The Gift that Keeps on Giving

There are a couple of common themes here at CanadaFashionLaw:

 

1.                  We love the business of fashion

2.                  We seriously geek out over intellectual property, especially trade-marks

3.                  We love our job!

 

We attended an event last night that simply reaffirmed point numero three!

 

Once in a while an organization comes across our desk that makes us believe in humanity!  Billable targets go out the window and our strong desire to “make a difference” becomes our modus operandi.  Enter FINCA, who we work for on a pro bono basis.    

 

FINCA is an international micro-financing organization that focuses on providing “financial services to the world’s lowest-income entrepreneurs so they can create jobs, build assets and improve their standard of living”.  FINCA provides small loans at reasonable interest rates to individuals in developing countries that need a little help.  The vast majority of the loan recipients are women who are able to create their own business, which benefits their immediate family and the local economy.  It’s really a beautiful thing! 

 

As with all things, we’re able to tie this back to fashion.  (Fashion really is omnipresent in our world!).  Last night we attended a private event hosted by Burberry.  In support of FINCA, 15% of all profits of Burberry merchandise sales will be donated to FINCA.  In fact, this charitable offer is open to all customers up until Saturday December 8.  So if you’re in a festive and giving mood, perhaps consider buying your holiday presents at Burberry and dropping the name FINCA.  It may well be the gift that keeps on giving! 

Feeling the Burn

Unlike copyright and trade-marks, we don't often see fashion houses duke it out in the patent arena.  It's no surprise that the fashion world's interest was piqued when one of Canada's most successful athletic retailers, Lululemon, launched a patent design infringement case against Calvin Klein in the US. 

 

For those who had their bottle of bubbly chilled waiting for the outcome of the case, it appears that the bottle will stay corked.  Lululemon filed its Notice of Voluntary Dismissal today against Calvin Klein.  It's a pretty safe bet that the parties settled the matter - likely under confidential terms.  Although reaching a settlement is often the most cost effective and time efficient route for companies that are embroiled in litigation, it always presents a missed opportunity to set interesting case law for the fashion community. 

 

Stay tuned to CanadaFashionLaw for updates on other interesting cases. 

Hear ye, hear ye!

Sometimes when you're a start-up business or entrepreneur, life can be a little overwhelming.  It's a delight to see that the Canadian Intellectual Property Office is ensuring that this doesn't happen to small and medium business enterprises! 

 

Over the next few weeks, the Canadian Intellectual Property Office will be hosting a series of roundtable discussions throughout Canada with small and medium enterprises to ascertain what their experience is with Canada's intellectual property system.  It will be interesting to hear what the barriers and challenges face small and medium business enterprises in protecting and enforcing their intellectual property in Canada.  What works?  What needs a little mani-pedi-botox?  It will also be interesting to see if any changes are made to Canada's intellectual property system, to better assist the small and medium business enterprises.

 

Here's a summary of the roundtables. if you're interested in attending the roundtables to voice your opinion or to hear what others have to say:

 

• Halifax: November 21 and 22
• Montreal: November 28 and 29
• Edmonton: December 5 and 6
• Ottawa: December 10 and 11
• Toronto: December 11
• Waterloo: December 12

 

Beautifully Legal? Legally Beautiful?

Although CanadaFashionLaw tries to steer clear of shameless plugs, we couldn't resist letting you know about our upcoming event that will be of interest to players in the cosmetics and beauty product industry.   

 

CanadaFashionLaw will be participating in a free breakfast seminar that looks at the legal issues surrounding the beauty industry.  Our aim is to help you cleanse your pores and launch into the Canadian market fresh-faced!  This seminar will tackle branding, regulatory, corporate/commercial and patent laws. 

 

If you think that your business strategy may need a little mani-pedi-botox, feel free to check out the invite: 

 

 

 

The ROM Goes BIG

CanadaFashionLaw was delighted to be given an exclusive invitation to the Royal Ontario Museum’s preview event of its newest installation in the Patricia Harris Gallery of Textiles & Costume, BIG.  The exhibit showcases 40 articles from the ROM’s collection of nearly 50,000 textiles and costumes. 

During the event, Dr. Alexandra Palmer (the exhibit’s curator) talked about her vision for the Gallery.  This, in particular, piqued CanadaFashionLaw’s interest.  She gets it.  Fashion and textiles go beyond “pretty”.  Fashion and textiles reflect significant cultural and social values that change with the times.  Does a woman’s corset represent more than a strong desire for an hour-glass shape?  Is it that different from the ancient Chinese tradition to bind women’s feet to maintain a 7.5 cm length?  The exhibit spans different cultures and time periods and allows the audience to draw their own conclusions.  If you’re looking for a little modern day controversy, the exhibit displays one of John Galliano’s last haute couture dresses he created at the Dior house before his dismissal.  (CanadaFashionLaw previously covered this case.  If you need a refresher, click here).

Dr. Palmer enthusiastically explained that the ROM wishes to be a catalyst and a forum to foster innovation, conversation and debate for the fashion and textiles community.  It was clear that through the ROM, Dr. Palmer’s infectious energy and enthusiasm will help shape the voice of the Canadian fashion industry. 

CanadaFashionLaw strongly encourages you to check out the ROM’s BIG exhibit, which will be open until Fall 2013. 

