������������������ (H & M Hennes & Mauritz AB)���������������������������������������������������������� �� �� �� (Forever 21, Inc.)

There is no doubt about it – there is a stark similarity between the designs.

H&M, which professes to be the second largest global clothing retailer, first sold its BEACH PLEASE tote bag in the US in April 2014. As of July 2015, it sold thousands of BEACH PLEASE tote bags globally. H&M formalized its copyright to the design by securing a copyright registration, which was granted on June 12, 2015. H&M alleges that Forever 21 subsequently commissioned a Chinese-based manufacturer to produce infringing designs, which were sold globally. H&M has reason to believe that Forever 21 has profited substantially from sales of the BEACH PLEASE tote bag.

H&M is seeking the following relief:

• Forever 21 be enjoined from:
  • creating, importing, purchasing, distributing, displaying, selling or offering to sell tote bags that infringe H&M’s BEACH PLEASE tote bag
  • using H&M’s intellectual property rights regarding the tote bags;
  • inducing others to commit infringing acts.
• An accounting of Forever 21’s profits derived from the advertising, promoting, marketing, purchasing, distributing, selling or offering of the infringing products
• Damages
• Costs of litigation

H&M bases its complaint on 5 grounds:

• H&M's graphic is subject to copyright protection. Forever 21’s graphic is substantially similar, if not virtually identical, to that of H&M, thereby constituting copyright infringement.
• The graphic is non-functional, inherently distinctive and has acquired secondary meaning. As such H&M asserts that the BEACH PLEASE design functions as trade dress; Forever 21’s unauthorized use of the BEACH PLEASE logo constitutes trade dress infringement.
• Forever 21’s unauthorized use also constitutes a false designation of origin.
• Moreover, Forever 21’s unauthorized use constitutes an attempt to pass off its products, constituting statutory and common law unfair competition against H&M.

What is interesting to the fashion law community is that H&M and Forever 21 are notorious defendants in the fashion industry. In fact, H&M takes note of this trend with respect to Forever 21 stating in the Complaint: “[Forever 21] has also been accused of copyright violations in the past”. So to a large extent, we have the kettle calling the pot black. However, it is interesting that they are now warring amongst themselves. Perhaps it is karma; perhaps it is just business. Nonetheless, in this instance the magnifying glass is focused on Forever 21. In the fashion law community, Forever 21's disregard for intellectual property rights and propensity to resolve matters outside of litigation has some wondering whether this is all a part of its business strategy. It may simply be cheaper to pay an undisclosed settlement sum to the designer rather than sourcing new designs or paying licensing royalties. It would not be shocking if this case settled, but it sure would be interesting if it did not!

Ashlee Froese is a partner at Fogler, Rubinoff LLP. She runs the website . Follow her at @brandfashionlaw.

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Before delving into the case, let’s get back to basics.����Industrial design is not as commonly known (or understood) as its intellectual property counterparts: patents, trade-marks or copyright.����Industrial designs seek to protect ornamentation on functional articles, specifically:

On the face of it, you would think that this type of protection would be extremely useful for consumer products and fashion designs and accessories.����Unfortunately, this case simply reiterates that industrial design protection is a more fickle type of protection in��Canada.��������An examination of this decision will illustrate why.

Who Are the Players?

The brand was established in��Denmark��in 1944 and is well known for its kitchen products.����PI Design AG owns several industrial design registrations in��Canada��for the shaping of glasses.����PI Design AG licenses these industrial designs to Bodum USA Inc., who distributes the Bodum products in the��US,Canada,��Mexico��and��South America.

is a Quebec-based company that was founded in 1889.����It designs, imports, develops and markets kitchen products in��Canada��and internationally.

Bodum owns industrial design registrations for glassware in the following shapes:

��

Trudeau introduced its glasses to the Canadian market in the latter half of 2006:

Bodum did not take too kindly to the competing products and promptly commenced an action claiming industrial design infringement and unfair competition, which is contrary to the��Trade-marks Act.��Unsurprisingly, Trudeau denied Bodum’s allegations.����Trudeau kicked it up a notch by seeking to invalidate Bodum’s industrial design registrations.

