Canada: Protecting Fashion: A Rounded IP Strategy

Last Updated: September 12 2018
Article by Brigitte Chan and Tamara Céline Winegust

Canada presents options for those seeking to protect and enforce rights in luxury brands, including effective mechanisms and alternatives for strategic defence and enforcement.

Canada can present challenges for fashion and luxury brand owners seeking to protect their intellectual property through trademark registrations. Restrictions on registering names, signatures, portraits and the shape of goods mean that fashion brands may need to commence use of their mark in Canada before filing and provide evidence to support an acquired reputation in Canada. Once registered, strategies for enforcing such rights must also be carefully considered. Understanding the challenges that fashion brands might face in seeking trademark registrations and enforcing those rights, as well as alternative avenues for protection (eg, industrial design protection), can help brand owners build a rounded strategy to protect their fashion- related intellectual property in Canada.

Registration challenges

Fashion brands often seek to register designer names and product designs as trademarks. Section 12(1)(a) of the Trademarks Act (RSC, 1985, c T-13) prohibits the registration of marks that are "primarily merely a name or surname" of a person who is living or has died in the preceding 30 years. Examiners routinely object where it is clear that the mark sought to be registered is the name of a person, or where there are more than 25 entries in the Canadian telephone book for persons with the same name. Names of fictional persons may be allowed – the Federal Court in Gerhard Horn Investments Ltd v Registrar of Trademarks (1983, 73 CPR (2d) 23 (FC)) limited the restriction to names of real persons living or dead in the past 30 years. Adding a design component can also help to move a mark beyond the scope of this restriction. If the objection cannot be overcome by argument, evidence supporting the mark having acquired secondary meaning in each province and territory in Canada must be submitted by way of an affidavit or statutory declaration. The burden of proof on applicants is quite high. It can be challenging for brands new to Canada, or where sales are limited to certain areas of Canada, to show a satisfactory amount of acquired distinctiveness.

Where the mark could suggest a connection with someone living (eg, a name), Section 9 of the Trademarks Act requires that person's consent for the mark to be adopted, used or registered. Consent is similarly required to use and register the portrait or signature of someone living or who has died in the preceding 30 years. The Trademarks Office has become increasingly particular about what is acceptable consent and frequently requires that the trademark application's particulars be reflected in the document. This can be challenging where worldwide consent has already been acquired and the person whose name, portrait or likeness is being used is difficult to track down.

Designs that are the shape of the goods or their container, or a mode of wrapping or packaging the goods, are considered to be 'distinguishing guises'. These typically include the design of clothing or accessories. Marks considered to be distinguishing guises must be used in Canada so as to have become distinctive of the applicant before they can be protected. As with name marks, proof of use and acquired distinctiveness must be filed with the Trademarks Office as a condition of registration. Distinguishing guises are distinct from three-dimensional trademarks, patterns or colours applied to an object, which can be treated as ordinary trademarks.

Pending changes to the Trademarks Act (anticipated to come into force in 2019) will eliminate the 'distinguishing guises' category. However, these changes will also present new challenges for fashion brand owners looking to register their trademarks in Canada. In particular, once the changes are implemented, examiners will be entitled to raise objections based on a mark's distinctiveness, in which case, evidence of the mark's acquired distinctiveness would need to be filed.

Even if not registered, trademarks may still be used and could be enforced through the common law cause of action known as 'passing off'. However, such enforcement would be limited to the geographic area in which the mark has acquired goodwill. With registration, rights holders gain the benefit of national protection and access to additional causes of action (particularly infringement and depreciation of goodwill).

Alternative protections

Where it may be difficult to secure trademark registration, particularly for clothing and accessory designs, other types of intellectual property could be used to fill the gaps. For example, the Industrial Design Act (RSC, 1985, c I-9) provides for up to 10 years' registration of designs that consist of or incorporate "features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye". Protection will be available only if the application to register the design is filed within one year following publication or public disclosure of the design. Because Canadian jurisprudence has established that industrial design protection and trademark protection are not mutually exclusive, many rights holders in the fashion industry have chosen this route to initially protect new clothing and accessory designs, using the 10-year monopoly to establish the design's distinctiveness before applying for trademark registration.