Glass Half Empty for Industrial Design Protection in Canada?

An interesting decision was recently issued by Canada’s Federal Court, which has sparked some interest in the intellectual property arena: Bodum USA, Inc. and PI Design AG v. Trudeau Corporation (1889) Inc.  The case focuses on industrial design infringement, a type of intellectual property that is rarely litigated in Canada.

What is an Industrial Design?

Before delving into the case, let’s get back to basics.  Industrial design is not as commonly known (or understood) as its intellectual property counterparts: patents, trade-marks or copyright.  Industrial designs seek to protect ornamentation on functional articles, specifically:

“features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye”

On the face of it, you would think that this type of protection would be extremely useful for consumer products and fashion designs and accessories.  Unfortunately, this case simply reiterates that industrial design protection is a more fickle type of protection in Canada.    An examination of this decision will illustrate why.

 Who Are the Players?

The Bodum brand was established in Denmark in 1944 and is well known for its kitchen products.  PI Design AG owns several industrial design registrations in Canada for the shaping of glasses.  PI Design AG licenses these industrial designs to Bodum USA Inc., who distributes the Bodum products in the US, Canada, Mexico and South America. 

Trudeau Corporation (1889) Inc. is a Quebec-based company that was founded in 1889.  It designs, imports, develops and markets kitchen products in Canada and internationally.

What’s At Stake?

Bodum owns industrial design registrations for glassware in the following shapes:

 

 

 

 

These glasses were first made available in Canada towards the end of 2003 or the beginning of 2004.  The Canadian Intellectual Property Office issued industrial design registrations for these glasses on February 1, 2006.  No additional variations of the industrial designs were registered by Bodum.

Trudeau introduced its glasses to the Canadian market in the latter half of 2006:

 

 

Bodum did not take too kindly to the competing products and promptly commenced an action claiming industrial design infringement and unfair competition, which is contrary to the Trade-marks Act.  Unsurprisingly, Trudeau denied Bodum’s allegations.  Trudeau kicked it up a notch by seeking to invalidate Bodum’s industrial design registrations. 

What are the Issues Before the Court?

The Federal Court was tasked with considering the following issues:

      a)               Did Trudeau infringe Bodum’s industrial designs?

b)                Are Bodum’s industrial design registrations invalid?

c)                Does Trudeau’s marketing constitute unfair competition via an offence of confusion?

What was the Decision?

If you’re looking for a quick answer, here it is: Bodum lost out – there was no infringement or confusion.  Trudeau reigned supreme – Bodum’s industrial design registrations were held to be invalid.

How Did the Court Reach that Decision?

It is important to understand some fundamental tenets of industrial design law in Canada:

• Industrial designs protect visual features of an article. 
• Industrial designs do not protect functionality.
• An industrial design can be registered if it satisfies the above criteria and does not closely resemble any other registered industrial design.
• In order for there to be infringement, the articles must be substantially the same.

Trudeau called into action the only expert witness.  The expert had a degree in industrial design and was an industrial design consultant.  The expert came to the following conclusions:

 

• Bodum’s glass shapes were not particularly unique.  There were minimal differences between Bodum’s glasses and others in the marketplace.
• He did concede that the interior and exterior lines of the respective parties’ products were different.

The court recognized that there was a functional aspect to the double wall configuration of the glasses: the space between the walls helped to keep hot drinks warm and cold drinks cool.  Thus, Bodum was not granted a monopoly over all double wall glasses in Canada, but rather the look of the double wall glasses as identified in the industrial design registrations. 

The major difference between Bodum and Trudeau’s glasses lay in the shaping of the interior line of the glass: Bodum’s glasses were convex whereas Trudeau’s glasses were at first convex and then became concave.  Both parties’ exterior line are convex.  Ultimately the court decided that the Trudeau glasses had “almost none of the features of the configuration of industrial designs in question”. 

The court recognizes that industrial design registrations enjoy a prima facie presumption of validity – but this is a rebuttable presumption.  The court considered Bodum’s industrial design registrations in light of the prior art and held that they were not substantially different.  As such, the industrial designs did not meet the criteria for registration and, as such, the registrations will be expunged.

What Does This All Mean?

Let’s keep in mind that this may not be the end of it.  This decision was at the trial level.  Bodum may appeal this decision.  We have yet to see.  CanadaFashionLaw will keep you posted.

This decision confirms that relying on industrial designs as the only type of intellectual property protection is risky.  It is best to try to augment industrial design protection with other types of intellectual property protection.  Generally, industrial designs are known to be a a very narrow form of protection in Canada.  However, in Canada we have seen intellectul property laws evolve with industry's demands.  For example, Metro-Goldwyn Meyer successfully struggled for Canada to recognize sound marks.  Perhaps Canada needs a strong industry player to push the envelope through Canada’s judiciary to turn industrial design protection from a sleeping giant to an effective tool for businesses to protect their creative ingenuity. 

Model Behaviour

With Toronto's Fashion Week kicking off this week, Toronto's streets have been filled with models strutting between "go sees" for the last couple of weeks.  We thought this would be a good opportunity to see what's happening on the modelling side of the fashion industry. 

