Will The North Face put on a brave face? COC turns the screw

A fortnight ago, our Friday Fantasies led with a story, "Canadian Olympic Committee in Unfair Competition Dispute with US Clothing Company", from Katfriend Lucas S. Michels (an attorney with Ironmark Law Group PLLC and blogger on IP Exporter). Now there's a sequel. As Lucas explains:

Canadian Olympic Committee Files Lawsuit Against The North Face

Earlier this week, the Canadian Olympic Committee (COC) filed a lawsuit against The North Face over their unauthorized use of Olympic themed trade marks on apparel included in its “Villagewear Collection”, and related promotions in Canada. The lawsuit against the U.S. outdoor apparel manufacturer was filed in Supreme Court of British Columbia. Specifically, the COC objected to The North Face’s use of Olympic-related marks without being an official sponsor of the COC or the 2014 Sochi Winter Olympic Games, and the specific use of the marks VILLAGEWEAR, SOCHI, OLYMPIC, and OLYMPIC GAMES.

As you may recall, I wrote this post for the IPKat on January 24th on the COC’s initial threats to take legal action concerning this dispute. Therefore, I want to follow-up by responding to this recent turn of events.

The recent lawsuit comes as a bit of a surprise based on recent events. It was earlier reported that the COC wanted to settle the dispute without going to Court. Further, The North Face was reported to have rebranded the Villagewear Collection as the “International Collection”, including removal of many of the contested marks. Despite these efforts, the COC was not satisfied. As outlined in the complaint, the COC felt that The North Face failed to properly disclose the “full nature and extent of the Defendant’s wrongful conduct regarding the advertising, marketing, promotion, merchandising and sale of the Villagewear Collection in Canada”.

Snow is for sculpture, not for sports,
says Sooty ...

In reviewing the COC’s complaint, it contains claims typically made in similar cases in other common law jurisdictions. However, it also includes trade mark claims unique to Canada’s trade mark laws. The COC claims that The North Face’s use of the Olympic-themed logos qualifies it for contractual, tortious, anti-competition and common law trade mark recovery through unjust enrichment, business interference, unfair competition and passing off doctrines respectively. However, the COC also claims that The North Face’s use of the Olympic themed marks constituted use of “prohibited marks” in Canada as provided under Section 9 of the Trade-marks Act. Although it is unclear from COC’s complaint how The North Face’s Olympic themed marks were prohibited marks, it is possible that the COC is attempting to argue that use of the Olympic themed marks in association with Canadian-themed apparel in the International Collection either encompasses the Canadian flag or suggests government approval or authority of the apparel—both of which are prohibited acts under the Trade-marks Act.

Additionally, the COC claims that use of the Olympic–themed marks are a violation of The Olympic and Paralympic Marks Act (OPMA). OPMA prohibits unauthorized use of Olympic related marks in Canada such as OLYMPIC, OLYMPIC GAMES and their French equivalents. Similar to passing off and unfair competition under the Trade-marks Act, Section 3 of OPMA states that

No person shall adopt or use in connection with a business, as a trade-mark or otherwise, an Olympic or Paralympic mark or a mark that so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it.

It remains to be seen whether the COC and The North Face will settle this lawsuit. As I had mentioned, it was expected that these parties would settle this dispute. Yet the COC’s lawsuit shows this dispute to be far from settled. What is certain is that businesses who wish to capitalize on foreign Olympic related promotional activities need to ensure that their branding is compliant with foreign national trade mark laws before beginning such activities.

The Winter Olympics start this week in Sochi. What events will you be watching?

The other North Face, here and here