The Gowling WLG Best Blog in IP Law and Technology Prize (the “Gowling WLG IPilogue Prize”) was pioneered in Professor Pina D’Agostino’s Intellectual Property class in the Fall 2007 term and has been generously sponsored each year since then by Gowling WLG.

All blog entries and comments on the IPilogue submitted by Osgoode students are considered automatically for the prize. In each academic semester, there is one prize for the best blog post and one prize for the best comment.

For students, this is a chance to recognize their research and writing in a specialized and technical field. It also encourages law students with a strong interest in Intellectual Property Law to develop that interest. Of course, the subject matter of the IPilogue goes beyond strictly IP. Our stories also delve into related areas including: internet law, privacy rights, broadcasting, social media and free speech.

We are pleased to announce this year’s winners of the Gowling WLG IPilogue Prizes:

Fall 2018 Term:

Best Blog: Peter Werhun on “”

Best Blog Comment: We did not award a winner for this category

Winter 2019 Term:

Best Blog Post – We have a tie:

Gillian Burrell on “”

Saba Samanian on “”

Best Blog Comment: Alessia Monastero’s comment on “”

Congratulations to our winners and thank you to all who make the IPilogue possible. We are most grateful to Gowling WLG for their generous support.

The post Announcing the 2018/2019 Winners of the @GowlingWLG Best Blog in IP Law and Technology Prize appeared first on IPOsgoode.

From an efficiency perspective, it would be ideal to have technology neutral legislation. The speedy pace of technological advancement is simply not aligned with the much slower speed of legislative reform. There is a significant amount of turbulence in technology and innovation. However, the extent to which legislation can stay away from technologies is heavily dependent on its ability to provide sustainable legal certainty. This causes a tension with respect to solving a significant issue in technology, which is the urgency with which legal problems should be resolved. The impacts of a data breach, for example, are immediate and significant. This means that should a smart clothing consumer suffer a data breach, there must be accurate and applicable regulations in place to determine the correct course of action for relief.

Given this binary dilemma, it seems that a balance of both sides provides the most comprehensive answer. That is, while regulations should be technology neutral, they, at the same time, must be multi-leveled, with open-ended formulations, and offer a mix of both abstract and concrete rules. Furthermore, such regulations must be periodically reviewed to ensure relevancy and test the scope of the rules to govern advancements and innovations in the foreseeable future at the time of each review. The speed of technology, coupled with its serious security and privacy implications, demand no less.

For example, inventors of smart clothing in the United States are serious issues in their pursuit to navigate through the legal hurdles with respect to their products, simply because the law is not aligned with the advancement of technology. Data management, for instance, has not yet been properly regulated to correspond to such technologies. Regulatory approvals also pose a significant problem for device manufacturers and researchers since consent from the FDA (or a similar body) may take several years. This further prolongs getting approval and certification from insurance companies for products like smart clothing. Furthermore, forthcoming technologies, such as electronics miniaturization and new biocompatible materials will need to be considered through a regulatory lens for various legal concerns, such as consumer safety and environmental impacts.

That being said, the strategy posed in the next instalment of this series should be immediately applied to the privacy laws in Canada given their . Furthermore, such reform should not take the traditional form, as consumer and user input is highly important in order to keep the regulations relevant and direct. In this way, the regulatory structure would not only be effective, but it would also have a “coherent moral centre that the public can comprehend and accept”, according to Professor David Vaver in his well-known intellectual properly textbook. This new method of a reform strategy is outlined in more detail below.

This is the fourth post in the Toronto Wearables Series by Saba Samanian regarding wearable technology and its IP and privacy law implications. Saba was recently appointed the Toronto Ambassador for and seeks to do her part in fostering the wearables community in Toronto.

Written by Saba Samanian, IPilogue Editor and JD Candidate at Osgoode Hall Law School.

The post A Possible Legal Response to the Rise of Smart Clothing appeared first on IPOsgoode.

Smart clothing offers a wide range of benefits. For example, athletes are now able to wear clothing during training that monitor a variety of helpful metrics cadence, ground contact time, pelvic rotation, and stride length. This results in a more efficient training routine since athletes can entrust their smart clothing with accurate monitoring, which allows them to solely focus on their activities. Similar benefits apply to non-athletes, too. created the Commuter Trucker Jacket, which is connected to Google’s Project Jacquard Platform. This allows users to access music, GPS, and calling applications on their mobile devices without actually touching their telephones. Another company has created a that uses Artificial Intelligence to protect its user from UV protection by notifying the user when she has been in the sun for too long. Furthermore, smart clothing now presents a solution for the segments of the population who need close medical monitoring, but cannot do so on their own, such as the . As a result, the benefits span from convenience to safety. Additionally, there is also a reduction in healthcare costs because of efficient and affordable wearables.