 

CanadaFashionLaw has taken note of a growing awareness within the fashion industry of health issues specific to fashion models.  Click here to read up on some retailers' fresh approach to their advertisements.  Also, click here to read up on how models are taking matters into their own hands to create a more healthy work environment.

 

Refreshingly, this past weekend Ryerson's School of Fashion hosted a conference dedicated to advocating for increased diversity on the catwalk, including age, size and race. 

 

Across the border, a number of modelling agencies have found themselves to be in hot water over a class action suit claiming that the agencies have been mixing agency funds with funds held on behalf of their models and profiting off the interest accrued. 

 

This is not the first time that modelling agencies have been involved in a class action suit in the US.  In fact, in 2005 they were subject to a multi-million dollar suit for fixing rates and commissions between agencies.

 

 

 

 

Be It Resolved: IP Really Is Everywhere!

Relishing the opportunity to watch smart, meaningful and intelligent debate, CanadaFashionLaw has been seriously enjoying the US election debates.  Imagine our delight when intellectual property laws and counterfeiting snuck into the second presidential debate, albeit for a few precious seconds.  It got us thinking…what is the significance of a country’s domestic intellectual property laws? 

Intellectual property laws are critical to businesses.  Intellectual property laws protect significant business assets.  They protect ingenuity, creativity, inventiveness…the list goes on and on.  At the end of the day, intellectual property laws enhance entrepreneurship, which can only encourage the private sector to flourish and thus benefit a country’s economy.

But not all countries treat intellectual property the same and this can significantly impact the private sector’s decision making, not only in terms of where the business operates but also in respect of the country in which it chooses to enforce its rights.  A country that has weaker intellectual property laws may attracts fewer foreign businesses to those markets.  (A previous article on CanadaFashionLaw looked at the business rational behind multi-jurisdictional litigation.) 

As fabulous as Canada’s private sector is, Canada needs to attract foreign businesses to help keep the Canadian economy robust.  Strong intellectual property laws can be a carrot to bringing those businesses to our market.  The intellectual property law community recognizes this and wants to work with and advocate for businesses to help shape intellectual property laws that assist businesses flourish in our economy.  For example, the Intellectual Property Institute of Canada (“IPIC”) ensures that it brings intellectual property law issues to the table at international trade negotiations.  IPIC and your intellectual property law professional are always interested in hearing about the challenges that the private sector faces when launching their business in Canada. 

Don’t be shy speak up!  Help us help you.

End of the Road for Christian Louboutin v. Yves Saint Laurent

It appears that fashion's most infamous case has finally come to a close.  If you want to read up on the Christian Louboutin v. Yves Saint Laurent case, you'll find a full summary here.  Both parties seemingly came away from the Appeal decision satisfied: Christian Louboutin's trade-mark registration remained valid and exclusivity was maintained with respect to red soles with contrasting shoes; Yves Saint Laurent was found not to infringe with respect to its red shoes, red soles color configuration.

 

As of today (October 16), Yves Saint Laurent has filed submissions with the Appeals court seeking it dismiss its various counterclaims against Christian Louboutin.  It appears that both parties are intent on putting this matter behind them and continue to focus on their respective businesses. 

Speaking Engagements on Fashion Law

The summer is over and tans are starting to fade.  September came with a vengeance and is almost over.  It's been a busy time here at CanadaFashionLaw and it appears that it is only going to get more busy.  But we love all things fashionably legal and so we're up for the challenge.

 

Below is a quick summary of a number of speaking engagements coming up for CanadaFashionLaw owner, author and operator, Ashlee Froese:

 

• Presenting at the Intellectual Property Institute of Canada on October 12, 2012 in Vancouver, British Columbia on protection fashion designs in Canada through intellectual property laws;
• Speaking at the Queen's Business Forum on the Fashion Industry on November 2, 2012 in Kingston, Ontario on laws affecting the fashion industry;
• Hosting a legal roundtable series on laws affecting the fashion industry throughout 2012 and 2013 with the Fashion Group International - Toronto Chapter;
• Hosting a roundtable discussion at the International Trademarks Association in Dallas, Texas on May 8, 2013 on Navigating Through Non-Traditional Trade-Marks and Industrial Design to Protect Fashion Designs.

If you're interested in attending any or all of these events, please feel free to reach out for further information.

 
 

 

Mon Dieu: Chanel Accused of Counterfeiting

France is known for its fashion.  Perhaps more importantly within the fashion world, France is known as being one of the last remaining champions of the petites mains: highly skilled tailors and seamstresses that are the “behind the scenes” technicians to Europe’s most notorious haute couture fashion houses.  In a surprising David v. Goliath decision, France demonstrated its support to the petites mains. 

World Tricot was a knitwear supplier to Chanel.  In 2009, World Tricot commenced an action against Chanel after it discovered a Chanel-branded cardigan for sale bearing a striking resemblance to knitwear created by World Tricot.  Claiming ownership rights over the knitwear design, World Tricot sought damages for counterfeiting and wrongful termination of a business relationship.  Chanel vehemently denied these allegations and counterclaimed that World Tricot was publicly disparaging Chanel’s reputation and goodwill.  Moreover, Chanel stated that they had never been accused of stealing the designs of a supplier in any of their 400+ supplier arrangements. 

