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.
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.
We wear many (fabulous) hats at CanadaFashionLaw. As Chair of the Toronto Intellectual Property Group, CanadaFashionLaw is looking forward to the upcoming TIPG event that is being hosted on October 22. We’re bringing in a Canadian-trained, China-based IP professional that will provide practical tips on how to manage your company’s IP in China. Not sure if this is relevant to you? Well, if you currently or intend to manufacture in China or sell your product in China, it’s relevant.
You can expect to hear a summary of the talk here…stay tuned!