Toronto Ontario Canada Fashion Industry Lawyers

Branding | Brand Management and Protection | Anton Piller Order
Fashion Trademark Law of Canada | Counterfeit Luxury Goods Litigation
Acting in Ontario for U.S. and Hong Kong Clients and With Their Lawyers
Ontario International Sale of Goods Act | Internet Online Retail and e-Commerce Litigation

The fashion industry presents a wide range of challenges in a variety of areas, from intellectual property disputes to retail leasing agreements. The litigation team at Gilbertson Davis LLP can act for clients in the fashion industry facing issues in trademarks and copyright disputes, internet and e-commerce litigation, franchise and distribution agreements, leasing, jurisdictional challenges, and bankruptcy.

Businesses in the increasingly global fashion industry also face challenges on an international scale. Contractual disputes, trademark infringement and e-commerce litigation are just a few of the challenges in which fashion businesses must also consider crossborder issues. With our considerable experience in advising clients involved in both international arbitration and cross-border litigation, the team at Gilbertson Davis LLP is well-placed to provide timely, cost-effective service for fashion industry clients.

Fashion law disputes can include any of the following matters:

    • Intellectual property and patents
    • Trademark infringement and passing-off
    • Counterfeiting
    • Brand management
    • Appropriation of personality, modeling and celebrity endorsements
    • Injunctions and urgent relief
    • Anton Piller orders
    • Copyright
    • Internet Online Retail and e-Commerce

    • Event planning and force majeure clauses
    • Franchise and Licensing Agreements
    • Distribution Agreements
    • Contract interpretation
    • Commercial leasing
    • Debt Collection
    • Bankruptcy and Insolvency
    • Import and export
    • Outsourcing
    • Joint ventures

Fashion Design, Trade-mark Infringement and Brand Management

In the modern economy, the importance of a brand cannot be understated, and for many businesses their trademarks can be one of the most valuable assets of the company. However, trademarks can only retain their value if they are not used or mimicked by competitors or associated with another business that might depreciate the goodwill developed in that mark. That is why it is important to protect your trademark rights through prompt and effective enforcement proceedings.

Luxury Goods, Counterfeiting and Grey Market Goods

With the large, growing global personal luxury goods market and the advance of online retailers and e-commerce, the makers of luxury goods are faced with new challenges to preserve their intellectual property rights. Recent high-profile litigation involving large luxury firms and online retailers highlight the need for effective brand management, protection of copyright and trade-marks. Distributors and franchisees who face pressures from the import of grey market goods should also be aware of protections that may be available to them under Canadian trademarks and copyright law.

Gilbertson Davis LLP’s lawyers have experience in dealing with trademark and copyright disputes and. have acted for and represented owners, licensees, and others in actions relating to copyright infringement, trademark infringement, passing off, and disclosure of confidential information. We recognise the importance of your intellectual property, and the need for prompt enforcement of your rights.

Fashion Design and the Industrial Design Act

For many designers, their work will cannot be adequately protected by copyright alone, and their designs may not be eligible for a patent. When that is the case, designers may often consider protecting their intellectual property by way of registering an industrial design. For designs that are otherwise unprotected by a trade-mark or a patent, the importance of safeguarding this intellectual property cannot be understated. In an industry where your intellectual property represents your most valuable asset, it is essential to protect your intellectual property rights through prompt and effective enforcement proceedings.

The Industrial Design Act

Under the Industrial Design Act, fashion designers can register their original design (such as a pattern on an item of clothing, or a decoration on an accessory) with the Canadian Intellectual Property Office. Once they have done so, they then have exclusive right to the usage of that design, in Canada, for a ten-year period. If someone else uses a protected design during that period, the person who registered the design can then bring an action against them, so long as it is within three years of the alleged infringement. Without properly registering their designs, a designer may be unable to prevent or limit others from counterfeiting their unique designs. By registering their design, a designer can also assign their rights to another person or corporation or and licence the usage of their design.

Key stakeholders in the fashion industry such as distributors, dealerships, franchisees, franchisors, licensees and licensors may find themselves embroiled in disputes arising out of or in connection with its business relationships. Where those disputes cannot be resolved through negotiation and agreement, clients may need representation in litigation and commercial arbitration.

At Gilbertson Davis LLP, we are experienced in a wide variety of franchise, distribution and licensing issues.

In addition to advising on the applicability of the Ontario franchise legislation, the Arthur Wishart Act (Franchise Disclosure), 2000, SO 2000, c 3 and regulations made thereunder (the “Act”), we can also advise and represent clients in wide-ranging matters and disputes including:

  • Determining the legal nature of relationship of the parties – whether the relationship is in law one of licensing, distribution or franchising.
  • Contract law, including issues concerning rights, obligations, performance, enforcement, breach of contract and damages.
  • Equitable remedies such as rescission (un-making the contract) or specific performance of a contract.
  • Commercial leasing of equipment and commercial landlord and tenant issues and disputes.
  • Civil fraud, civil conspiracy to injure or civil conspiracy to carry out wrongful act likely to injure.
  • The obligation on the franchisor to provide a prospective franchisee with a Disclosure Document under the Arthur Wishart Act.
  • The duties of franchisees and franchisors under the Arthur Wishart Act of fair dealing, good faith and acting in accordance with reasonable commercial standards.
  • Remedies and time limits to pursue remedies, including for rescission of the franchise agreement and damages.

The fashion industry is a global phenomenon. Members of the industry should be aware of the international aspect of all areas of fashion, including franchising, leasing, and contracts. Ontario has adopted the United Nations Convention on Contracts for the International Sale of Goods by enactment of the International Sale of Goods Act. Our senior commercial counsel have considerable experience in international sale and transportation contracts. An understanding of jurisdictional issues and the “conflict of laws”, the body of law used to determine the law to be applied to a dispute is often central to an international or cross-border contract dispute.

We have strength and experience in advising foreign clients involved in litigation or arbitration in Ontario and across its borders. We are often consulted by those located in the United States, and in the past have been consulted by or retained in litigation by those (or matters located) in Alaska, California, Washington, Nebraska, Illinois, Missouri, Ohio, New York, New Jersey, Rhode Island, Massachusetts, North Carolina, Tennessee, Georgia, Louisiana, Florida and Texas.

Internationally, we have also been involved in litigation or arbitration with clients (or matters) located in jurisdictions which include the Netherlands, Norway, Sweden, England, Denmark, Italy, Switzerland, Germany, Greece, Cyprus, Malta, Monaco, Guyana, Liberia, South Africa, Angola, The Bahamas, Bermuda, British Virgin Islands, Dominican Republic, Dubai, United Arab Emirates, Iran, Kuwait, India, Bangladesh, South KoreaHong Kong, PRC and Australia.

Why Choose Gilbertson Davis LLP

We strive to resolve our clients’ disputes early and effectively through the provision of quality legal services at reasonable rates.  We are experienced litigators both in the courtroom and in arbitration. We have experience in the Ontario Superior Court of Justice, the Divisional Court, the Federal Court, Federal Court of Appeal, the Ontario Court of Appeal and in arbitration.

We are a firm which has nearly 35 years of practice in Toronto, Canada. We are ethical, professional and practical.

If you or our business have issues relating to the fashion industry or fashion law, please contact Gilbertson Davis LLP to arrange an initial consultation.

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Please note that while we appreciate your interest in Gilbertson Davis LLP, we are not able to offer either a contingency retainer or any retainer for loss less than $50,000

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