The Federal Court was tasked with considering the following issues:

a)������������������������������Did Trudeau infringe Bodum’s industrial designs?

b)��������������������������������Are Bodum’s industrial design registrations invalid?

c)��������������������������������Does Trudeau’s marketing constitute unfair competition via an offence of confusion?

If you’re looking for a quick answer, here it is: Bodum lost out – there was no infringement or confusion.��Trudeau reigned supreme – Bodum’s industrial design registrations were held to be invalid.

It is important to understand some fundamental tenets of industrial design law in��Canada:

• Industrial designs protect visual features of an article.
• Industrial designs do not protect functionality.
• An industrial design can be registered if it satisfies the above criteria and does not closely resemble any other registered industrial design.
• In order for there to be infringement, the articles must be substantially the same.

Trudeau called into action the only expert witness.����The expert had a degree in industrial design and was an industrial design consultant.����The expert came to the following conclusions:

• Bodum’s glass shapes were not particularly unique.����There were minimal differences between Bodum’s glasses and others in the marketplace.
• He did concede that the interior and exterior lines of the respective parties’ products were different.

The court recognized that there was a functional aspect to the double wall configuration of the glasses: the space between the walls helped to keep hot drinks warm and cold drinks cool.����Thus, Bodum was not granted a monopoly over all double wall glasses in��Canada, but rather the look of the double wall glasses as identified in the industrial design registrations.

The major difference between Bodum and Trudeau’s glasses lay in the shaping of the interior line of the glass: Bodum’s glasses were convex whereas Trudeau’s glasses were at first convex and then became concave.����Both parties’ exterior line are convex.����Ultimately the court decided that the Trudeau glasses had “almost none of the features of the configuration of industrial designs in question”.

The court recognizes that industrial design registrations enjoy a prima facie presumption of validity – but this is a rebuttable presumption.����The court considered Bodum’s industrial design registrations in light of the prior art and held that they were not substantially different.����As such, the industrial designs did not meet the criteria for registration and, as such, the registrations will be expunged.

Let’s keep in mind that this may not be the end of it.����This decision was at the trial level.����Bodum may appeal this decision.����We have yet to see.������will keep you posted.

This decision confirms that relying on industrial designs as the only type of intellectual property protection is risky.�� It is best to try to augment industrial design protection with other types of intellectual property protection.����Generally, industrial designs are known to be a a very narrow form of protection inCanada.�� However, in Canada��we have seen intellectul property laws evolve with industry's demands.�� For example,��Metro-Goldwyn Meyer successfully struggled for��Canada��to recognize sound marks.��Perhaps��Canada��needs a strong industry player to push the envelope through��Canada’s judiciary to turn industrial design protection from a sleeping giant to an effective tool for businesses to protect their creative ingenuity.

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website��. Follow her on twitter��.

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It appears that fashion's most infamous case has finally come to a close.��Both parties seemingly came away from the Appeal decision satisfied: Christian Louboutin's trade-mark registration remained valid and exclusivity was maintained with respect to red soles with contrasting shoes; Yves Saint Laurent was found not to infringe��with respect to its red shoes, red soles colour configuration.

If you want to read up on the Christian Louboutin v. Yves Saint Laurent case, you'll find a��full summary����and��.

As of today (October 16), Yves Saint Laurent has filed submissions with the Appeals court seeking it dismiss its various counterclaims against Christian Louboutin.�� It appears that both parties are intent on putting this matter behind them and continue to focus on their respective businesses.

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website��. Follow her on twitter��.

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World Tricot was a knitwear supplier to Chanel.�� In 2009, World Tricot commenced an action against Chanel after it discovered a Chanel-branded cardigan for sale bearing a striking resemblance to knitwear created by World Tricot.�� Claiming ownership rights over the knitwear design, World Tricot sought damages for counterfeiting and wrongful termination of a business relationship.�� Chanel vehemently denied these allegations and counterclaimed that World Tricot was publicly disparaging Chanel’s reputation and goodwill.�� Moreover, Chanel stated that they had never been accused of stealing the designs of a supplier in any of their 400+ supplier arrangements.

