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.