Similarly, patents could be relied on to protect new, useful and non-obvious technologies incorporated into the clothing or accessories.

Protection under the Copyright Act (RSC, 1985, c C-42) is another potential route for protecting original works (eg, designs). In Canada, copyright protection lasts for the life of the work's author plus 50 years and provides for set statutory damages in cases of infringement. While original artistic works such as logos would likely be able to claim the benefit of copyright protection, this may be limited where the artistic work is a design applied to useful articles. In particular, Section 64 of the Copyright Act deems that copyright in designs for useful articles is not enforceable after the rights holder has manufactured this article over 50 times. Case law has clarified that this '50+1' threshold applies to authorized reproductions made anywhere in the world. In the fashion industry, such a threshold likely poses little issue for couture designs produced in a limited number, but it does raise challenges where designs are manufactured on an industrial scale. That said, there are exceptions for "material that has a woven or knitted pattern or that is suitable for piece goods or surface coverings or for making wearing apparel", as well as representations of real or fictitious beings, events or places. Matters that are trademarks are also exempt and could still be protected through copyright, further underscoring the benefits of obtaining registration.

Enforcement

Owners of registered trademarks can enforce rights through infringement and depreciation of goodwill actions, as well as the common law tort of passing off. Recent changes to the Trademarks Act designed to assist rights holders with enforcing against counterfeiters saw an expanded definition of 'infringement', which now explicitly includes the sale, offering for sale and distribution of labels and packaging bearing a trademark that the person knows or ought to know is intended to be associated with goods or services that are not those of the owner of the registered trademark, and similarly explicitly prohibits the import of such goods. Whether a counterfeit or just another similar mark, rights holders must show that use of the mark is likely to cause consumer confusion regarding the source of the goods to succeed in a trademark infringement action.

Where a mark is not registered, a common law passing-off action can assist with enforcement. To succeed, the rights holder must demonstrate acquired goodwill in the trademark, name or dress; that the defendant made a misrepresentation likely to lead the public to believe that the goods offered are those of the rights holder; and that such misrepresentation was likely to cause damages. For fashion brands, the flexibility provided by this common law cause of action is advantageous, as it allows claims to be brought with respect to a brand's general look and feel (eg, trade dress) that may not be protectable through registration but that consumers associate with the brand anyway.

Actions to stem the flow and sale of counterfeit goods present unique challenges. A recent court decision suggests that Canadian judges are alive to the challenges posed by recidivist sellers and bringing claims against landlords of places where counterfeits are known to be sold. In Lam v Chanel S de RL (2017 FCA 38) the Federal Court of Appeal issued an award of C$250,000 in punitive damages personally against the landlord of a property housing a business which was found to have repeatedly sold counterfeit Chanel products, including in violation of a prior court order.

Additionally, a new procedure, the 'request for assistance' (RFA), is designed to give holders of copyrights and registered trademarks a more effective avenue through which to act against counterfeit importers. Under this procedure, rights holders can record their copyright and registered trademarks with the Canada Border Services Agency, which is then empowered to seize for a short time (up to 10 days for non-perishable goods) the suspected counterfeit goods at the border. The rights holder will be notified and have the option to obtain additional information about the import and commence proceedings. However, unlike other jurisdictions, the RFA programme does not empower the border guards to destroy stopped counterfeit goods at the rights holder's request. Rather, a court order is required before the goods can be destroyed.

Comment

While Canada may present certain hurdles for luxury brand owners, it also provides effective mechanisms and options to assert their rights. Luxury brand owners should consider various means of protection in Canada for strategic defence and enforcement against others.

This article first appeared in World Trademark Review issue 74, published by Globe Business Media Group – IP Division. Please go to www.WorldTrademarkReview.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Brigitte Chan
Tamara Céline Winegust
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions