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.

Advertisements

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.

Mon Dieu: Canada est Bilingue!

It’s a good thing that old Montreal is so darned charming because doing business there can cause some retailers a headache!  When launching a product or business in Canada it is important to remember that Canada is a bilingual country. And it can be a PR and legal nightmare if you forget it!

The Charter of French Language’s goal is to strengthen the status of the French language in Quebec in all spheres of public life, including business and commerce. You don’t have to have a brick and mortar presence in Quebecin order for the Charter to apply.  It’s safe to say that if your product is available for sale in Quebec in any way (online, through a third party retailer or at your own retail location), the Charter applies. French should be used in respect of product wrapping, manuals, websites, advertisements, posters, store fronts, etc. How the French version is displayed (i.e. prominence) varies depending on the medium.

 

The Charter contains some exceptions, which can make the application of the Charter clear as mud.  Generally, if an English version of a trade-mark is registered in Canada, you are not required to use the French equivalent.  However, this exception is currently under challenge.

 

The Office Quebecois de la langue francaise (“OQLF”) is the body tasked with ensuring compliance with the Charter of French Language in respect of commerce and business. The OQLF cannot sue or impose fines for violations; however, it can refer the matters to the Attorney General of Quebec which can bring the matter before Quebec’s provincial court. Generally, penal sanctions are awarded for infractions which can range from $600 to $20,000.  The fines are generally imposed per non-compliant product type, as opposed to item being sold.

In November 2011, the OQLF launched an awareness campaign and tightened its grips on storefront signs requiring French to be used, regardless of the above-noted trade-mark exception.  The OQLF targeted a number of national retailers demanding their exterior signage to be changed. Collectively, retailers such as Old Navy, Banana Republic, Guess and Gap sought declaratory relief from the Quebec Superior Court. The Retail Council of Canada is also rolling up its sleeves as an intervener.  It looks like Quebec will remain a retailer’s battleground for 2013!

 

Stay tuned to CanadaFashionLaw for updates on this!