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.