At the trial level, Chanel was successful.�� However, World Tricot stood its ground by appealing the decision, which ultimately resulted in Chanel paying €200,000 in damages for counterfeiting.�� In today’s economy where manufacturing is globally outsourced and the domestic small shop is coming under increasing pressure, this decision is likely welcomed by France’s domestic manufacturers.�� The decision is definitely a boost for the small business in the fashion industry.�� There is no word yet on whether Chanel will appeal this decision to the French Supreme Court.

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website . Follow her on twitter .

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First and foremost, the Appeals Court found fault in the District Court’s holding that a single color cannot serve as a trade-mark in the fashion industry. (I can hear Tiffany’s breath a sign of relief). Second, the Appeals Court confirmed that Christian Louboutin has acquired secondary meaning in the red-soled shoe. However, here is the crux of the decision that lead to co-existence in the marketplace. Christian Louboutin has only acquired secondary meaning of the red-soled shoes in respect of shoes that are in stark contrast with the red-soles. So, Yves Saint Laurent’s use of red-soles on red shoes is not problematic. As such, the Appeals Court has ordered that Christian Louboutin’s trade-mark registration be amended to reflect this limitation in the scope of protection, specifically:

“…to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe”.

It will be interesting to see if this judgment has wider implications and serve as a tool to competitors looking to limit a wide scope of brand protection secured by heavy hitting industry players.

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website . Follow her on twitter .

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I have 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 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 the high-street 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.�� I have had the opportunity to discuss this on many occasions and I am 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?

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website . Follow her on twitter .

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In June 2011, the (“CFDA”) hosted its annual Fashion Awards – the fashion world’s equivalent to the Oscars^®.�� Yet the biggest award granted to the industry came in December 2010 when the Senate Judiciary Committee unanimously passed the (the “IDPPPA”), which is the US fashion industry’s latest attempt to secure intellectual property protection for fashion designs.�� The IDPPPA is the successor to the Design Piracy Prohibition Act.

The IDPPPA reflects its predecessor in that it is an amendment to the current US Copyright Act and provides short term protection (3 years) for fashion designs.�� Moreover, the threshold for protection remains somewhat high in that it requires novelty and originality.�� A point of differentiation is that the IDPPPA no longer requires registration in order to garner protection.

“Fashion design”, under the IDPPPA, is defined as:

the appearance as a whole of an article of apparel, including its ornamentation, and includes original elements of the article of apparel or the original arrangement or placement of original or non-original elements as incorporated in the overall appearance of the article of apparel that are the result of a designer’s own creative endeavour, and provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.

The test for infringement of a qualifying fashion design is “substantially identical”.�� However, the IPPPDA does contemplate where the overlap in design features is a “result of independent creation”.

In addition to the endorsement by the Senate, the IDPPPA is also supported by various segments within the fashion industry, such as the CFDA and also the (“the AAFA”).�� It is significant that the IPPPDA is backed by the AAFA, as the organization did not support the prior attempt at legislative change.

Interestingly, at the CFDA Fashion Awards, Diane von Furstenburg, renowned fashion designer and president of the CFDA, on reflection of the IPPPDA’s success “I don’t know that fashion is art.�� It’s design.�� But it has value and we have to protect it.�� It’s intellectual property.” This statement encapsulates the crux of the debate on whether fashion designs warrant intellectual property protection.�� Do you believe that fashion is a function of utility or a piece of art?�� Whereas a pair of standard jeans may not be especially note-worthy, a one-of-a-kind haute couture evening gown is a different creature.

If you look at some countries that very clearly have a thriving, profitable and noteworthy fashion industry, you will note that those intellectual property laws specifically protect fashion articles.�� France, for example, has a well-established legislative history (since 1793) of protecting fashion designs through copyright legislation.�� It is logical that fashion industries will thrive in jurisdictions where intellectual property laws explicitly protect the fashion industry.

As technology advances, the necessity of garnering protection for fashion designs increases.�� There are known instances where infringers attend fashion shows, digitally record three-dimensional images of the fashion designs from the runway and instantly e-mail those images to “knock-off” manufacturing sites, all before the fashion show has ended.�� Often times, the high street store is able to produce and market these inspired knock-offs much quicker than the haute couture designers.

