Neil Melliship

CIPO Seeks Consultation On More Proposed Changes

By In Uncategorized

The Canadian Intellectual Property Office recently posted a consultation, requesting comments on three proposed changes to its Office practice.  The proposed changes are all relatively minor, but worth noting.

The first proposed change is that the Registrar will no longer require applicants to confirm that they are a “person” as defined in Section 2 of the Act.  Previously, the Examination Manual has required Examiners to seek confirmation from applicants where it’s not clear from the application that the applicant is a legal entity – for example if a individual files an application under a “doing business as” name rather than under their legal name.  Under the proposed Practice Notice, Examiners will no longer request clarification from the applicant and it will be up to the applicant to ensure that it complies with the Act in this regard.

The second proposed change is in relation to colour claims in applications.  The Act currently provides that unless an application is for a word mark not depicted in a special form (i.e. if the mark is anything other than a word mark in block letters), then the application must contain a drawing of the mark and if colour is claimed as a feature of the mark, the Regulations stipulate that the colour(s) must be described.  Rule 28 of the Regulations provides that if a description of the colour(s) as provided by the applicant is not clear, the Registrar can cause the applicant to provide a drawing of the mark, lined for colour in accordance with a chart that is set out in Rule 28.  This chart contains different lining specifications for all the basic colours but there is no indication of how (or whether) an applicant is to differentiate between different shades/hues of a particular colour – for example there is a specific line drawing for the colour “Blue” (horizontal lines) in Rule 28, but this would apply to light blue, dark blue and everything in between. 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

VANOC Gets Sour Taste From Lululemon

By In Domain Names, Famous Marks, Protection & Enforcement, Trademark Oppositions

Vancouver based yoga wear retailing phenom Lululemon Atletica has tweaked the nose of the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Games (VANOC), with a new line of clothing. A story yesterday reported that Lululemon has introduced a new line of clothing named “Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition”. VANOC reportedly is upset that Lululemon has only complied with the letter and not the spirit of the laws in Canada that protect the various trademarks used to promote the Olympic Games generally, and the Vancouver 2010 Winter Olympic and Paralympic Games specifically.

The clothing line in question features various items in the national colours of Canada, the U.S., Sweden and Germany. Notably, the Canadian hoodies feature gold zippers while the zippers in the colours of other countries have silver zippers. Lululemon lost out to the Hudson’s Bay Company in its bid to be the official apparel supplier to the Canadian Olympic team for the Summer and Winter Games during the period from 2006 to 2012.

Readers of the Knowledge Bytes newsletter will be aware of the legislative hammers that are at VANOC’s disposal to enforce its trademark rights against both would-be infringers and ambush marketers alike. These include the Olympic and Paralympic Marks Act, which contains lists of specific words that either can’t be used at all, or that can’t be used in combination with other specific words–for example the combination of “Vancouver” and “2010”. Read more

BTO Members Taking Care of Legal Business

By In Case Law, Protection & Enforcement

Fans of the 70’s Canadian super group, Bachman Turner Overdrive (also commonly known as BTO), may have noted the report of a legal dispute between current and former band members over the rights to the band’s trademarks.  The mark BACHMAN-TURNER OVERDRIVE  is the subject of two registrations in the Canadian Intellectual Property Office and there are several pending applications for similar marks. 

While disputes between ex-band mates are not unusual, this one has an added twist in that it pits one brother (Randy Bachman, widely considered the most talented member) versus another (Robbie).

While this appears to be primarily a contractual dispute, the trademark issues are front and centre and serve to highlight the value of branding to musical groups, both during their heydey and into later years when remaining members (and often non-members) continue to live off the avails of a group’s prior glories.

Perhaps one day someone will turn this family feud into a Broadway musical – “Peg Boys” might be a nice nod to the Winnipeg roots of the band.

More Beer Brand Wars

By In Branding, Case Law, Protection & Enforcement

You can tell that it’s Fall up here in the Great White North.  The weather is turning cooler, the NHL preseason is in full swing and another trademark battle between Canadian brewery icons Molson and Labatts has started. 

A recent report indicates that Molson Coors Brewing Company has launched a lawsuit in Canada’s Federal Court against Labatt Breweries of Canada, claiming that the mountain imagery in new ads for Labatt Kokanee beer infringes the copyrighted images that Molson uses on its Coors Light beer products in Canada.  Molson is reportedly seeking $10 million in damages.

For its part, Labatts says that mountain imagery has been part of its branding for four decades and that the new graphics feature the same Kokanee Glacier that the beer is named after.

Trademark Clearinghouse To Help Combat Cybersquatting?

By In Domain Name Disputes, Domain Names, Famous Marks, Protection & Enforcement

A story earlier this week reported that the Internet Corporation for Assigned Names and Numbers (ICANN) – the organization charged with oversight of the Internet, including the creation of new generic top level domains (gTLD’s) – is considering setting up a centralized database of trademarks to help combat cybersquatting and other negative domain name registration practices.  The proposed IP Clearinghouse would be a depository for trademarks and provide unified rules for trademark holders to block domain name registrations that include use of such trademarks, unless the applicant can prove that its proposed use will be legitimate.

This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.

Breweries Battle Over Ontario

By In Case Law, Protection & Enforcement

In yet another Canadian trademark dispute involving alcoholic beverages – seems to be a bit of a trend lately – Ontario based Brick Brewing Co. Limited has issued an announcement that Labatt Brewing Company Limited has commenced an action in Canada’s Federal Court against Brick, alleging that Brick’s RED BARON trademark infringes Labatt’s BRAVA trademark.  While these marks, taken by themselves, seem quite different, the dispute focuses on the similarities between the labels and packaging used with these products, along with the similarity of the bottles.

In an interesting side bar, Labatt has a significant ownership interest in Ontario’s “The Beer Store” which is by far the largest retail channel for beer in Canada’s most populous province.  As such, Labatt indirectly receives fees from Red Brick in order to display its RED BARON lager in a lobby display program at The Beer Store, as well as fees to sort RED BARON bottles, which are non-industry standard.  Brick argues that because of the set up of The Beer Store, where more popular brands such as those sold by Labatt are featured more prominently, consumers generally have to ask for Brick’s products, such as RED BARON, by name, thereby lessening any likelihood of confusion.