Will The Canadian Trade-marks Office Get Its Groove On?

Ever eager to keep our readers in tune with the latest developments, CanadaFashionLaw is excited to share some red hot news.  (Ok – yes it’s about trade-marks law, but it’s still pretty interesting!)  Last week, the Canadian Trade-marks Office issued a notice that it has launched a consultation period aimed at amending the Trade-marks Regulations.  Yawn?  Maybe yes, maybe no. 

What caught our attention is the possibility that the Canadian Trade-marks Office may be ready to accept sounds as trade-marks.  To date, Canada has taken a hard line position that in order to be recognized as a trade-mark, the trade-mark must be visual.  Based on this threshold, slogans, logos, three-dimensional shapes, etc., can all function as trade-marks.  But what about sound, smell or touch?  Nope.  These cannot yet function as trade-marks in Canada.  Is this inline with modern day branding?  Arguably no.  Is Canada’s trade-marks system lagging behind those of other countries?  Arguably yes. 

Always wanting to show trade-marks at work in the real world, CanadaFashionLaw has provided some fun examples of what could possibly qualify as a sound mark:

 Example Numero Uno

 

You’re at a movie (I’m setting a scene – go with it). 

It’s a first date. 

The lights dim.  The popcorn is too salty.

A lion’s roar startles you. 

Chances are you’re at a movie produced by Metro-Goldwyn-Meyer Lion Corp.

Example Numero Duo

 Frustratingly, your date’s phone rings in the middle of a gripping scene of the movie.

The phone’s ring has a very distinctive 4 note descending tune.

Could it be that your date is using a NOKIA phone?

 

Example Numero Trio

Ok.  The date is clearly not going well. 

Not only is your date taking calls, but you hear the clicker clacker of typing.

You hear a long drawn out southern drawl “YAHOOOOOOOOOOOOO”.

Could it be that your date is IM’ing via YAHOO?
The date ends early.

A number of other countries have had a far more liberal view than Canada of what could constitute a trade-mark by allowing non-traditional trade-marks to be capable of registration.  Now that Canada is finally thinking about stepping up its game, it will be interesting to see how this will all play out.

In the consultation paper, the Canadian Intellectual Property Office is eager to hear from stakeholders, both large and small, on their perspective.  Should Canada venture further into non-traditional trade-marks?  If yes, what should be the threshold for registration?  Should the applicant be required to prove acquired distinctiveness in order to gain trade-mark rights to a sound?  Should specimens be included in the application?    

The deadline to provide this input is April 23, 2012.  It’s likely that the heavy hitters such as INTA and IPIC will put in their submissions.  Law firms have also been known to draft up submissions on behalf of their clients. 

CanadaFashionLaw is interested to hear your thoughts…

Birds of a Feather Do Not Flock Together

International Clothiers Inc. is getting well-acquainted with Canada’s Federal Court.  Previously, CanadaFashionLaw advised of Target’s aggressive strategies prior to actually launching in Canada, which involved International Clothiers Inc.  Now they are on the receiving end of another alleged trade-mark infringement case.  This time it’s Canada Goose that's spreading its wings.

Canada Goose recently issued a Statement of Claim against International Clothiers Inc. alleging trade-mark infringement of its trade-marks.  Canada Goose alleges that not only are the trade-marks confusingly similar, but the trade-mark placement and certain design elements of the apparel themselves are also confusingly similar.

In its Statement of Claim, Canada Goose states that it has incurred significant money in marketing its products and brand throughout North America, which has significantly paid off as its notoriety has spread throughout the continent. 

Given the alleged sub-standard quality of the apparel sold by International Clothiers Inc., Canada Goose believes that its reputation and goodwill is becoming tarnished by International Clothiers. 

As of today’s date, International Clothiers Inc. has yet to file its Statement of Defence.  This should be an interesting Canadian battle – stay tuned to CanadaFashionLaw for developments! 

Don't Exploit Me Because I'm Beautiful

When we see models saunter down the runway or captivate us on the glossy magazine covers, our first thought may not be "woe is them".  But should it be?  This is an interesting issue that is being posed by a non-profit organization, The Model Alliance.  

With the vast majority of models starting out their career in their early teens, it is possible that these young darlings may not be well-prepared to look out for themselves in the big bad world.  Enter The Model Alliance.  Founded by Sara Ziff, a ten year catwalk veteran, The Model Alliance seeks to advocate against "...the modeling industry's systematic abuses of its workforce".  Heavy hitting issues such as child labour, eating disorders and sexual abuse in the workplace are high priorities on the agenda. 

