Category: Trademarks

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These Heels Were Made for Walking: Christian Louboutin S.A. v Yves Saint Laurent America Inc.

Last year, TheCourt.ca tackled the increasingly heated battle between two luxury fashion houses, Christian Louboutin and Yves Saint Laurent (YSL). Christian Louboutin, the famous French shoe designer best known for his heels with the red sole, sued Yves Saint Laurent for trademark infringement, claiming more than $1 million in damages. The battle began when Yves Saint Laurent came out with its Spring 2011 line, which featured monochromatic shoes. Although the shoes came in a variety of colours, Louboutin took issue with the red heels; the outer soles were painted in the same lacquered red that Louboutin had been using for...

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Masterpiece Inc v Alavida Lifestyles Inc: Much Confusion About Trade-mark Registration

Trade-mark law exists to protect consumers from confusion. Unregistered trade-marks are protected at common law and exist as soon as the mark is used, while registered trade-marks are protected under the Canadian Trade-marks Act, RSC, 1985, c T-13 [Act] and give the brand owner a wider scope of exclusive rights than unregistered marks. Nevertheless, protection arises only when the mark is actually in “use,” and registered marks could still be expunged if the mark is not “used” in the normal course of trade. However, the mystery remains: how does one reconcile a dispute between a registered trade-mark in Ontario and an existing (albeit...

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The Ultimate Shoe-down: Christian Louboutin S.A. v. Yves Saint Laurent America

In The Wizard of Oz, Dorothy taps her ruby red slippers three times to go home. What if the ruby colour found themselves on a pair of five-inch wedged heels? If the Wicked Witch of the West could get her hands on that pair, would she then hold the power to transport herself to Kansas too? Christian Louboutin, the famed French shoemaker celebrated by everyone from Jennifer Lopez to Carrie Bradshaw from Sex and the City, would answer in the positive. For Louboutin – and for those who swear by his stilettos as a means to elongate legs, boost confidence...

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Target vs. Target? Just One Hitch Between Me and The Dollar Spot

As excitement builds for U.S retailer Target Corp.’s anticipated launch in Canada, one tiny hiccup awaits the company at the border: a trade-marks lawsuit.  Isaac Benitah, who owns Canadian retailers such as Fairweather and International Clothiers, has filed a $250-million lawsuit in the Federal Court against Target Corp. and an injunction preventing the American company from using the “Target” name.  He claims he has had rights to it since 2001 through his clothing chain, “Target Apparel.” Have you heard of Target Apparel? Neither have I. A prompt Google search, however, reveals that the chain has opened two stores so far...

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Would a Rose by Any Other Name Still Smell as Sweet? – The Eternal Trademark Question

Facebook, in another new and creative attempt to set itself apart from its competitors (Twitter and MySpace), now allows users to register their personalized web addresses. Since I have already pontificated in previous posts on the benefits of Facebook and the extent to which Facebook has integrated itself into the lives of not just consumers, but businesses as well, I will attempt to be as concise as possible in my discussion of Facebook. Since many corporations promote their businesses through Facebook, this registration may end up becoming a trademark nightmare as they trip over themselves to try to get their...

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Nissan v. BMW: ‘M’ wars heading to SCC?

After a see-saw battle at the Federal Court and Federal Court of Appeal, this trade-mark battle between the two automotive manufacturers may be coming to the Supreme Court of Canada. BMW has filed for an application for leave to appeal. Facts BMW has, for decades, used the letter “M” in conjunction with various numbers to distinguish its high-end performance vehicles. In car enthusiast circles, the M3 and M5 are known to be the top models of the respective 3 and 5 series lines of BMW vehicles, which in addition to being luxury vehicles, offer enhanced performance characteristics and distinctive badging....

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Leave Application denial has implications for Trade-mark Law

Back on June 28, 2007, the Supreme Court of Canada (“SCC”) denied leave to appeal in the case of United States Postal Service v Canada Post Corporation, 2005 FC 1630. Here’s a link to Clark Wilson LLP’s trademark law blog coverage of the implications of the decision – effectively that since the SCC has decided not to speak on the issue, it is now clear that to qualify for protection as an “official mark” in Canada, one must be a Canadian authority. Please click on through for some details of the case. Additionally, in arguing for its position at the Federal...

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Famous Brand Names and the Curbing of Trademark Sprawl: Mattel and Veuve Clicquot

In light of The Court’s recent encounter with trademark laws, this seems an apt time to review the Supreme Court of Canada’s (“SCC”) update on trademark laws in this country as found in two recent cases, Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 [Mattel], and Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 [Veuve Clicquot]. Both of these cases dealt with a famous brand name contesting the use of a similar name by a lesser-known company to sell wares or services that were decidedly dissimilar. In Mattel, the SCC upheld the registration by Barbie’s, a restaurant chain, of its trademark...