At the trial level, Chanel was successful.  However, World Tricot stood its ground by appealing the decision, which ultimately resulted in Chanel paying €200,000 in damages for counterfeiting.  In today’s economy where manufacturing is globally outsourced and the domestic small shop is coming under increasing pressure, this decision is likely welcomed by France’s domestic manufacturers.  The decision is definitely a boost for the small business in the fashion industry.  There is no word yet on whether Chanel will appeal this decision to the French Supreme Court. 

Louboutin v. YSL Forced to Agree to Disagree

The fashion law community has been carefully watching Christian Louboutin and Yves Saint Laurent battle over red-soled shoes.  CanadaFashionLaw has kept its readers in the know every step of the way.  We’re pleased to provide a summary on the much anticipated appeal decision.  (If you’ve been hiding under a rock and need to catch up to this whole dispute click here). 

At first the twitter-verse heralded this decision as a definitive win for Christian Louboutin.  However, on closer examination this appears to be more of a win-win (or a lose-lose) situation.  Ultimately, co-existence is the name of the game – a concept that is common in the trade-marks world.  

First and foremost, the Appeals Court found fault in the District Court’s holding that a single color cannot serve as a trade-mark in the fashion industry.  (I can hear Tiffany’s breath a sign of relief).  Second, the Appeals Court confirmed that Christian Louboutin has acquired secondary meaning in the red-soled shoe.  However, here is the crux of the decision that lead to co-existence in the marketplace.  Christian Louboutin has only acquired secondary meaning of the red-soled shoes in respect of shoes that are in stark contrast with the red-soles.  So, Yves Saint Laurent’s use of red-soles on red shoes is not problematic.  As such, the Appeals Court has ordered that Christian Louboutin’s trade-mark registration be amended to reflect this limitation in the scope of protection, specifically:

 

“…to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe”.

It will be interesting to see if this judgment has wider implications and serve as a tool to competitors looking to limit a wide scope of brand protection secured by heavy hitting industry players.

Australian Law Butts Out Branding

This is not altogether related to the fashion industry but it’s pretty darned interesting!  And, let’s face it, here at CanadaFashionLaw, we can tie almost everything back to fashion!!!! 

 

Australia recently enacted probably the toughest law against the tobacco industry (commonly being referred to as the ‘plain packaging law’), which was recently endorsed by Australia’s highest court. 

 

Under this law, tobacco companies can only display the warning image depicting the perils of smoking on the tobacco packaging.  We’ve become accustomed to these images on tobacco packaging in Canada (pictures of eroded and disease gums and haunting images of cancer-eroded lungs).  What sets Australia’s new law apart is that these types of images are the only images allowed to be displayed on the packaging.  No trade-marks.  No logos.  No branding.  Just images of imminent death and decay.  That’s pretty harsh.  It definitely sends a message. 

 

Not surprisingly, tobacco companies in Australia were none too pleased about this and called into question whether the law was actually legal given that it devalued intellectual property rights.  Australia’s judiciary chose health policy considerations over branding rights.  The law will come into effect in December.  This will prove to be an expensive re-packaging project for tobacco companies.

 

International anti-smoking organizations are heralding this new law as progressive and necessary.  In fact, anti-tobacco lobbying groups in Canada are looking to amend Canadian legislation to mirror Australia’s tough stance.

 

So let’s look at the bigger picture here.  Oftentimes when laws are created, there is an underlying purpose – a policy.  In some way, the government is trying to achieve a higher purpose.  The legislation is simply the vehicle to this purpose.  Take the Trade-marks Act.  The overriding policy consideration is that the government wants to protect the consumer from confusion in the marketplace.  Thus, there are checks and balances in the Trade-marks Act that protect the consumer above and beyond the brand owner.  In the instance of Australia’s new law, there was a greater concern over public health than brand owners’ rights.  Where will the line be drawn?  Why is the tobacco industry targeted?  Will we see these types of developments happen in other industries?  The alcohol industry?  Or the food industry?  What about the fashion industry?  What if there was an increasing concern over animal rights whereby leather products became the target of tougher legislation that trumped intellectual property rights. 

 

We’ll keep you posted on developments to see if the Canadian lobbying groups get any traction.

French Connection Reaches out to Musicians

We all know that fashion and music are inextricably linked.  CanadaFashionLaw recently came across an interesting program offered by French Connection that helps Canadian musicians get noticed.  It’s refreshing when a large well-known brand lends its platform to burgeoning artists. 

The Artist of the Month program features one Canadian artist per month in the tracks played in all stores across Canada.  The album or single is featured at the cashier and consumers are able to obtain a free single.  Occasionally, French Connection will host special events whereby the artists play live.  However, this type of exposure is more limited to special events (i.e. Toronto hosting the Canadian Music Week).

It would be nice to see other large retailers reach out to Canada’s burgeoning artistic community. 

Designers: Get Your Hustle On!

Here at CanadaFashionLaw, we geek out on branding law.  But you know what really gets our mojo going (other than Ryan Reynolds and Tyrese)?  Helping emerging designers get exposure!  Now that summer is coming to a close (sad face), it’s time to get our hustle on again!  Ever eager to help Canadian designers put themselves on the fashion map, CanadaFashionLaw has put together a quick little guide to some opportunities geared towards helping designers at different levels get exposure.

