Opportunity for Yves Saint Laurent To Go On Offensive

A previous article by CanadaFashionLaw discussed the pending trade-mark infringement case in the US between Christian Louboutin and Yves Saint Laurent.

To quickly recap, Christian Louboutin, a luxury brand notorious for its shoes that have red soles on the exterior of shoes, is suing Yves Saint Laurent in New York for trade-mark infringement, based upon Yves Saint Laurent inclusion of red shoes with red soles in a fashion show earlier this year.  At the time the action was commenced, Christian Louboutin was the owner of a registered trade-mark in the US for the red soles, however, trade-mark applications were still pending in Canada and Europe.

Interestingly, Christian Louboutin's trade-mark application has progressed in Canada to the advertisement stage, which signifies the start of the opposition period. 

This is significant as it may provide an opportunity for
Yves Saint Laurent to go on the offensive and attack the registrability
of Christian Louboutin's trade-mark.

In Canada, in order for a trade-mark to register, the trade-mark application is subjected to a rigorous and lengthy process.  At first, the trade-mark is filed with the Canadian Trade-marks Office.  The trade-mark application is examined by the Canadian Trade-marks Office for substantive and administrative issues.  Substantive objections may be raised at this point, for example the trade-mark may be "clearly descriptive or deceptively misdescriptive", the trade-mark is confusingly similar and therefore conflicts with a previously registered third party trade-mark etc.  Once (or if) the trade-mark application moves beyond the examination stage, the application is then advertised in the Canadian Trade-marks Journal.  This signifies the start of the opposition period. 

The opposition period places the onus on other brand owners to protect their own brand as it affords "any interested party" the opportunity to police third party trade-marks that may register in Canada.  If a brand owner wishes to contest the registrability of the trade-mark, it may oppose the trade-mark application.  An opposition is essentially a tribunal that has been set up within the trade-mark registration process.  It is akin to court in that pleadings are submitted, evidence is compiled, arguments are put forth.  There is also an opportunity for cross-examinations and oral hearings.  The Trade-marks Opposition Board determines whether the trade-mark application is registrable or not.  It can pose a significant obstacle to the trade-mark applicant. 

There a number of possible grounds of opposition identified in the Trade-marks Act.  Yves Saint Laurent may be most interested in the following:

a) the trade-mark is not registrable; and/or

b) the trade-mark is not distinctive.

If Yves Saint Laurent wishes to act, it must do quickly.  A statement of opposition must be filed with the Canadian Trade-marks Opposition Board within two months of the date of advertisement of the trade-mark application.  (However, there is always the possibility of requesting a limited extension of time). 

It will be interesting to see whether anything will materialize or is Christian Louboutin's exclusivity over its red soles will be statutorily recognized in Canada.

Below is a summary of Christian Louboutin's Canadian trade-mark application:

Trademark App. No. & DateWaresDescription
 red sole medium
February 17, 2010
Footwear namely shoes, ballet flats, boots, ankle boots, thigh boots, pumps, sandals, sneakers, clogsThe trade-mark consists of the colour red applied to the entire outer surface of the sole, as shown in the drawing.