By: Tanya Debi
When Laura Jean Bernhardson started her knitwear label, Fresh Baked Goods, she tried to create a brand that people would recognize and appreciate. Her signature product, hand-made knit sweaters, was so successful that people appreciated it a little too much and copied her designs. But Bernhardson fought back. “Someone, long ago, was working for me and went and started making very similar sweater styles with all the bells and whistles that made me special,” Bernhardson said. “She got them into certain retailers and I went and I spoke to them and one retailer took them out and said that’s not cool.” As betrayed as Bernhardson felt, she was lucky the retailers carrying the forged sweaters, were gracious enough to discontinue selling the product. In most cases, though, this is not so easy. Thankfully, fashion laws in Canada can help prevent against attacks on intellectual property and help you deal with it; if it has already occurred.
Ashlee Froese is a Canadian fashion lawyer at Gilbert’s LLP and also the creator behind canadafashionlaw.com, a website that helps designers navigate the laws of fashion in Canada. Froese said the first mistake that many designers make is that they don’t protect their creative designs or ‘intellectual property’. “I help designers protect their creative ingenuity because that is their greatest assist,” she says. “I find that designers don’t necessary understand that intellectual property protection is a business tool to protect their creative ingenuity and don’t really take advantage of that benefit and because they don’t enforce it, it creates a ground for impersonators.”
Sabrina Fiorellino, another lawyer with Gilbert’s LLP, who works in fashion and business law says there are many ways to protect yourself from falling victim to counterfeiters. “Some of it comes up in the designs themselves,” she says. “People put logos on metals, or have intricate numbers woven in so that you can tell the real from the fake.” These anti-counterfeiting policies can help private investigators track the counterfeit product, both online and on the ground. Froese also advises that designers should trademark their designs in order to protect against counterfeiters. Trademarks can be a useful tool when fighting forgers and goes beyond just the name of the brand or the logo. “It can include protecting elements of the actual design process, like fabric, for example with the Burberry plaid,” Froese said. “Those are all protected under trademark law.”
If you believe you have a counterfeit case on your hands, there are many ways that you can fight back. “Often it starts with a cease and desist order from a lawyer, saying it has come to our attention that you have been counterfeiting, please stop,” Fiorellino said. However, they may or may not come back with a response. If they do, “you could try and settle. If not, you’re going to court,” Froese said. “Whether it’s an injunction, summary judgment, standard litigation, it depends, but there are legal avenues for everyone.” Nevertheless, before you become embroiled in the legal system, you have to remember that there is no guarantee that you will win, it takes up a lot of money and time and you have to factor in the business rationale behind it. As well, many counterfeiters are black market dealers, who are good at covering their tracks and there is no guarantee that they will even be caught. “Those counterfeiters aren’t operating legitimate businesses, so it is harder to catch them and harder to quantify their sales,” Froese said. “They are not claiming taxes, they don’t have an accounting book. It can be challenging.”
Bernhardson has moved on from the incident, but believes that forging somebody’s design can, in the long-term, lead to the demise of your own line. “The reality is that when people copy, they are robbing themselves of the opportunity to create something unique. To thrive as a business owner, you need to generate ideas, once that idea runs out you have nothing in the pipeline to keep you going, so there goes your business.” So think before you copy someone’s designs, there is a good chance you’ll regret it.