Toronto Fashion Week

North America’s second biggest fashion show is back with some panache as IMG gets its well-connected hands on it.  (Click here to read up on why Toronto Fashion Week is getting a mani-pedi-botox).  Running from October 22 to 26, 2012 at the David Pecaut Square, Canada’s fashion darlings can share the spotlight with the likes of Joe Fresh, Pink Tartan, Lucian Matis, Rudsak, Vawk, etc.  Designer submissions are now being accepted.  More information can be requested from designers@fdcc.ca.  

Fashion's Night Out

Debuting in Canada for the first time, Toronto’s retail stores will be open late into the night on September 6, 2012 as part of renowned international fashion event, Fashion's Night Out.  (Click here and here to get a better understanding of Fashion's Night Out).  As always, the Toronto Fashion Incubator is lending a hand to help more junior designers get a piece of the action by opening up their doors to host an accessories and apparel shopping soiree as part of Fashion's Night Out.  If you’re interested in participating, you better drop a line as soon as possible to tfi@fashionincubator.com.

Katwalk at Cube Nightclub

Looking to shake up your Tuesday?  Every Tuesday night during the summer, Toronto’s Cube nightclub hosts a fashion event debuting the 2012 Fall/Winter collection of a number of retailers.  Examples include French Connection and Dear Frankie.

Toronto Fashion Incubator’s Press & Buyers Breakfast

Toronto Fashion Incubator continues to impress us at CanadaFashionLaw.  On October 2, 2012, it hosts its annual trade show geared towards connecting Canada’s emerging designers with the press and buyers.  This event is a great opportunity for new designers to get in front of key decision makers on a one to one basis.  If you’re interested in getting more information, contact TFI directly at tfi@fashionincubator.com.

Fashion Thursdays at Locus 144

Nestled in the heart of Toronto’s Liberty Village is Locus 144, a fantastic lounge that caters to those that have a passion for hip hop and fashion.  (A perfect combination!)  Locus 144 hosts fashion events on Thursdays that are geared to helping designers get their feet wet by hosting their own runway show.  Well-versed in hosting a myriad of events, Locus 144’s amicable management team are eager to assist upcoming designers get exposure in Toronto.  If you’re looking for information on hosting an event, show or photo shoot at Locus 144, drop a line to info@locus144.com.

If you’re going to any of these events, there’s a pretty good chance we may bump into each other!  Drop us a line if you are!

Fashionistas, do you have your ear to the ground on other events happening in Canada that will help designers get exposure?  Let us know!  CanadaFashionLaw loves to hear from you! 

Canada Gets Its Shop On!

A few weeks ago, CanadaFashionLaw broke the news that shopping event extraordinaire Fashion's Night Out was launching in Canada.  Almost instantly, the Toronto fashion community got very excited!  (Ya, that's right: Toronto Life cited CanadaFashionLaw as the source for the breaking news!  If only there was a "brush your shoulder off" emoticon!).

It looks like it's not only Toronto that's going to get its "shop on' on September 6, 2012.  Fashion's Night Out will be occurring throughout Canada in B.C., Ontario and Quebec.  Happily, it's not just confined to Vancouver, Toronto and Montreal, as some may presume.  Smaller cities in Canada are also getting a piece of the after-hours shopping pie, such as Surrey, Chatham and Cookstown. 

If you want to get more information on which stores and malls are participating in Fashion's Night Out, hit up www.fashionsnightout.com.  For the more Toronto-centric crowd, check out www.fno-toronto.com.

Happy shopping, y'all!

Sound Marks Just a Whisper in Canada

CanadaFashionLaw just wanted to give you a head's up that Canada has its first registered sound mark! 

It's been a long road for Metro Goldwyn Meyer (click here to get the scoop) but they finally have protection of their roaring lion sound.  Since the Canadian Trade-marks Office changed its practice to accept sound as a trade-mark, sound trade-mark applications have been slow to trickle in. 

To date, only a few brand owners are looking to expand the brand protection pie: Mars Canada, Red Robin International, Toys 'R' Us, Edgar Rice Burroughs, Intel Corporation, Cisco Technology and Steam Whistle Brewing.  There are no signs of fashion designers or retailers taking the plunge.  Fashionistas, have any suggestions? 

Toronto Fashion Week Gets A Little Botox

The twitter-verse was set ablaze this week by the surprising news that Toronto Fashion Week has been sold. This is an interesting development for North America’s second largest fashion week (following New York) and goes beyond a mere change in sponsorship.  Mastercard will continue as the title sponsor for the upcoming shows scheduled in October 2012.

Until recently, Toronto’s Fashion Week has been run by the Fashion Design Council of Canada, with Robin Kay at the helm.  Under the FDCC’s guidance, Toronto’s Fashion Week has fared well with attendance rising to 40,000 over a 5 day period.  Now with IMG in the driver’s seat, it’s a safe bet that Toronto Fashion Week’s bi-annual events’ exposure will increase significantly.