The Model Alliance has caught the attention of some heavy hitters in the fashion industry.  The Fordham Law Institute at Fordham Law School have supported the organization.  Also, if you're looking for a Canadian connection, Canada's own Coco Rocha is on the Advisory Board.  

Some may scoff at the need for such an organization, but The Model Alliance is quick to point out that there are a number of unions that protect young actor and actresses in the US.  There is no such organization for fashion models. 

The Model Alliance recently released a draft Bill of Rights that sets out model's rights in the workplace, which addresses issues that vary from transparent accounting practices to not requiring under 17 year old models to pose nude or semi-nude to helping models report work-place harrassment.  Unfortunately, the Bill of Rights will only be as strong at its support.  Fingers crossed it gets some significant buy in from the industry.

E-Gold Mine Rush?

As the internet becomes an increasingly pervasive marketing tool for fashion companies, it’s hard (and not very business savvy) to ignore developments on the internet.  Previously, CanadaFashionLaw gave our fashionista readers a head’s up on looming developments with the internet.  

Well, the future is here! 

(Technically the application period has only recently opened…so it’s still early days.) 

Let’s not get ahead of ourselves:

The future is drawing near!

ICANN (the organization that basically runs the internet) has now opened the application process for parties that wish to run their own generic Top Level Domain (“gTLD”) registry. (Read CanadaFashionLaw's previous article to get your internet geek on so you understand what a gTLD is).  The application process opened on January 12, 2012 and will close on April 12, 2012. 

What does this mean? 

At this point, we’re not quite sure; literally the sky is the limit!  With some companies openly stating that ICANN’s extension is not warranted, we’re not quite sure if companies will change their online branding strategies or how extensive they will be.  But putting on our cautious (and fabulously bedazzled) lawyer’s hat, we do know that there will be at least some changes:

Will we see fashion brand owners run their own gTLD:

www.website.GUCCI 

Perhaps.

Do you think that fashion brands will join forces:

www.website.FASHION

Peut-etre.

Or, do think that industries will unite for a global domain name registry:

www.website.LUXURY

Maybe baby.

What’s the draw back? 

There’s a possibility that the expansion of the internet could create cybersquatting on steroids! Prudent and proactive brand owners can monitor the new gTLD applications on ICANN’s website to determine if any third party proposed new gTLDs will infringe on their brand and/or trade-mark portfolio.  Thankfully, an objection option has been incorporated into the application process to afford brand owners the opportunity to “X” the proposed new gTLD.

Renting the Lifestyles of the Rich and Famous

Here at CanadaFashionLaw, we love legislative and case law developments that affect the fashion industry but we also love looking at new business models within the fashion industry.  We love outside the box thinking!

At the recent Annual General Meeting for the Toronto chapter of Fashion Group International, I was fortunate to break bread with Lisa Delorme, co-founder and CEO of Rent Frock Repeat, a new player in the Canadian fashion world.  From a business-model perspective, Rent Frock Repeat is interesting on two counts: first is that it introduces the concept of renting evening wear to Canada (something that is well-established in the US and European markets); second, it throws out the traditional brick and mortar model and is making its mark in the e-commerce world.  Online dress rentals - who would have thought!  Ever eager to learn more about the fashion industry, CanadaFashionLaw took this opportunity to interview Rent Frock Repeat on their experience in their launch into the Canadian fashion world.  We hope you enjoy!

Walk us through Rent Frock Repeat’s inception and development.

Kristy Weiber and I were invited to a wedding and simply did not want to put out money AGAIN for a dress that would be worn once or twice and then take up precious real estate space in our closet.  We came across a US website that rented cocktail dresses and we thought it was a brilliant solution to our dilemma but quickly found out they didn’t ship to Canada.  We had always been thinking of opening our own business but we didn’t know exactly what and this seemed like the perfect fit for us.  This was in May of 2010, by August of the same year we were incorporated and May 23rd 2011 we launched www.rentfrockrepeat.com

The business model is largely internet based.  What challenges are specific to the e-commerce world, as opposed to the brick and mortar model? 

For our merchandise specifically it still comes down to women wanting to touch and feel the clothes or simply try them on.  When we sat down to map out exactly how we would overcome this challenge we asked ourselves how we could not only provide peace of mind about the fit challenge but provide even better service than a regular bricks and mortar store.  Our solutions included sending a second size for free, letting women narrow their selection by body shape, showing the dress on models that are not only different sizes but different shapes (pear, straight and narrow, hourglass, apple…) and providing pictures of how a woman could style the dress in different ways (classic, edgy, bohemian, feminine).

