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.