data was used to identify trends over time. Second, in order to examine specific trademark applications in detail, the author located these via the online Australian Trade Marks Register (the Register).Footnote 118 Additional data was retrieved from the online Australian Designs Register.Footnote 119 All coding was done by the author.
A key limitation of the study is that the number of applications in the dataset is small. Descriptive statistics based on a small number of applications are sensitive to change if a small number of new applications are added to the dataset. Nevertheless, the applications cover the entire population of available applications in the period of inquiry, so are in this sense representative. Still, this study does not make any predictive statements and inferences are only drawn with caution.
4.5 Results and Discussion
4.5.1 Overview of Trademark Application and Registration Data
4.5.1.1 Shape Relative to All Applications
Over the 25-year period (January 1, 1996–December 31, 2021) there were 1,486,174 trademark applications to IP Australia. Of these, only 3,631 were for shape trademarks, that is, less than 1% (on average only 0.24%). The bars of Figure 4.7 show that while there was some enthusiasm for shape mark applications in the first 10 years of the Trade Marks Act 1995 (Cth), the number of shape applications slightly declined after 2015. This decline is significant in light of the fact that trademark applications in general (ie, for non-shape marks) increased dramatically over the same period.Footnote 120 The relative proportion of shape to total marks (line) can therefore be seen to decline over time. In other words, Figure 4.6 shows that both the nominal and relative popularity of shape trademarks fell after their initial popularity. This is consistent with previous findings by Amanda Scardamaglia and Mitchell Adams.Footnote 121
Shape trademark applications (actual) and relative to annual trademark applications per year (Janaury 1, 1996–December 31, 2021).
Figure 4.6 Long description
The vertical axis on the left ranges from 0 through 250, and the axis on the right ranges from 0.00 through 0.90 percent. The horizontal axis presents a time period. The bars represents the number of applications over the years which are as follows. (1996, 200), (2005, 170), (1997, 160), (1998, 175), (1999, 160), (2003, 160), (2004, 155), (2014, 154), (2015, 150), (2008, 150), (2010, 150), (2012, 140), (2014, 140), (2021, 135), and so on. The line represents the percentage of annual applications, which originates at (1996, 0.80), drops at (2000, 0.30), fluctuates, and terminates at (2021, 0.18). The values are estimated.
Class 25 shape trademark applications (actual) and relative to annual shape trademark applications per year (January 1, 1996–December 31, 2021).
Figure 4.7 Long description
The vertical axis on the left ranges from 0 through 250, and the axis on the right ranges from 0.0 through 18.0 percent. The horizontal axis presents a time period. The bars represent the number of shape applications over the years, which are as follows: (1996, 200), (2005, 170), (1997, 160), (1998, 175), (1999, 160), (2003, 160), (2004, 155), (2014, 154), (2015, 150), (2008, 150), (2010, 150), (2012, 140), (2014, 140), (2021, 135), and so on. A dashed line representing the linear number of shape applications also originates at (1996, 160), intersects the bars and terminates at (2021, 120). A solid line representing class 25 as a percentage of annual share applications originates at (1996, 6.0), fluctuates, and terminates at (2021, 16.0). The values are estimated. Another dashed line representing the linear class 25 as a percentage of annual share applications originates at (1996, 6.0), fluctuates, and terminates at (1996, 8.0). The values are estimated.
4.5.1.2 Applications Related to Fashion
Fashion designers can apply for marks across a wide range of goods and services. For the purpose of this chapter, the focus was on shape applications under Nice Class 25 (clothing, headgear and footwear)Footnote 122 between January 1, 1996, and December 31, 2021. Fashion designers also applied for shapes under other classes but in much smaller numbers. For example, under Class 18 (bags and wallets) there were 92 shape applications, and under Class 14 (jewellery) there were 105 shape applications for the same period.
Of the 3,631 shape mark applications, 226 (6.2% or 226/3,631) were for Class 25 (clothing, headgear and footwear). Figure 4.7 plots the total number of shape applications per year (bars) and the percentage of shape applications that were in Class 25 (line). Figure 4.7 shows that while the nominal number of shape applications declined over time (descending dotted trend line), the proportion that were shape applications in fashion (Class 25) grew over time (ascending dotted trend line).