While both technology and fashion enthusiasts may be justifiably excited at the prospect of these innovations, there is also room for concern. Given the recent changes in fashion and the fact that technology is quickly getting to a point where it can evade all of our personal data by getting it directly from our bodies, privacy laws and implications must be considered. This also raises the question of how data collection from smart clothing is, in fact, different from data collection from another technological medium. Are new or revised regulations even necessary, or should the privacy concern be a technology-neutral one? Furthermore, how does smart clothing fit with the consent and information collection and analysis (i.e. data mining) requirements under ? Indeed, these questions have not yet been thoroughly researched and written about, which presents a ripe area for analysis.

However, before diving into a proposed approach to implement an effective solution to resolve the tension between privacy and smart clothing, it is worthwhile to consider its scope. While, a successful solution does not necessarily mean reinventing the wheel, certain regulatory adjustments need to be made given the high speed of technology and the unique invention of smart clothing. The key questions, therefore, are: should regulations surrounding smart clothing be technology neutral? What is the difference between smart clothing and smart phones? The next instalment in the series will focus on this.

This is the third post in the Toronto Wearables Series by Saba Samanian regarding wearable technology and its IP and privacy law implications.�� Saba was recently appointed the Toronto Ambassador for and seeks to do her part in fostering the wearables community in Toronto.

Written by Saba Samanian, IPilogue Editor and JD Candidate at Osgoode Hall Law School.

The post The (Un)Controllable Rise of Smart Clothing appeared first on IPOsgoode.

The with smart clothing is that the articles are constantly collecting, transmitting, and storing data, which means that they have information that is often considered personal, private, sensitive, or confidential. This makes smart clothing’s data mining abilities extremely strong. This is compounded by the fact that this information can easily be posted on social media networks, making it available to not only “friends” of the user, but possibly also to unknown or untrusted parties. Furthermore, wearables are able to collect information discreetly, otherwise known as data mining, which results in the users not actually knowing what data is being collected.  This often means that users underestimate their privacy risks. In fact, a recent study showed that there is “a significant gap between reported concerns and actual users’ behaviors, reinforcing that users often sacrifice their privacy in exchange of benefits.” Put simply, the non-invasive biomedical, biochemical, and physical measurements of wearables have invasive implications for a user’s privacy. However, given the novelty of smart clothing, the extent of the impacts of these privacy concerns has not yet been fully understood. It is for this reason that empirical studies are necessary.

The same study collected a variety of online comments from users of wearables. Based on the consumer feedback, the study concluded that the primary privacy concerns are linked to the type of personal data that a given wearable device collects, stores, processes and shares. For example, there is a lower level of concern regarding smart accessories that are seen as a gadget (e.g. Fitbits), versus smart clothing that covers a large part of the body. Furthermore, embedded sensors, such as cameras and microphones, pick up data about the user and even people nearby, often without their awareness or consent. The nature of this data is frequently personal and confidential, which implicates privacy issues, especially with respect to surveillance. Other functions of wearables, such as heart rate monitors, glucometers, and activity trackers, can also be intrusive.

Interestingly, even though users perceived wrist-mounted devices as a non-invasive accessory from a privacy perspective, the study found a high associated risk. Indeed, there have been findings of an increased feeling of safety and confidence due to the user’s dependence on this type of wearable to track both biomedical data as well as daily movements that assist the user, such as the user’s location when in an unknown area. The ability to track location seems appropriate because of the convenience of having GSP at the ready. However, the communication of a user’s location information, without the control of the user, poses a substantial threat because once location is sensed and stored, it can then be shared online, in real time, through live social media feeds. Yet, given an appearance that is akin to a watch or a bracelet, wearables’ presence is often unnoticed, which means that the underlying privacy risk is not seen as a concern on a daily basis. Rather, a user more acutely senses its convenience benefits. This is in stark contrast with the more common smartphone, with which the user has a more conscious interaction.

