2010

Proposed Practice Notices: Professional Designations and Abbreviations, Acronyms and Initials

By In Case Law, Protection & Enforcement, Registration

The Canadian Intellectual Property Office has initiated two short consultations (January 29 to February 28, 2010) for proposed Practice Notices regarding section 12(1)(b) of the Trade-marks Act.  Section 12(1)(b) provides that “a trademark is registrable if it is not, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”. The two proposed Practice Notices address the application of 12(1)(b) to professional designations and to abbreviations, acronyms and initials.

If research discloses that an applied for trademark consists of a professional designation, the examiner will apply a first impression test to determine whether a consumer would assume the goods and services are produced by a professional with a designation similar to the applied-for trademark and if so, the trademark will be unregistrable, being clearly descriptive of the persons employed in the production of the wares and services.  The addition of an abbreviation, acronym or initial to the professional designation will not make the trademark registrable.

A trademark that consists of or contains an abbreviation, acronym or initial will be considered unregistrable if considered as a whole and if as a matter of first impression the abbreviation, acronym or initial is clearly descriptive or deceptively misdescriptive of the wares and services.  Moreover, the addition of an abbreviation, acronym or initial to a clearly descriptive word or phrase will not render it registrable as a trademark.

The changes arise in light of a recent Federal Court decision, College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Nature Medicine College of Canada, that considered some 39 trademark applications and registrations containing abbreviations, acronyms and initials and allegedly confusing with certain professional designations. Read more

Books Titles Unregistrable as Trademarks in Canada

By In Case Law, Legislation, Protection & Enforcement

In a decision that could significantly impact rights-holders in the media and entertainment industries, the Federal Court has suggested that book titles are, prima facie, not properly registrable as trademarks in Canada.

In Drolet v. Stiftung Gralsbotchaft (2009 FC 17) the court was tasked with considering a range of copyright and trademark issues.  The litigants were all involved in the Grail Message movement—a religious movement centred around a series of writings prepared in Germany in the 1920s and 1930s. The plaintiff sought to expunge the defendant’s Canadian trademark registrations pertaining to the title of a book central to the movement for reasons relating to descriptiveness.

First applying the conventional analysis proscribed under s. 12(1)(b) of the Trade-marks Act (the “Act”) to determine if the mark was “clearly descriptive”, the court concluded the mark did not meet this test, as the title did not convey to a consumer a clear indication of the book’s contents or subject matter.  However, writing for the court Mr. Justice de Montigny went on to assert: Read more

Consultation by CIPO on Madrid and Singapore Treaties

By In Foreign Protection, Legislation, Registration

The Canadian Intellectual Property Office (CIPO) recently launched a new consultation on possible Canadian accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Singapore Treaty on the Law of Trademarks (the Singapore Treaty).

This is not the first time CIPO has looked at the issue of Canada acceding to the Madrid Protocol.  Five years ago a similar consultation took place.   In response to a request for input, CIPO received feedback  from the Intellectual Property Institute of Canada and from the International Trademark Association, though no further action was taken by CIPO at that time.

According to CIPO’s backgrounder to the current consultation, the intervening five years have seen important trading partners such as the United States join both the Madrid Protocol and the Singapore Treaty.  As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices. Read more

GLAMOUR’s Appeal Denied

By In Case Law, Famous Marks

The Federal Court of Appeal has dismissed an appeal by Advance Magazine Publishers Inc. with respect to the Federal Court’s earlier finding in Advance Magazine Publishers Inc. v. Farelyco Marketing Inc.  As readers of this blog may recall from our earlier post on this topic, the Federal Court had found no likelihood of confusion between the Farleyco mark GHOULISH GLAMOUR for Halloween cosmetics and eyelash accessories and the Advance mark GLAMOUR used in association with magazines and related products and services.

The Federal Court of Appeal agreed with the finding of the lower court judge that there was “no factual foundation for the proposition that the appellant has expanded the scope of its GLAMOUR mark by having licensed this mark to third parties”, since the third parties were merely using Advance’s GLAMOUR magazine and website to advertise their own products.