Bearing in mind the small population size of 3,631 shape mark applications with 226 in Class 25, from Figures 4.7 and 4.8 we can infer that while shape applications lost their initial popularity, the interest in shape trademarks for Class 25 (ie, the fashion industry) grew in both nominal and relative terms.
Whole shoe trademark applications and status (
, January 1, 1996– December 31, 2021).
Figure 4.8 Long description
The vertical axis represents the number of applications that range from 0 to 10. The horizontal axis represents the shoe style, including flip-flops or thongs, sneakers, sandals, Derby lace-up, Crocs, boots, and Birkenstock Sandals. The maximum and minimum number of accepted applications are for sneakers, boots, crocs and flip-flops or thongs, which are 9, 5, 3, and 1, respectively. The maximum and minimum number of pending applications are for Birkenstock Sandal and Sneaker, which are 7 and 5, respectively. The maximum and minimum number of accepted applications are for boots, sandals, sneakers, flip flop or thongs, Derby lace up and Croc, which are 7, 6, 6, 4, 1, and 1, respectively.
4.5.2 A Closer Look at Shape Marks and Class 25 – Footwear
Of the 226 shape trademark applications in Class 25, there were 117 shape mark applications specific to footwear. That is, 52% (117/226) of all shape applications in Class 25 were for shoes. Of these 117 shoe applications, 55 (47%) were for 3D representations of the whole shoe as a shape trademark; 23 (19%) for the sole, 37 (31%) for a 3D device or badge and 2 (2%) for a toe cap or filigree.
4.5.2.1 What Kinds of Whole Shoes and Success Rates?
Of these 55 whole shoe applications, Figure 4.8 shows that there were 7 categories of shoes, with sneakers being the most popular at 36% (20/55 applications) followed by boots (22% or 12/55). Birkenstock submitted 7 (13% or 7/55) applications in 2019. The outcomes of these applications were coded as ‘Accepted’,Footnote 123 ‘Pending’Footnote 124 or ‘Rejected’Footnote 125. Scardamaglia and Adams studied 975 shape mark applications over a 20-year period (January 1, 1996–December 31, 2015) and found that the registration of shape marks had a 37.3% success rate.Footnote 126 In this smaller sample of 55 whole shoe applications, excluding 12 pending applications, the success rate was 42% or (18/43 applications). The top three applicants in terms of number of filings were Birkenstock, Action Africa and Vans. The majority of all applicants were foreign companies.
The 55 whole shoe applications represented 18 different designers. There were a cluster of dominant international applicants, including Birkenstock (sandals) (13% or 7/55 applications), Vans (sneakers) (11% or 6/55 applications) and Action Africa (sandals) (11% or 6/55 applications).
4.5.2.2 Trademark and Design Rights Overlap
As discussed above, between January 1, 1996, and December 31, 2021, there were 226 shape trademark applications in Class 25 (clothing, footwear, headgear). Looking at each application, there were 117 shape mark applications specific to footwear. That is, 52% (117/226) of all shape applications in Class 25 or 3.2% (117/3631) total shape applications were for footwear. Examining IP Australia’s Designs Register94 between January 1, 2004 (the commencement of the Designs Act 2003 (Cth)) and December 31, 2021 (19 years), there were 120,355 design applications. Of these, 1.4% or 1,697 were applications relating to shoe designs in in class (02-04Z).95
Of the 18 shoe designers with trademark applications for shapes, 7 had similar or overlapping design applications for at least one of their designs. Five were international designers – Birkenstock IP GmbH, Crocs, Diesel/World Brands, Bolt Premium Workwear and Globe International. Two were Australian – RM Williams and Sole Surfer. Therefore, it cannot be said that shoe designers are totally ignoring the registered designs system; however, it is clear that a growing number are seeking out trademark protection as an adjunct to or in lieu of registered design protection.
4.6 Discussion
The empirical data reveals that while overall demand for Australian shape trademarks is low and declining, the demand for such marks for fashion goods has increased in real and relative terms. A significant portion of this demand has come from the fashion industry, particularly from shoe applicants seeking a 3D shape trademark. This would suggest that shoe designers (particularly some sneaker designers) view shape trademarks favourably. As discussed earlier, this demand could be a response to Australia’s culture of casual piracy and/or the perceived limitations of other IP rights such as design rights.