Simply put, as a global conglomerate IMG is an international leader in the sports, fashion and media industries.  Divided into a number of subdivisions, IMG specializes in licensing, generating media content and programming, running events, talent representation and brand identities.  Of course, IMG’s Fashion division is of particular to interest to CanadaFashionLaw.  Under this umbrella, IMG owns and operates a number of well-reputed fashion events around the world (think New York, Milan, Berlin, Tokyo, London, Miami, Russia, etc.), along with representing a number of models, photographers, stylists and fashion designers.  This degree of specialization, coupled with IMG’s hyper-connectedness to the media is a good sign that Toronto’s Fashion Week is moving in the right direction to be a serious platform for designers on the international scene.

Never one to miss a Toronto fashion event, CanadaFashionLaw is looking forward to getting her industry pass for the new and improved Toronto Fashion Week.  Hope to see you there on October 22 to October 26, 2012!

Copy that!

Canadian copyright lawyers have been banging their head against the wall for a couple of years now and CanadaFashionLaw hopes that this little bit of news will alleviate their headache!

You see, for years now, Canada has been trying to give its Copyright Act a little nip and tuck.  The Copyright Act was created in the 1920s and, as you can imagine, was a little out of touch with today's digital age reality.  There have been many attempts at revising the Act but each attempt has failed due to election calls. 

Finally, it looks like Bill C-11, otherwise known as the Copyright Modernization Act, is here to stay!!!  The Bill has been passed by the Canadian government and given the Royal Assent.

The Bill looks to tackle technological issues that affect copyright owners and users, such as internet search providers, user generated content mash-ups and 'digital locks'.  The Bill also looks to equalize photographers rights with those of other artists.  Also, exceptions to infringement have been expanded to include parody, satire and education.

So what happens now?  Well, as any fashionista knows, we may buy a shoe in the right size but we still have to work in it and iron out the kinks.  The same can be said of legislative change.  There will be a period of trial and error in applying the letter of the law to practical situations.

Fashion's Night Out in Canada?

Every Wednesday CanadaFashionLaw religiously reads the Trade-marks Journal issued by the Canadian Trade-marks Office (what can we say - we love trade-marks!!).  Something caught our eye that we thought was worthy of a quick blurb.

It looks like Advance Magazine Publishers Inc. (the owner of Vogue magazine) is seeking trade-mark protection for FASHION'S NIGHT OUT in Canada.  The application is based on a combination of use and proposed use and spans a myriad of wares and services.  

For those of you not in the know, give yourself a slap on the wrist!  Fashion's NIght Out is the brain child of the reverred Anna Wintour and essentially started as a shopping festival in Manhattan.  It happens one night a year (this year it's on September 6, 2012) and is an after-hours shopping extravaganza!  Its modus operandi is to "celebrate fashion, restore consumer confidence, and boost the industry's economy".  It has since expanded beyond the confines of Manhattan and the following countries also participate in the event: Australia, Brazil, China, France, Germany, Greece, India, Italy, Japan, Mexico, Portugal, Russia, Spain, South Korea, Taiwan, Turkey, The Netherlands and the United Kingdom  To date, Canada has not participated in the event.

But if the Canadian trade-mark applcation is any indication, is Fashion's Night Out looking to expand to Canada??!!

If yes, ladies and gents - clear your credit cards!  There may be some shopping to be done!!  After all, it's altrustic to help the country's economy, no?

CanadaFashionLaw will keep you posted on developments of this! 

Louboutin's Rolling Up His Sleeves

Following this week's decision in France against Christian Louboutin, the man himself issued a statement showing that he stands by his brand and is ready to put up a fight:

"Much of the discussion either implies or states that through this ruling we have lost our rights to our world famous Red Sole Trademark. We would like to clarify that what has been disputed and canceled is only one French registration of said Red sole Trademark. Christian Louboutin continues to own valid and enforceable trademark rights in its Red Sole Trademark, including in France itself as well as throughout the world. A number of court decisions have recognised the strong association between Christian Louboutin and the Red Sole Trademark, including in France. Christian Louboutin will continue to protect and enforce its rights to its Red Sole Trademark which has been its iconic signature for the past 20 years. We would also like to take this opportunity to thank all of the people who continually show support to our brand."

You go girlfriend!

(By the way, Christian Louboutin owns a trade-mark registration in Canada for the Red Sole Trademark.  The Canadian trade-mark registration does narrow the color claim by including a Pantone reference in the color claim.) 

The Other Shoe Drops

Zut alors! 

Christian Louboutin is not having a good year with the judicial system and must be seeing red! 

CanadaFashionLaw has extensively covered Christian Louboutin’s dispute with Yves Saint Laurent in the US, with respect to YSL’s use of the red-soled shoes.  Christian Louboutin suffered a blow when he was denied a preliminary injunction against YSL’s use of the red-soled shoes.  The decision went a step further and called into question the registrability of Christian Louboutin’s trade-mark or whether any color can be registered in the fashion industry.  (This decision is currently being appealed).  Needless to say, some parties were less than delighted with the decision and we saw Tiffany and INTA put in their two cents.

