Trade-marks Act Amendments: Put Down That Glass of Canadian Burgundy!

On December 31st, while many readers (and writers!) of the Canadian Trademark Blog were likely raising a glass to celebrate the New Year, long-awaited amendments to the Canadian Trade-marks Act quietly came into force.  The changes pertain to Section 11.1 of the Act which deals with geographic indications.  In particular, the amendments eliminated several terms from a list of wine names that had been deemed generic, and accordingly available for use by anyone, in Canada.

The amendments were motivated by an agreement struck in 2003 between the Canadian government and the European Community concerning trade in wine and spirits.  Under the terms of that deal, the Canadian government agreed to amend the Trade-marks Act to gradually eliminate the use of certain European wine and spirit names on Canadian labels, thereby opening the door to European producers to apply for the protection of these names as geographical indications in Canada. Read more

Section 45 Proceeding Practices to Change Again?

The Canadian Intellectual Property Office has announced that it will soon open a public consultation period relating to proposed changes to Section 45 proceedings.  The Office advises its goal is to modernize and streamline the Registrar’s practice; what precisely this means, however, is not yet known.

Nonetheless, a few details have emerged: the anticipated changes will include a new practice of issuing, in limited cases, final decisions directly following the filing of evidence; changes are also expected to the Registrar’s practice concerning the granting of extensions of time.

We’ll provide a detailed discussion of the possible changes once the proposed practice notice is made available.

Practitioners Warm to Cooling-Off Periods

Regular readers of the Canadian Trademark Blog will recall that this past fall we reported on a public consultation undertaken by the Canadian Intellectual Property Office respecting proposed revisions to trademark opposition proceeding practices.

CIPO has recently released a compendium of the comments and suggestions it received during the consultation process.

While the submissions touch upon a broad number of issues implicated by the proposed practice notice, their common thread relates to the proposed “cooling-off” period.  Nearly all of the submissions argue that to make the “cooling-off” period available only prior to the filing of a counter-statement is counterproductive to the amicable settlement of the proceeding.  Instead, they argue that the request for a cooling-off period should be available at any time during an opposition proceeding.

In a posting on its site, CIPO advises that the proposed practice notice will be amended “to reflect decisions taken by CIPO as a result of comments received from stakeholders during the consultation period.”  Precisely what changes CIPO will make, however, will not be known until later this month when CIPO posts the revised practice notice on its website.  The final practice notice is expected to be published in the Trade-marks Journal and come into effect in February 2009.

“Bad Faith” Decision Bad News for Applicants?

A recent Opposition Board decision highlights a little-examined area of Canadian trademark law, raising questions pertaining to the entitlement to file a trademark application, and issues of good faith related thereto.

In Cerveceria Modelo, S.A. de C.V. v. Marcon, issued August 12, 2008, the Trade-mark Opposition Board upheld an opposition brought by Cerveceria Modelo against Marcon’s application to register the trademark CORONA for use in association with both a variety of beverages and with beverage bottling services.

The application was opposed on several grounds, including alleged confusion with Cerveceria Modelo’s familiar CORONA trademark. Additionally, the opposition was also founded on Marcon’s alleged failure to comply with s. 30(i) of the Trade-marks Act, which requires the applicant to file with the Registrar an application that contains a statement that the applicant is satisfied that “he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.” Read more

Latest Olympics Trademark Dust Up Is Of Anthemic Proportions

A Canadian Press Story today reports that the Vancouver Organizing Committee for the 2010 Winter Olympic Games (VANOC) has recently filed applications with the Canadian Intellectual Property Office (CIPO) to register the phrases WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as trademarks. These applications are filed based on proposed use in Canada in association with a lengthy shopping list of goods and services. They also claim priority from earlier filed European Community Trademark (CTM) applications, filed with the Office for Harmonization in the Internal Market (OHIM) in March of 2008. Interestingly, the CTM applications are filed in the name of Filemot Technology Law Ltd. and not VANOC.

Canadian readers will immediately recognize WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as phrases from “O Canada”, the Canadian national anthem. Copyright buffs out there might already know that the anthem was long ago placed in the public domain by the Government of Canada pursuant to the National Anthem Act. Read more

Canada’s Trademark Opposition Practice Changing Again?

In case you missed it: the Canadian Intellectual Property Office has commenced a public consultation session concerning possible changes in practice before the Trademark Opposition Board.

These proposed changes follow on the heels of – and are likely motivated by – changes introduced to Opposition Board practice last fall. Many practitioners were surprised by those changes, and found frustration in some of the ambiguities contained in that Practice Notice, issued nearly a year ago.

The newly proposed Notice appears designed to remedy these problems: it provides greater clarity with respect to the number of available extensions and the possible duration thereof, and offers extensive guidance concerning the nature of the “exceptional circumstances” required to obtain an extension at certain stages of a proceeding. Read more

Amendment to Trade-marks Act: the Red Crystal Comes to Canada

Though normally a somewhat staid corner of trademark law, prohibited marks have garnered a lot of attention of late particularly as a result of the Olympic and Paralympic Marks Act, which we commented on in several previous posts. However, the Trade-marks Act itself has been recently amended to add a new entrant to the list of prohibited marks.

Bill C-61, titled “An Act to amend the Geneva Conventions Act, An Act to incorporate the Canadian Red Cross Society and the Trade-marks Act” came into force on January 31, 2008. This Act was introduced to account for recent changes in the Red Cross Movement the term used to refer to work performed by the International Federation of the Red Cross and Red Crescent Societies and the International Committee of the Red Cross.

Over the last decade, efforts have been underway to find a single symbol devoid of any religious, political, ethnic or other connotation that could be used by all nations engaged in the Movement’s humanitarian work. The Red Crystal is the result, and the Trade-marks Act has now been amended to add the Red Crystal to the list of marks whose adoption is prohibited by section 9. The Red Crystal joins the Red Cross, the Red Crescent and the now little-used Red Lion and Sun in the list of emblems that have been used by a variety of nations in humanitarian efforts over the last several centuries, and that are now protected by section 9 of the Act.

The addition of this mark to the prohibited list will be sure to catch the eye of video-game developers several of whom raised the ire of the Canadian Red Cross years ago by depicting the familiar Red Cross emblem in their games. But gamers aren’t the only ones attracting legal trouble from use of the Red Cross emblem: in 2007 the American arm of the Movement found itself in hot water when it was sued by Johnson & Johnson over its licensing of the emblem to for-profit companies to be used on commercial products, notwithstanding that the licensing revenues it received were directed toward humanitarian aid projects.

We’ll keep you posted on developments related to the Red Crystal.