There is the counterargument that the haute couture clientele and the high street shopper are separate and distinct consumers that rarely intersect in the marketplace.�� Thus, the fashion house does not suffer from lost revenue due to fashion design piracy.�� In fact, its brand is promulgated to a wider market thanks to fashion design piracy.�� In essence, mainstreaming unique fashion designs injects a revenue stream into the fashion industry at all levels.

Some even claim that fashion design piracy is beneficial to the creativity of the fashion industry.�� As the unique fashion design disseminates throughout various income brackets of fashion consumers, the fashion design is “mainstreamed” and the uniqueness of the design diminishes.�� This creative exhaustion leads to an impetus to further creativity and so a new fashion trend is created.�� Under this rationale, fashion design piracy constantly pushes the creative envelope.

Ultimately, this line of reasoning negates the fundamental purpose of intellectual property law, namely to encourage development and creativity through protection of those ideas and inventions.�� What impetus is there to create, knowing that the creations are free for all to benefit from?�� But, as with anything, there needs to be limits and a system of checks and balances in granting certain companies a monopoly through intellectual property protection.

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If you see a woman wearing these shoes, three things can be deduced.�� One, she spent a pretty penny on them.�� Two, those are Christian Louboutin shoes.�� Three, the surrounding women are a tad jealous. ��

Since Christian Louboutin first decided to give his shoes an “edge” by painting the sole of his shoes with red nail polish in 1992, this fiery addition to his shoe collection unarguably has become his signature look.�� In fact, in 2008 the USPTO granted Christian Louboutin a trademark registration for the red-colored sole, giving Louboutin exclusivity to this distinctive element of the shoe.�� Below is a summary of the granted trade-mark registration.

��

(Similar trade-mark applications have also been filed with the Canadian Trade-marks Office and with the OHIM but are still pending).��

In Yves Saint Laurent’s 2011 spring collection, the famed fashion house included a collection of shoes that had varying colored shoes: purple shoes with purple soles, green shoes with green soles, navy shoes with navy soles and, finally, red shoes with red soles.�� It is this last color combination that has Louboutin seeing red.�� (I couldn’t resist this pun – my apologies!)�� Yves Saint Laurent’s shoes are available at high-end department stores, such as Saks Fifth Avenue, Barneys New 91��ɫ and Bergdorf Goodman.�� These fashion retail stores are “meccas” for luxury brands.��

In the luxury brand world, imitation is not the highest form of flattery. �� in New 91��ɫ claiming trademark infringement.�� Louboutin is seeking an injunction and $1 million in damages.�� It will be interesting to see whether this fire will be stamped out.

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As any Fashionista will know, over the last two weeks Toronto has been shining bright with visions of sequins and metallics.�� Of course, I am talking about and .�� But does Canada create a strong platform for these designers?�� This article is the first in a series that will comparatively look at Canada’s legal and financial treatment of the fashion industry to determine whether it is adequately protected.

I had the great fortune to attend a number of the events and shows at Rogue Fashion Week and LG’s Fashion Week.�� Two themes were constant: the creative ingenuity was breath-taking and the enthusiasm of these young designers was infectious.

Fierceness and fabulousness aside, the fashion industry is a serious (and lucrative) business.�� It is estimated that the fashion industry generates .�� In fact, Toronto is home to the third largest design workforce in North America. ��However, Ontario has refused to recognize the fashion business as a cultural industry thereby making fashion designers ineligible to receive any arts grants and/or funding.�� For the emerging designer, such financial assistance can be critical to growing the business.�� Conversely, the Quebec government has significantly invested in Montreal’s fashion industry.�� For example, two years ago it earmarked $82 million to develop and internationally promote Montreal’s fashion industry.�� Moreover in Quebec, fashion also qualifies for arts and cultural funding, which has seen immediate benefits.�� Once the fashion industry was eligible for cultural grants, employment in the fashion industry in less than a year.�� Advocates within the fashion industry (such as the Fashion Design Council of Canada and the Canadian Apparel Federation) note that Quebec’s preferential treatment is benefiting the Montreal design community, much to the detriment of the Ontario design community.