Malheuresement, Christian Louboutin has suffered another blow.  Christian Louboutin took high-street chain store Zara to court over its use of red-soled shoes in France.  Although Christian Louboutin initially won, Zara appealed on the basis that Christian Louboutin’s trade-mark registration was too vague (i.e. the registration did not include a Pantone color claim).  Christian Louboutin was unsuccessful in appealing Zara’s victory.  The French court of appeal recently issued its decision in favour of Zara.  Adding insult to injury, Christian Louboutin was also required to pay some of Zara’s legal costs as compensation.  This decision does not extend beyond France.  In the meantime, Christian Louboutin is attempting to mitigate any further damage to its brand by filing a new trade-mark application that has a narrower and more specific color claim. 

Christian Louboutin’s struggle to maintain its brand monopoly has piqued a lot of interest from lawyers, consumers and the media.  CanadaFashionLaw has had the opportunity to discuss this on many occasions and is always fascinated at how polarizing the debate is.  Whereas some believe Christian Louboutin’s position to be ridiculous (generally, these are not trade-mark professionals or fashionistas), others strongly believe that Christian Louboutin is “famous” for its red-soled shoes and should reap the benefits.  To a large extent, this goes back to the age-old debate: 

Is fashion art? 

Or is fashion innately functional? 

In an industry where trends are a central concept, is infringement acceptable?  If one shoe is sold at the $1,000 starting point, can there really be confusion with a similar shoe that is sold at the $50 starting point?  If the function of intellectual property laws is to reward ingenuity, why is fashion design piracy more acceptable?

 

CanadaFashionLaw wants to know where you stand.

Canada's Fashionable Gather for a Big Celebration

Tonight's the night for a big celebration!  The Toronto Fashion Incubator celebrates its 25th anniversary.  CanadaFashionLaw introduced its readers to the Toronto Fashion Incubator a while ago (click here). 

The first of its kind in the world, the Toronto Fashion Incubator has been critical to the success of a number of start-up fashion designers in Canada. 

Today, the Toronto Fashion Incubator celebrates in style at a sold out gala event at the Royal Ontario Museum.  As always, the Toronto Fashion Incubator puts the focus on Canada's up and coming designers.  The main event of the gala is a runway show featuring finalists from the Toronto Fashion Incubator's national design competition.  CanadaFashionLaw previously gave you a sneek peak into what's at stake in this design competition.

Needless to say, CanadaFashionLaw is looking forward to attending this event! 

Canadian Media Houses Battle Over Fashionable Trade-marks

A decision was recently released relating to Toronto Life Publishing Company Limited and its successor company 1772887 Ontario Limited taking on Bell Canada in respect of its fashion-related blog in an opposition proceeding.  (OK – typing out 1772887 Ontario Limited and Toronto Life Publishing Company Limited throughout this article is a bit of a yawner – we’re going to collectively refer to them as Toronto Life for the rest of this article).

Let’s break it down.  Bell Canada sought to register a trade-mark FASHIONISM in Canada in association with a fashion, beauty and lifestyle related blog.  Toronto Life wasn’t feeling this based on its trade-mark portfolio comprised of TORONTO LIFE FASHION, MONTREAL FASHION MAGAZINE, VANCOUVER FASHION MAGAZINE, CANADA FASHION MAGAZINE, TORONTO FASHION MAGAZINE and FASHION MAGAZINE, all registered or applied for in association with magazines.  Taking advantage of the opportunity to challenge Bell Canada’s right to register the trade-mark FASHIONISM, Toronto Life opposed Bell Canada’s trade-mark application.

Now for those non-lawyer readers of CanadaFashionLaw, let’s back it up and go over opposition proceedings and where it fits in with the whole trade-mark registration process.

Conducting branding audits of your company and obtaining trade-mark registrations is a prudent business move.  Trade-mark registrations confer a number of benefits:

• Prima facie evidence of trade-mark rights
• Canada-wide protection
• Infinite renewable registration periods 
• Access to federal court judgments

The list goes on.  Suffice it to say, if you’re looking to push the notoriety of your brand it makes sense to protect it in the best way possible: trade-mark registrations. 

Obtaining a trade-mark registration in Canada is an involved process and can take approximately two years.  As such, there are a number of stages within the registration process, one of which is opposition proceedings.  This allows other brand owners the opportunity to block a trade-mark from registering.  Taking advantage of the opposition period can be a useful tool in proactively protecting your company’s brand. 

Okay.  Trade-marks 101 is done (for now) – let’s get back to Toronto Life and Bell Canada.

 

Toronto Life took the position that FASHIONISM was too similar to its various FASHION trade-marks.  Not surprisingly, Bell Canada challenged Toronto Life’s assertions and defended its right to the trade-mark FASHIONISM. 

Overall, Toronto Life was not successful in opposing Bell Canada’s trade-mark application based in part on the following reasoning by the Trade-marks Opposition Board:

• This matter was not exceptional and, therefore, did not warrant an examination into bad faith.
• Although the trade-mark registrations relied upon by Toronto Life were valid, its trade-mark applications were abandoned or refused.
• The parties’ trade-marks are similar in as much as they all incorporate the word FASHION, which is suggestive of the parties’ wares and services (i.e. publications whose subject matter is fashion).
• Given the suggestive nature of the trade-marks, Toronto Life’s trade-marks lack inherent distinctiveness. 
• With respect to Bell Canada’s trade-mark, the addition of the suffix –ISM brings the trade-mark FASHIONISM into the realm of a coined word, thereby having a greater degree of inherent distinctiveness than that of Toronto Life.  
• In going through the confusion test, the Trade-marks Opposition Board agreed that there was an overlap in services and channels of trade.
• However, there was no similarity between the “striking “ISM” element” of Bell Canada’s trade-mark and those of Toronto Life’s trade-marks.

