Quebec Court: Canada’s Kinda Bilingual

Previously, CanadaFashionLaw covered retailers’ challenge to the Office Quebecois de la Langue Francaise (basically, the French language police).

The Quebec Superior Court issued their decision last week which put the reins on the French language police.

Public signage and marketing in Quebec is regulated by the Quebec Charter of French Language.  The French Charter requires that signage/commercial advertisements be predominantly in French.  However, there are exceptions when trade-marks are involved.  Generally, where the trade-mark is registered in English, the brand owner is not required to display the French equivalent.  In a recent decision that was issued last week, the Superior Court of Quebec held that a non-French trade-mark does not need to be accompanied with a French descriptor.  However, if the French equivalent is also a registered trade-mark, the brand owner is required to use the French version.

Ultimately, it is a business decision on whether your company wishes to register the French version.  If there are strong ties to the Quebec culture, using the French equivalent will certainly assist in fostering better relations with the Quebecois.  If, however, Quebec is a secondary market, it may streamline your company’s marketing materials by not registering in French as well.

 

 

Gear Up for Internet Launch

CanadaFashionLaw has been monitoring the progress of ICANN’s launch on new TLDs.  Some of the new TLDs have entered into the sunrise period, which essentially gives brand owners priority access to register new TLDs.  Other TLDs’ sunrise periods have closed.

Here’s a list of TLDs that could be of interest to the fashion community that will soon be launched, along with the closing date of their respective sunrise periods:

- .gift (March 28, 2014)

- .international (March 29, 2014)

- .holiday (April 4, 2014)

- .luxury (April 6, 2014)

- .marketing; – .rich; (April 7, 2014)

- .boutique; – .bargains (April 19, 2014)

- .watch; – .cool (April 26, 2014)

Below is a list of new TLDs whose sunrise periods have closed:

- .clothing; – .technology; – .diamonds; – .sexy; – .shoes;

Getting Around Town

Here’s a sneak peek into CanadaFashionLaw‘s upcoming speaking events:

1. Presenting at Ryerson University’s Fashion Zone on March 14 in Toronto.

2. Participating as a panelist at DHL’s Business of Fashion discussion on March 18 during Toronto Fashion Week.

3. Hosting a breakfast seminar for Fashion Group International on March 25 at the Thompson Hotel.

4. Participating as a panelist at the John Marshall Law School’s Fashion Law Symposium on April 11.

If you are able to pop into any of these events, it would be great to meet you!

Bundle Up – Litigation Can be Chilly

A potentially big Canadian fashion law dispute caught our attention last week and we couldn’t wait to tell you all about it. Canada Goose is taking on Sears Canada over Sears’ sale of allegedly infringing jackets. Below is a summary of Canada Goose’s claims against Sears:

  • Canada Goose is the designer, manufacturer and distributor of high quality clothing
  • Sears is a retailer of low to mid-quality clothing (ouch)
  • Canada Goose’s jackets have achieved notoriety in the Canadian marketplace
  • The foundation of Canada Goose’s claim lies in its trade-mark and trade dress portfolio.  (This is interesting as Canada Goose is claiming exclusivity over the shaping of its jackets, although they are not registered.  We are starting to see a trickle in of the fashion design piracy doctrine)
  • Components of the trade dress include the length of the jacket and the placement of the zipper and pockets
  • Canada Goose has been selling its jackets in Canada since 2005, with an impressive retail value of $225 million in sales
  • In September 2013, Sears began selling allegedly similar jackets shapes

Canada Goose is seeking the declaratory and injunctive relief, as well as delivery up of the allegedly infringing merchandise and an accounting of profits.

We don’t often see trade dress-based litigation in Canada between fashion houses, so be sure to stay tuned to CanadaFashionLaw.

The Power of the Pocket: Levi v. Abercrombie

If you’ve had the opportunity to see CanadaFashionLaw present, or read one of her publications, you’ll know that she’s a biiiig fan of non-traditional trade-mark protection. Distinctive stitching on the back pockets of jeans is a favoured type of non-traditional trade-mark amongst fashion houses. So it’s no surprise that the dispute between Levi Strauss & Co. v. Abercrombie & Fitch Trading Co. before the Canadian Trade-marks Office’s Opposition Board caught our eye.

The trade-mark at issue is Abercrombie’s application for back pocket swirly stitching (application number 1,304,072).  Levi took issue with Abercrombie’s trade-mark application, on the basis that Abercrombie is not entitled to use the trade-mark in Canada, and that the trade-mark was not distinctive and was confusingly similar to Levi’s trade-marks (registration numbers TMA142,607, TMA381,977, TMA517,605, TMA266,592 and UCA39879).

The Hearing Officer focused the confusion analysis on Levi’s UCA39879 registration, as this was deemed to be Levi’s best case for the opposition.  The remainder of Levi’s trade-mark registrations were largely disregarded.  Below is a summary of the Hearing Officer’s reasoning:

  • Both trade-marks are artistic renderings and, therefore, possess some inherent distinctiveness.
  • However, the degree of inherent distinctiveness is diminished as they are single line designs.
  • Given Levi’s length of use of its trade-mark in Canada, the distinctiveness of its trade-mark is enhanced.
  • Levi was able to provide evidence that its sales for apparel bearing its trade-mark totaled $1.4 billion.
  • Abercrombie did not provide any evidence of sales.
  • The products (i.e. clothing/jeans) overlapped between the parties.
  • The nature of trade is similar.

Overall, the Hearing Officer upheld Levi’s opposition and Abercrombie’s trade-mark application was rejected.

Stay tuned to CanadaFashionLaw to see if Abercrombie appeals the Trade-mark Opposition Board’s decision.