NADA and NADA YOUSIF battle it out on the fashion catwalk
In Nada Fashion Design Inc v Designs by Nada (2007 FC 1077, October 19 2007), fashion designer Nada Abdel-Shahid was given the go-ahead by the Federal Court of Canada to participate at the L'Oréal Fashion Week in Toronto using the trademark NADA YOUSIF.
Nada Fashion Designs Inc, the plaintiff in a motion for interlocutory injunctive relief on the basis of passing off, is in the business of designing, manufacturing and selling clothing, among other things. Nada Fashion and its predecessor in title have used the trade name 'Nada' since 2001. Nada Fashion also used the trademark NADA since March 2002 in association with clothing.
Abdel-Shahid is a fashion designer in Toronto who claimed to have used the trademark BY NADA since September 1 2002 in association with clothing-related goods. Nada Fashion forwarded a cease-and-desist complaint to Abdel-Shahid, who replied by offering to use the trademark NADA YOUSIF instead of the trademark BY NADA at the L'Oréal Fashion Week. Nada Fashion rejected this proposal.
At the hearing of the motion, the court found that there was likely to be confusion between NADA and BY NADA for "an average person familiar with Nada Fashion's trademark, but with imperfect recollection". However, it was "satisfied that a serious consumer or major retailer attending L'Oréal Fashion Week would not likely confuse the wares represented by the trademark NADA YOUSIF with those of Nada Fashion". In so finding, the court noted that other designers presenting at the event shared the same first name.
Therefore, the court held that there was no serious issue to be tried with regard to the trademark NADA YOUSIF, nor irreparable harm that could not later be compensated through damages. Therefore, the court dismissed Nada Fashion's motion.
If Nada Fashion pursues its complaint, it will undoubtedly be looking at ways to provide evidence to support its contention that brands are particularly important to a fashion designer; if a brand is 'tainted', this could signal the end of its life. However, the court found that Nada Fashion's evidence on this point was insufficient on the motion.
Toni P Ashton, Sim & McBurney, Toronto
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