In fact, integration is of smart clothing, which allows users to synchronize their clothing with their phones for the sake of convenience. From a privacy perspective, however, this means that all of the implications associated with smartphones are then added to the list of concerns regarding smart clothing. For example, more technologically-advanced smart clothing inventions could have access to a user’s photos, contacts, bank information, and applications, making all of the data, in addition to the collected biometrics, vulnerable to being shared publicly. Another notable example is that embedded speech recognition applications in both smartphones and smart clothing allow the convenience of hands-free interaction. However, the heightened sensitivity that is needed to be able to pick up on such demands means that even when a user is not alone, a potentially confidential conversation between the user and another party can be captured and stored, once again without knowledge or consent.

The above suggests two concerning points about the privacy risk associated with smart clothing. First, users are already anxious about a host of privacy issues, but the (perhaps more noticeable) benefits offered by these devices causes them to become more willing to sacrifice their privacy. Second, even though users have articulated some concerns, these are often misdirected or underestimated. This means that users do not know precisely what to worry about, and are therefore ill-equipped to protect themselves. Indeed, new applications, such as facial recognition software embedded in smart technologies offer such a profound sense of convenience and marketable novelty that consumers willingly allow a device to repeatedly capture and store every inch of their face. This misplaced sense of trust in smart technologies, and particularly smart clothing, presents a significant barrier to technological advancement, as users’ engagement is difficult to predict.

This is the second post in the Toronto Wearables Series by Saba Samanian regarding wearable technology and its IP and privacy law implications.�� Saba was recently appointed the Toronto Ambassador for and seeks to do her part in fostering the wearables community in Toronto.

Written by Saba Samanian, IPilogue Editor and JD Candidate at Osgoode Hall Law School.

The post The Dark Side of Wearable Technology appeared first on IPOsgoode.

To support this activity, Toronto has seen a growth of organizations aiming to raise awareness regarding the conversation around wearable technology. , for example, is “a platform to connect innovators and leaders in the fashion and tech fields”, and hosts multiple meet-ups to facilitate this interaction. , which originally started as “a wearable technology runway show curated for the Maker Festival in Toronto” has now grown into an international brand and expanded to hosting speaking engagements, consulting, and creating public engagement through their considerable .�� also has an active Toronto chapter and has a mission to “foster adoption and facilitate innovation in wearable tech by providing a platform for the entrepreneurs, start-ups and organizations who are already making this happen and a place for those new to the space to be inspired to take action.”

As such, it is no surprise that Toronto start-ups have recognized the flourishing wearable technology community and have begun creating innovative designs in response. serves as a prime example. The Toronto-based start-up gave Team �䲹�Բ��岹’s freestyle skiers 30 pairs of Somnitude eyewear before the team went to PyeongChang for the 2018 Winter Olympics. The company recognized that athletes need a significant amount of rest in order to perform well; however, the common presence of blue light in daily lives (from phones and other screens) has the potential to significantly impact sleeping patterns. If the glasses are worn a few hours before bed, it helps supress melatonin, which is the hormone that induces sleep. Due to the delay that is caused by the suppression, there is a shift in the circadian phase of sleep to later in the night, which allows athletes (or others with similar lifestyles) to overcome jetlag much more quickly.

is another disruptive Toronto start-up, being the first wearable technology to actually identify users by their heartbeat. This identification allows their heartbeat to act as a passcode to connect to computers, phones, smart office technology, and possibly driverless cars in the future. Furthermore, the start-up partnered with MasterCard and is working on a method of completing a credit card transaction using the heartbeat indicator.

Of course, all of these applications have legal implications in relation to intellectual property and privacy and have to comply with related regulations. So, the question becomes, are our regulations well-equipped to deal with this new wave of technology, or do we need to think more critically about updates? The rest of the series on this topic is aimed at discussing this, and other related questions.

This is the first post in the Toronto Wearables Series by Saba Samanian regarding wearable technology and its IP and privacy law implications.�� Saba was recently appointed the Toronto Ambassador for Women of Wearables and seeks to do her part in fostering the wearables community in Toronto.

Written by Saba Samanian, IPilogue Editor and JD Candidate at Osgoode Hall Law School.

The post One of Wearable Technology’s Most Prominent Homes: Toronto appeared first on IPOsgoode.

