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.