Toronto Life’s claims were each rejected and Bell Canada’s FASHIONISM trade-mark application successfully moved through the opposition stage. 

INTA Targets Teens In Anti-Counterfeiting Campaign

With the International Chamber of Commerce’s recent report stating that the counterfeit goods industry may reach $1.75 trillion (US) by 2012, INTA has decided to step up its game.  (For those of you not in the know, the International Trademarks Association is a global non-profit organization comprised of trade-mark and branding professionals.)

INTA will launch a program at its AGM in May 2012 aimed at making youth aware of the ramifications of counterfeit goods.  In the initial stages, INTA is focusing on 14 to 18 year olds in the US with plans to expand the program internationally. 

In the lead up to launching the program, INTA hired a marketing agency to conduct some research into teens’ perception of counterfeit goods.  The results provided some interesting insights into the purchasing behaviour of teens:

• Teens respond well to philanthropic activities and social issues;
• Not surprisingly, the analysis confirmed that teens communicate through social media platforms, which also act as a source of influence and information;
• The vast majority of counterfeit goods purchased by teens were in the fashion and electronics industries; 
• Those that purchased counterfeit goods were aware that they were not legitimate goods; 
• However, there was a lack of understanding of the true implications of purchasing counterfeit goods; 
• Morality with respect to purchasing counterfeit goods was not a big concern; 
• Interestingly, teens trust their peers.  Celebrity-endorsements or celebrity-centric educational programs did not resonate with teens as well; 
• Gender played a role in teens’ aversion to counterfeit goods.  Whereas, female teens tended to have stronger responses to the social effects of counterfeit goods, male teens took issue with how counterfeit goods affected them directly.

INTA intends on launching a two-tiered approach.  The first stage aims at educating teens on the immediate consequences of purchasing counterfeit goods (i.e. poor quality products, job loss etc.).  The second stage takes a wider look at the ramifications (i.e. child labour, significant health and safety concerns, etc.).

As always, INTA is looking for volunteers to assist with the spreading the anti-counterfeiting word. 

 

Valuing the Invaluable: US Government Looks at IP’s Contribution to Economy

The US Commerce Department, in conjunction with the US Patent and Trademarks Office, recently issued a report that looked at the economic contributions of intellectual property to the US economy.  It’s no joke.  It is estimated that intellectual property-intensive industries contribute more than $5 trillion and 40 million jobs to the US economy, which represents more than a quarter of the work force. 

Confirming that the function of intellectual property is to reward ingenuity, the Commerce Secretary stated that:

“When Americans know that their ideas will be protected, they have greater incentive to pursue advances and technologies that help keep us competitive, and our businesses have the confidence they need to hire more workers.”

Simply put, innovation creates opportunity and the government should encourage it. 

Intellectual property protection enhances a business’ success at every stage:

• creates incentives to create
• rewards ingenuity
• protects against copying
• qualifies intangible assets
• creates a platform for corporate valuation and investment
• creates additional revenue streams by way of licensing

In a highly creative and competitive industry such as the fashion industry, intellectual property protection should be a front and center business tool.  Not surprisingly, the fashion industry was included in the top 50 trade-mark intensive industries.  Interestingly, the trade-mark intensive industries accounted for the highest employment rates, surpassing patent intensive industries.  

It’s the End of an Era

CanadaFashionLaw respectfully requests a moment of silence.  There has been a significant death in the fashion industry.  After 27 years on air, Canada’s Fashion Television has been cancelled. 

Before the explosion of mass media onto the fashion scene, Jeanne Beker founded Fashion Television in 1985.  This was the first of its kind.  Initially, it launched as a 15 minute segments.  It since morphed into a sophisticated, award winning, globally syndicated weekly half hour show.  In fact, a Fashion Television channel debuted in 2001. 

No reason was given for the cancellation, however, parent company Bell Media assured that Jeanne Beker will remain a player in the industry.

Canada Sounds Off

CanadaFashionLaw recently reported on interesting developments with regards to Canada’s foray into the non-traditional trade-marks world.  Although Canada may be a late-comer to the party, it certainly is playing catch-up.  Today, the Canadian Trade-marks Office issued a Practice Notice stating that effective immediately it will accept sound mark applications.  Does anyone else have a mild case of whiplash from this quick turnaround? 

 So here’s the 411 if your business is thinking of obtaining trade-mark protection for a sound:

• The application must state that the application is for the registration of a sound mark;
• The application must also include a graphic representation of the sound, along with an electronic recording and description of the sound.

The Canadian Trade-marks Office can call into question the registrability of the trade-mark with the usual suspects: functionality, clearly descriptive and/or deceptively misdescriptive.  It is possible to assert the registrability of the trade-mark by demonstrating that the sound has acquired distinctiveness. 

Interestingly, it is not possible to file a sound mark application online and, therefore, the cost will be moderately higher. 

Stay tuned to CanadaFashionLaw to see who takes the first steps.