A more general explanation for the increased demand for shoe trademarks is an overall increase in the aggregate demand for shoes. In relation to Australia, the footwear market has grown significantly. For example, in 2004, the retail value of the market was US$1.3 billion.Footnote 127 By 2017, the Australian footwear market reached a value of US$3.6 billion.Footnote 128 This mirrors global trends, where shoe sales have grown exponentially, becoming a critical product category for fashion designers and sportswear brands.Footnote 129 A key driver of this growth has been sneakers. MarketLine Australia reported in 2017Footnote 130 and 2021Footnote 131 that the ‘growing popularity of sports footwear is driving growth in the market, thanks to the “athleisure” trend that has swept across the world’. Significantly in 2021 they noted, ‘The cultural shift of athletic footwear being repurposed as everyday wear has changed the dynamics of the footwear market.’Footnote 132 This is not just an Australian phenomenon. McKinsey & Company have reported that globally, fashion leaders predict that casual wear, sportswear and sneakers are the categories with the greatest growth potential.Footnote 133 This trend began before the global pandemic but no doubt accelerated during stay-at-home work mandates in Australia as well as other countries.
There are also fascinating, systematic cultural changes that are impacting the growth in demand for sneakers. In particular, the growth of ‘sneakerhead culture’ and the increased interest by men for fashion (typically expressed through an interest in sneakers). Yuniya Kawamura argues that ‘men are reclaiming adornment and fashion’, expression men had abandoned due to the adoption of the business suit as ‘uniform since the Industrial Revolution’.Footnote 134 However, ‘to avoid being “effeminate,” girls and women are shut out from the community’ leading to a male dominant sub-culture of ‘sneaker-heads’ or ‘sneaker-holics’.Footnote 135 This gendered demand is reflected in economic studies that show the footwear market is also pivoting male. For example, in Australia in 2017, the ratio of women’s to men’s footwear was 53.4% to 34% of the dollar value of the overall market.Footnote 136 In 2020, this gender gap closed with the ratio of women’s to men’s footwear becoming 42% to 41.4% of the market.Footnote 137
Admittedly, it is difficult to parse out how much of this gender swing relates to the pandemic. Australia has an uneven labour force participation between genders,Footnote 138 and the confinement of both male and female office workers may have increased demand for sneakers unevenly. Nevertheless, even pre-pandemic, the popularity and marketing of sneakers towards men was evident. Kawamura, points out that ‘boys and young men are the biggest consumers of sneakers’ and this is reflected in the supply of sneakers where ‘there are far more varieties and choices for male sneakers than female sneakers’.Footnote 139 As sneakerhead culture becomes more visible,Footnote 140 and profitable, how designers respond to the increased influence of the male customer will be fascinating.
The increase in competition in the global sneaker market shows no sign of slowing down. With that there will likely be increased demand for IP protection in all jurisdictions. This study has shown that in Australia shoe designers have sought out 3D shape trademarks as an addition to (or instead of) registered designs. Other jurisdictions are dealing with shoe designers pressing other types of rights. For example, difficulties with enforcing trade dress rights in the United States has led to interesting strategies from some designers. The brand Off-White has successfully been granted a US registration of the ironic trademark ‘FOR WALKING’, which is used on its sneakers and other shoes.Footnote 141 Nike, has amassed over 34,000 patents globallyFootnote 142 and recently sued Lululemon for infringement of textile patents used in Nike’s flyknit sneaker range.Footnote 143
Nevertheless, for many designers, it is the overall appearance of the product, that is, the shoe design, that is seen as warranting protection. The increase in shoe demand and alleged copying of designs will undoubtedly lead to further calls for the United States to adopt a form of sui generis design right for fashion. Such advocates should view Australia as a cautionary tale. This chapter has argued that the success of fashion design rights requires a holistic consideration of the culture, commerce and the matrix of related rights. A problem for jurisdictions such as Australia where the matrix allows for and tacitly encourages the registration of shoes as shape trademarks, may be the anti-competitive effects of this demand. As with other jurisdictions, trademarks in Australia can be registered indefinitely without substantive re-examination. Although the dataset in this study is fairly small, it is clear that many significant brands are using the Australian trademark system to protect the overall appearance of their goods. In Australia, the majority of footwear trademark applicants are foreign companies. Given a concern of the government is the stimulation of the domestic design industry, an increase in foreign-owned trademarks over shapes is an issue that requires particular vigilance. And it will be interesting to observe whether demand for more time limited design rights increases now that changes (including the inclusion of a grace period) have been implemented.
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