If we can see the detrimental effects that varying policies can have on the design communities within Canada, how does Canada as a whole fare internationally and what are the implications for Canada?�� The Office of the United States Trade Representative recently released its , wherein it examines obstacles within Canada that negatively affect the US’s willingness to trade with Canada.�� In 2010, Canada did not fare well.�� Canada was listed on the Priority Watch List because of its failure, in part, to implement copyright reform and bolster customs border enforcement practices.�� Once again in 2011, the US continues to urge Canada to address these issues.�� Although the fashion industry was not specifically cited as a concern in this report, it is clear that upon global comparison, Canada is coming up short, which in the long term can be detrimental to the growth of Canada’s fashion industry.��

It is not surprising that in countries where the fashion industry is a major contributor to the economy, the domestic intellectual property laws facilitate adequate protection of fashion designs.�� France and Italy are examples of countries that have instituted laws that explicitly protect fashion designs.�� The United States is currently attempting to reform its copyright laws to offer protection specific to fashion designs.�� In Canada, however, the fashion designer has to meander through a myriad of intellectual property laws to garner protection, although none that are specific to the entire fashion piece.�� Canada’s fashion industry has the potential to be a big player in the international arena, but with designers such as moving abroad, is Canada really supportive of its designers, thereby enticing them to stay in Canada?

Upcoming articles in this series will examine how Canada’s intellectual property laws can support fashion designers, how some countries have firmly established intellectual property laws that are specific to the fashion industry and will look at the US’s attempts to reform its copyright laws to encompass protection for the fashion industry.

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Introduction

Interbrand, a well reputed international company whose modus operandi is to analyze global brands, has recently released its bi-annual report on "Best Canadian Brands 2010".�� Interestingly, despite the volatile and contentious economic climate in the last few years, Canada's brands have fared well.�� Since Interbrand's last study on Canadian brands released in 2008, Canada's foremost brands have increased in value by over 35%. The biggest movers and shakers by far were in the finance industry where all five of the major Canadian banks increased their brand value, accounting for 42% of the growth of the top 25 brands recorded in this study. The report questions whether Canadians' conservative and risk-averse tendencies have contributed to their overall success in the last two years.����

Taking Canada's Brands to the Global Streets

The overarching theme in Interbrand's report is that although Canada's brands are achieving success, that success is still contained to the Canadian market.�� Where 16 of the top 25 Canadian brands do operate outside of Canada, only a few have a well-developed recognition outside of Canada.�� BlackBerry and Thomson Reuters are two companies that exhibit such world-wide recognition.�� With an estimated brand value of $6 billion and $9.4 billion respectively, these are Canadian forces to be reckoned with on the international playing field.�� Manulife and Tim Hortons, on the other hand, struggle to bring their Canadian presence to the global market.�� Looking forward, successful consumer brands such as Lululemon and LaSenza are slated to become the next high profile global brands.�� For example, Lululemon has significant presence in the US, Australian and Hong Kong markets to the point that 40% of its total revenues come from outside of Canada.��

Interestingly, although telecommunications companies such as Rogers, Bell and Telus have been insulated by protective government regulatory regimes, international competitors are nosing their way into the market causing concern that these companies' competitive edge will be reduced.��

��

The Nuts and Bolts of the Report

Interbrand set the following criteria in determining Canada's most successful brands:

• First, obviously, the brand's country of origin must be Canadian;��
• Second, financial data must be publicly available;
• Third, there must be significant publicity behind the brand which would sway consumer's purchasing decision; and
• Finally the revenue must outweigh the company's operating and financing costs.��

Interestingly, this criteria eliminated two prominent Canadian brands, Roots and Cirque du Soleil, as they are privately-held companies.�� Also, a number of airline brands were also eliminated based on the fourth criteria. Once the brands qualify, the strength of the brand in the overall consumer's experience with the company along with the financial health in addition to the future perceived strengths of the brands were considered.��

The top ten brands are as follows:

��

Although the following brands did not qualify according to Interbrand's set criteria, they were given an honourable mention for their success.

• Canadian Tourism
• Cirque du Soleil
• Four Seasons
• Hudson's Bay Company
• Roots

Interbrand's .

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