During my placement as part of Osgoode's , I had the opportunity to work with a group of lawyers who practiced in a variety of areas including business, media, and IP. This was extremely beneficial for me as it allowed me to be exposed to different practices and really understand their day-to-day activities. I became familiar with the pace at which they work and the type of issues they have to resolve in order to best serve the CBC. To me, the IP Intensive allowed me much more than IP experience, but it offered me an accurate glimpse at life as an in-house counsel.

I was also given the opportunity to attend weekly meetings during which the Toronto office coordinated with Radio-Canada in Montreal in order to ensure efficiency and avoid a duplication of efforts. These meetings were collaborative in the best way possible because everyone offered to share their resources, assist one another with the issues that they were facing at the time, and encourage the team with positive words accompanied with smiles. This happened at every meeting, which taught me more than just substantive knowledge. It taught me how effective collaborative work was done between 25 people in a large organization.

These inside looks into the organization and the practice of the CBC’s lawyers showed me how in-house counsel must confront more than just legal problems. Indeed, the majority of decisions heavily rely on a business risk assessment, which must, at all times, be considered. I believe realizations like this are the epitome of a placement experience. As law students, it is easy to become extremely entrenched in the theory and almost forget that it is the application of such concepts that matter most in practice. Spending time at the CBC on a daily basis and confronting the issues that their lawyers face allowed me to see this clearly.

Perhaps one of the highlights of my externship experience was my unforgettable day spent in the newsroom. I, along with other non-journalists (including my placement supervisor Dan Ciraco) began the day by sitting in on a meeting about the stories that were going to be aired on The National later that night. When I returned home that evening and watched The National (a nightly routine of mine) I saw the finished product and, in that moment, I realized how difficult the job of the CBC’s journalists must be. The effort that goes into every minute of each show on a daily basis is profound. This, coupled with the true passion and excitement of each of the CBC journalists I met that day, taught me another important lesson: passion drives quality.

It is for all of the above reasons that my experience at the CBC was not just about spending time at a network, but building a network of people, each of whom taught me so much in a short time. The support of the individuals I worked with on a daily basis was unwavering. I not only appreciated getting experience in the practice of law, but being able to do so in a guided way. Each lawyer took the time to offer a background of the issues I was working on and fill in a knowledge gap if one existed. Furthermore, they showed me how my work made a difference, by taking me to the training sessions based on the research I had done, or inviting me to meetings with other members of the organization to further discuss the contracts I had worked on. This experience, along with my summer spent at a large Bay Street firm, allowed me to supplement my theoretical legal knowledge with practical understanding, which is much needed so close to graduation. And I would do it all over again.

Written by Saba Samanian.�� Saba is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School, and was enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

The post IP Intensive: Not Just a Network, but THE Network: my 10-week placement at the CBC appeared first on IPOsgoode.

Many jurisdictions have provisions that prohibit the registration of offensive marks in accordance with moral and public policy concerns. For example, section 9(1)(j) of Trade-marks Act prohibits the registration of “any scandalous, obscene or immoral word or device.”  and Australia[1] also enforce similar clauses. Therefore, while the decision in Matal has direct implications for US trademark law, it also raises a host of questions for trademark law around the world.

The amicus briefs filed in Matal present illuminating insights on how the Court may have taken a step too far. The  submitted by the American Bar Association (ABA) is a logical place to begin this analysis, given the foundational issue that was the focus of the submission. The ABA sought to correct the Court of Appeals for the Federal Circuit on the distinction between trademark validity and trademark registrability. In addition to the Court confusing validity and registrability, a finding that section 2(a) of the Lanham Act violates the First Amendment would lead to uncertainty about the consequences of a finding of “unregistrability”. The ABA correctly pointed out that the Court of Appeals in Matal seems to have treated trademark validity and trademark registrability interchangeably, which may have had a compound effect on the final decision. The court did, however, state that the unregistrability on the Principal Register does not prevent a trademark from being used legitimately in commerce. However, the Court of Appeals seems to have also erroneously implied that a determination of unregistrability makes an otherwise valid mark ineligible for protection under the Lanham Act, which, according to the ABA, is incorrect. This means that Simon Tam’s proposed mark THE SLANTS may have been ineligible for registration prior to the ruling in this case, a finding of unregistrability is not determinative of whether or not a mark can be used in commerce

