Oh...Canada! A Q & A with Ontario fashion lawyer Ashlee Froese

I was flattered to recently be interviewed by Charles Colman, a New York based attorney of Charles Colman Law PLLC who also practices fashion law.  Chuck runs an interesting blog http://www.lawoffashion.com/ and accompanying twitter account @fashionlawblog.  Chuck serves as Co-Chair for the Fashion Design Legislation sub-committee of the American Bar Association.  I have reproduced the interview below:

In light of apparel retailer Target's widely publicized, but legally fraught, expansion into Canada, LAW OF FASHION felt it was high time to hear from a fashion lawyer on the other side of the border.  After all, with all due respect to New York, Canada seems to figure its s#*! out before we do.  (In multiple realms.)

LOF was fortunate to arrange a virtual interview with Ashlee Froese, an attorney with the Ontario law firm Keyser Mason Ball, LLP, who also runs a blog at canadafashionlaw.com and sends out sassy and informative tweets from @brandfashionlaw

Ashlee spoke to LOF about the differences between U.S. and Canadian trademark law, intellectual property protection for fashion designs north of the border, and recent fashion law developments in Canada (all hyperlinks courtesy of LOF):

LOF: The emergence of "fashion law" as a unique discipline is relatively recent in the U.S.  Have Canadian law schools and attorneys begun to recognize "fashion law" as its own practice area?

AF: I think that the development of “fashion law” as its own niche has had more traction in the U.S., and is still very much in its infancy in Canada.  There are far fewer law schools in Canada (not more than 20) and to my knowledge, fashion law is not part of the curriculum at any of those schools.  Some law schools, such as Osgoode Hall Law School, my alma mater, have instituted programs that focus in intellectual property, which is a component of fashion law, but we have yet to see a specialization of "fashion law."

LOF: Could you give us an overview of the similarities and differences between Canadian and U.S. trademark law?

AF: There are significant similarities between Canadian and U.S. trademark law.  Both U.S. and Canada are “use-based” jurisdictions, which means trademark rights “accrue” from use in commerce.  Procedurally, the trademark prosecution stages are similar (filing, examination, publication, opposition, use requirement, registration).  We also have similar bases for filing trademark application: 1) proposed use, 2) actual use and 3) foreign registration and use.

However, there are also pronounced differences.  The United States’ adoption of a classification system under which additional filing fees of $325 (U.S.) are charged per class of goods/services (as opposed to Canada’s single filing fee for all goods/services) can be cost-prohibitive for some Canadian businesses seeking trademark protection as they enter into the U.S. market.  Canada does not have an equivalent to the USPTO’s principal-versus-supplemental-register regime.  Moreover, it is not possible to divide a trademark application in Canada.  Canada is also not a signatory to the Madrid System, although there have been whisperings that Canada is looking to become a signatory.  On a side note, it is my view that the U.S. Patent and Trademark Office operates in a more business-like manner than its Canadian equivalent.

Canada has taken a conservative stance on the protection of non-traditional trademarks.  The Canadian Trade-marks Office has maintained that a trademark must be visual in order to garner protection.  Thus, sounds, smell and touch cannot be protected.  The U.S. has taken a more liberal view of what can constitute a trademark.

LOF: Does Canadian intellectual property law grant protection to fashion designs?

AF: Yes, but there are limitations.  It is possible to protect aspects of fashion designs through proper navigation of Canada’s intellectual property regime.  However, there is a hesitation to grant a company exclusive IP rights in a useful article, as such a grant may impact competition in the marketplace.  Thus, Canadian law imposes a system of checks and balances that guard against a degree of exclusivity that would stifle commercial development.  

Traditional trademark protection in Canada serves to protect logos, slogans and brand names.  Color can also function as a trademark.  For example, Christian Louboutin is seeking protection of its infamous red soles as a trademark in Canada.  (As of this writing, the application is still pending.)  Designs, features and patterns that are applied to clothing are capable of protection.  Louis Vuitton Malletier’s floral motif, for example, is a pattern applied to clothing that has been granted trademark protection.  “Distinguishing guises” is a subcategory of trademark protection that extends to the packaging of the product or the shape of the product itself.  But this type of protection would most often be used to protect the shape of perfume bottles that complement a fashion line, for example.  As in the U.S., functionality and non-distinctiveness remain bars to trade-mark protection.

“Industrial design protection” is a useful but somewhat underutilized avenue in Canada.  [Ed. Compare to U.S. design patents.]  This type of protection covers the shape, configuration, pattern or ornamentation on an utilitarian article that is aesthetically appealing.  Protection is not granted where the design is solely functional or where protection would impact any method of construction or manufacturing.  Industrial design protection is only granted for 10 years and protection must be sought within 1 year of disclosure of the design.  Industrial design protection is statutory; registration is required in order to obtain protection.  Currently, dresses, pants and shirts are eligible for industrial design protection in Canada.

Although copyright protection extends to “works of artistic craftsmanship,” protection is limited when the article is “useful.”  Further, no copyright protection is available to “non-useful” designs that are applied to “useful” articles produced in quantities greater than 50.  This is obviously a low threshold for a typical fashion company.  Thus, industrial design protection will usually be a more prudent avenue of protection for the fashion designer. 

LOF: How much influence, if any, do U.S. court rulings on intellectual property exert over the direction of Canadian IP law?

AF: I think that there is always interest in what is happening in the U.S.  Having attended a number of lectures by judges of Canada’s Federal Court, it is apparent that in addition to looking at legal developments in America, the judiciary also looks at developments in England and Australia, in particular. 

LOF: What, if any, major fashion law developments are you seeing in Canada right now?

AF: Well, in August of last year, Louis Vuitton and Burberry launched an anti-counterfeiting suit against two producers and distributors in Vancouver and Toronto.  The plaintiffs are seeking $3 million (Canadian) in damages for trademark and copyright infringement, which, if granted, would be Canada’s largest anti-counterfeiting damages award ever.

The Supreme Court of Canada also recently handed down a ruling on trademark law—the first since 2006.  Although the decision, for the most part, seems to confirm some fundamental tenets of Canadian trade-marks law (i.e., Canada is a “first to use” jurisdiction, trademark protection extends throughout the country, etc.), some passages in the opinion have piqued trademark lawyers' interest in attempting to determine how the judiciary will deal with the intersection of trademark law and keyword advertising, an issue that has been extensively explored in the U.S., but not received much judicial consideration in Canada.