What challenges are the same?

Whether you are operating an online business or have a chance to meet your customers face to face the challenge is to earn your business.  We love this particular challenge because it all comes down to service.  Are you really listening to your customer’s challenge?  Are you giving them what they need and not what you think they should buy (or rent)?  Are you solving a problem or filling a need?  At the end of the day you need to make a profit and that is why we spend so much time on the business model and scale but we also know we can’t get there if we are not all about service.

You’re a relatively new company and yet you’ve had some fantastic exposure.  What’s the secret to your success?

We are fortunate enough to have a product that is visually appealing (who doesn’t like to see pictures of beautiful women in gorgeous dresses), a business model that is fairly unique and have provided a product that may have been financially or geographically out of reach.  This story resonates with the fashionista who lives in a rural area and currently does not have access to high fashion and with the fashionista student that currently does not have the financial means to shop the designer lines she would like to wear.  It is fashion democracy and I think people (including the media) like the idea that we can now all be on the same playing field when it comes to fashion.

Who is your target audience?  Has this changed from what you first imagined?

Our target audience is women who have a busy social calendar and are less concerned with having to own things and are more focused on looking and feeling their best.

In simple terms your company rents dresses but in reality it encapsulates more than that – it’s a vehicle to create Cinderella moments for your clientele.  Have there been some standout moments for you? 

           

Yes, and as excited as we are about being able to attend NY and Toronto Fashion Weeks, meeting directly with many of the designers and being surrounded by beautiful dresses (we must admit, it has been a plus to be able to go into the RfR closet if we need something fabulous to wear to an event), we are most excited about the stories we hear from our customers.  We have received countless Thank You notes in our return packages with comments like “I never thought I would ever be able to wear a designer dress, thank you!”, and “I fit right in on the red carpet and didn’t have to choose between paying the bills or a new dress to do so.”  But, our favourite story to date was the evening we dressed the winners of the Dr. Roz’s Healing Place “Victory Over Violence” Gala.  These three women had experienced a rough start to their lives but were being recognized for making the brave first step of reaching out to Dr. Roz and eventually implementing the tools they were given during their time at the centers.  On the night they were recognized publicly all three were wearing RfR dresses and they told us this was their Cinderella moment.  We were thrilled to be a part of it!

Why do you think that Canada has been such a receptive audience to your company?

Unfortunately our small population in Canada makes it difficult for us to have as many options as others do when it comes to shopping.  Just think of the options Americans have with Neiman Marcus, Saks, Bloomingdales, Barney’s, Lord and Taylor, Macy’s (I could go on and on and this is just their department stores).  We see all the commercials and so we are exposed to so much but we don’t have many options ourselves and need to think about the duty and delivery charges we would incur to have things shipped to us (and that is if they even offer the service).  So when a new company makes the items we want available in our own country we get excited.  We have to admit that we are pretty stoked about Target coming to Canada.  We want the new Jason Wu darling day dresses he is putting out too!

Your company has a program that raises money for the charities.  Can you elaborate on this? 

Our motto is “Rent the dress, Donate the rest” and the good news is that this is open to anyone who is throwing a black-tie or gala event to raise funds.  We provide the charity with a unique promo code that they provide to their guests and for every dress rented with that code we will take 10% and give it back to the charity.  What is even greater is that we are hearing women are now able to attend more events because they aren’t spending as much money as they normally wear on their wardrobe (which can be the most expensive part of the evening).  We also recently donated 5% of every rental from November 25, 2011 to January 2, 2012 to the YWCA Rose Campaign. 

What do you love the most about being an enterpeneur in Canada’s fashion industry?  What has proved most frustrating? 

Kristy and I have always been weekend warriors when it comes to fashion.  We worked our regular jobs during the week (and sometimes through the weekend) and then read fashion magazines and went shopping in our spare time.  So when we landed in NYC for our first round of buying we had to pinch ourselves.  Honestly, for anyone that loves fashion how can that not get your heart racing?  As for frustrating… not to sound like a Pollyanna but nothing.  Sure there are aspects of our jobs we like more than others like our buying trips over paying the bills and boxing the shipments but nothing that frustrates us.  We are thrilled and over the moon that this is what we get to do every day.