In the event of an infringement or unfair competition claims under the previous law, Tam could have protected his mark through the common law. Furthermore, the Court of Appeals stated that “[w]ithout federal registration, a trademark user cannot stop importation of goods bearing the mark …” While this was not directly relevant to Tam’s situation, it certainly has broad implications for cases to come. Regardless, it is inaccurate. Owners of unregistered trademarks have other federal causes of action at their disposal. Indeed, the ABA gave the example of the possibility of “filing a complaint pursuant to Section 337 of the Tariff Act before the International Trade Commission (“ITC”) to stop the importation of goods bearing the mark that violate those common-law rights.”[2] Moreover, valid yet unregistered marks may also enjoy protection against cybersquatting, according to the Anti-Cybersquatting Consumer Protection Act.[3] In addition, state law causes of action—such as likelihood-of-confusion-based causes of action for infringement, unfair competition, and deceptive trade practices—present other avenues for the owners of unregistered trademarks to enforce their intellectual property rights.

An interesting in support of the USPTO is that any decision the government makes in circumstances such as those giving rise to the dispute in Matal is not necessarily neutral because speech will be inevitably supressed. The brief states that “...a trademark registration is a government-issued document that makes it easier for its owner to suppress the speech of others...” because it is a right to exclude, contrary to the opinion of the Tenth Circuit in . This means that, in trademark law, the government is necessarily interfering with ���dz���DzԱ�’s speech; whether it be the trademark owner’s in the case of a refusal, or competitors’ in the case of a trademark registration. This, according to the professors behind the brief, would “wreak havoc on trademark law”, but can be remedied by a decision in favour of the USPTO. This is because trademark law is content-based rather than viewpoint-based. Prior to this case, anyone could be caught under the disparagement clause, regardless of viewpoint. Disparagement is judged based on the content of the mark. Therefore, the law professors present a valid point when they state that “[u]nder the appropriate analytic framework, the bars of Section 2 reflect acceptable judgments about which symbols should receive legal protection as source identifiers, not penalties imposed on an actor doing business independently of the government.” In essence, the Court of Appeals erred in viewing the Lanham Act’s regulatory scheme as being presumptively unconstitutional because a trademark registration denial is seen as a ban on free speech.

The implications for trademark law are not the only concern with respect to the expansion of free speech when it comes to offensive marks. The of Native American Organizations agrees with the perspective of the law professors above in the sense that “[t]rademarks can function as instruments of speech-suppression precisely because they regulate commercial speech.” In this way, the government plays an important role in the operation of commerce, which facilitates the filtration of disparaging and racist marks. When the government exercised this role with respect to offensive marks prior to Matal, it did not strip the owner of the use of a trademark as a whole, but simply withheld the benefits that registration carries. Therefore, from this perspective, this case confirms the “longstanding use of derogatory Native American imagery”, which also alludes to the attention captured by the Washington Redskins case.

As such, concerns regarding freedom of speech became real in light of Matal, which may be a reason to think that the ruling in this case pushed the boundaries of free speech too far, despite the advantages that it carried for trademark owners. This, in conjunction with the wide range of international uncertainty that Matal has caused, is a factor that makes the decision slightly unsettling and casts doubt as to whether the step taken by the U.S. Supreme Court swung the balance too far in favour of free speech. The full range of these impacts, however, has yet to be seen given the recent issuance of this decision.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[1] Vicki Huang, “Comparative Analysis of US and Australian Trade Mark Applications for THE SLANTS” (2017), Eur IP Rev at 6[Huang].

[2] Tariff Act, 19 USC § 1337 (2012). See In re Certain Digital Multimeters, & Prods With Multimeter Functionality, Inv No 337-TA-588, USITC Pub 4210, 2010 ITC LEXIS 2867.

[3] Consumer Protection Act, 15 USC § 1125(d).

The post The Confusing Side of Offensive Marks: Matal v Tam’s Implications appeared first on IPOsgoode.

Abloh has been using quotation marks around everything he associates with the Off-White brand. Whether it is a design feature on a , a name, or just different objects on his Instagram account, the quotation marks have become his new go-to, and his devoted fans are noticing the trend. As such, the question becomes: can Abloh’s use of quotation marks be protected through trademark law given its use for commercial purposes?

According to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), trademark law is based on whether or not there is a “” between the proposed trade-mark and another mark already registered or in a prior pending trade-mark application owned by someone else. The ��(“determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.”

The USPTO has a public database on which anyone can search marks that are either registered or pending registration. Unfortunately for Abloh, quotation marks have been used as a signifier in the past by other brands, based on a search of USPTO.

However, for Abloh, it seems the use of quotation marks is a way to make the Off-White brand more distinguished for the time being, as opposed to securing a long-term intellectual property right. This means that he may not even be concerned about legally protecting his mark and going through the USPTO.

In a recent , Abloh explained, “You can use typography and wording to completely change the perception of a thing without changing anything about it. If I take a men’s sweatshirt and write “‘woman’ on its back, that’s art.” In fact, his recent “FOR WALKING” boots for women, pictured below, have become increasingly popular and are usually out of stock, perhaps in part owing to his creative use of typography.

Though at first glance it may seem odd for a brand, or anyone for that matter, to seek to claim rights to the use of quotation marks, this may not be completely shocking. In fact, according to , Off-White’s general logo consists of diagonal stripes, pictured below, which are often seen on crosswalks and street signs. Nevertheless, the Off-White legal team for federal trademark registration, which is still pending.

It is not difficult to make sense of this. Trade-mark law the use of words, names, symbols, or any combination thereof, used for commercial gain as a means of brand identity. Furthermore, as noted above the only limitation on receiving this protection is whether there is a “likelihood of confusion.”

As such, originality is not a trademark requirement, so the fact that the use of quotation marks or diagonal stripes are ubiquitous is not fatal for Abloh’s brand. Furthermore, since Off-White is increasingly becoming popular, consumers are more likely to associate these designs with Abloh, and Off-White as a result. Therefore, the “likelihood of confusion” element mentioned above should not be a difficult hurdle for Abloh, either.

Finally, US trademark law on a first-to-use basis, as opposed to a first-to-file one. This means that a registration with the USPTO is not necessary—though it is beneficial—to gain common law protection of the design. The use of the mark for commercial gain, which is what Abloh has been doing for the past several months, is, indeed, what he should be doing.

Nevertheless, it will be interesting to see whether Abloh actually pursues legal protection.

Saba Samanian is an IPilogue Editor  and a JD Candidate at Osgoode Hall Law School.

The post Virgil Abloh’s “Trademark” appeared first on IPOsgoode.

Recently, knock-off basketball jerseys bearing the trademarks of the Golden State Warriors and Cleveland Cavaliers were mass-produced around the time the two teams met in the NBA Finals. Unfortunately, consumers from buying these items as they are generally to feel that of these items would be worth it. In other words, the thrill of the find is sometimes the primary objective.

The Canada Border Services Agency (CBSA) has instituted a program that is geared towards “”. While the program has been communicated to the public and is relatively simple, it operates through a complaint system. This means that a Canadian trademark holder registered with the is eligible to file a  with the CBSA. Furthermore, processing a request takes four to six weeks and the applicant must fill out a that is not exactly user friendly.

Additionally, pinpointing the primary source of the counterfeit merchandise is a problem, which does not seem to be directly addressed by the CBSA. As such, an added layer of government support in this matter would likely prove to be helpful.

It is interesting to note that the United States (U.S.) is facing a similar struggle. The U.S. Customs and Border Protection (“CBP”), has also been trying, , to prohibit the sale and delivery of such products. Once again, this is much easier said than done. “Enforcing IPR laws is a priority trade issue for CBP and helps to protect America’s economic security and competitiveness,” said of the Apparel, Footwear and Textiles Center of Excellence and Expertise. “The significance of that mission is magnified even more during national sporting events such as the NBA Finals and just as our recent seizure activity shows, we remain committed to ensuring that arriving merchandise adheres to federal [intellectual property] law and shipments that infringe on registered trademarks will be targeted and seized.”

Section of the Canadian Trade-marks Act forbids the distribution, sale, or exportation of merchandise that infringe registered trade-marks, with a special focus on counterfeit goods in section This means that while the proper laws are in place, enforcement is the primary hurdle with respect to this issue.

Given the new age of Internet shopping, controlling the shipment of fake goods is increasingly difficult. While counterfeit merchandise used to be sent to stores, they are now being sent, individually, to online shoppers. As such, government officials are forced to find and seize counterfeits one-at-a-time.

Another issue is the public’s interest in counterfeit goods. Finding products that look very similar to that of high-end designers at a much lower price may make shoppers feel as though they are being clever. However, the harm that this brand of shopping inflicts can be profound. Firstly, this causes severe problems for designers who spend much more time, effort, and capital to produce the because counterfeits can tarnish the reputation they have built through branding, and diminish their company’s good will.

Furthermore, according to the U.S. Department of Homeland Security assistant special agent , counterfeiting efforts have to international crime rings that use this scheme to launder money from illegal drug sales and human trafficking. This direct link has is also supported by the .

So, the next time an ‘I-can’t-believe-it’s-not-real’ product catches your eye, please consider the consequences for all parties involved.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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In order for the turnover of styles and inventory to be profitable for fast-fashion retailers, costs must be cut somewhere. As such, intellectual property (IP) law and labour law issues have become increasingly ubiquitous for fast fashion brands and have drawn condemnation in the court of public opinion. For example, fast-fashion retailers, such as H&M, are increasingly facing scrutiny with respect to their .

Furthermore, international fast fashion retailer, , is no stranger to IP law disputes.

This time, Zara has set its sights on the innovative and contemporary clothing brand ACRONYM and has debatably copied its famous “functional strap” outerwear. Is it fair for Zara to copy a design that costs ACRONYM a significant amount of time and to produce?

As noted by the Toronto-based style law blog , which was co-founded by myself and IPilogue colleague Alessia Monastero, Zara’s repeat offences do not go unnoticed. In fact, two of Zara’s most notable IP disputes involve ACRONYM and .

In this case, ACRONYM founder, , has been selling its impeccably made coats for over 10 years. In fact, it has become known for its high-quality garments that are made to last. These designs feature a “functional strap” on the insides of the coats and contain a label that reads: “Interior crossbody strap allows wearer to carry over their shoulder.”

: ACRONYM, : Zara's Imitation Label

Aside from its creative designs, ACRONYM also uses a unique advertising plan, which markets the brand almost exclusively to fashion enthusiasts. For example, unlike mainstream brands, such as Chanel and Louis Vuitton, ACRONYM does not advertise on television, does not heavily seek out celebrities as ambassadors, nor aggressively use social media for promotion and marketing. Nevertheless, many have slowly started to become aware of the label due to Hugh’s partnerships with Stone Island and Nike.

The aim of copyright law, generally, is the protection of copyright owners to disallow others to copy one’s work without permission. The promise of this protection promotes creativity and the orderly exchange of ideas. However, it seems as though Zara does not entirely care about such protective mechanisms, since it is to copyright infringement. Perhaps, the revenues from selling copied designs en-mass offsets their litigation costs, though this is just speculation.

ACRONYM is protected by its , which was filed and published in 2003. Under this , ACRONYM “has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.” Zara’s functional strap certainly meets all of these criteria.

The United States Court of Appeals in , stated, “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Since the primary difference between the ACRONYM and Zara products is the quality of the material, an “ordinary observer” can very easily mistake the two labels since a reasonable shopper normally does not spend a lot of time examining the nuances of product quality. In essence, the products appear “substantially the same”.

Zara’s defence relies on a “sufficient distinction” between the two products. However, as seen in , the threshold for this is quite high. What constitutes as “sufficiently distinct” is often an additional part to the product or a substantial difference in the overall look. Given that Zara’s imitation does not, in fact, make a significant change to the original ACRONYM design, it is unlikely that a court will view it as being “sufficiency distinct”. Even if the court does find a distinction, it may decide to look at the prior art to ensure that no confusion will take place with respect to the product.

It nevertheless seems unfair that Zara is able to provide its consumers with a product that looks very similar to one that is being sold for almost 6 times its price point. However, since the onus remains on the party alleging the infringement to bring the issue forward, some labels may think that the cost of litigation –both time and effort– does not present a valuable trade-off.

Take ACRONYM, for example, with designs that are incredibly well made. While ACRONYM takes a detail-oriented approach to the quality, style, and longevity of their products, Zara’s research mostly consists of the latest trends and looking at the designs of other labels. As such, Hugh is not bothered by the copycats that have set their sights on the label, especially the fast fashion retailers that focus solely on style and very little, if at all, on quality. This is because Hugh does not feel as though he is losing the customers who prefer to purchase Zara’s cheaper imitation for the look as opposed to the quality. In fact, when asked his opinion on Zara’s imitation of the signature jacket, Hugh reportedly  with a simple: “LOL.”

Well played.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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