Nuthin’ but a Leaf Thang – Toronto Maple Leafs take issue with Snoop Dogg’s trade-mark application for LEAFS BY SNOOP Logo

Maple Leaf Sports & Entertainment Partnership (“MLSE”), the parent company of the National Hockey League’s Toronto Maple Leafs, has requested an extension of time to oppose a U.S. trade-mark application filed by one Calvin Broadus – better known as Snoop Dogg (“Snoop”) – for a logo featuring the words LEAFS BY SNOOP on a leaf-shaped background.

MLSE is the owner of numerous trade-mark applications and registrations in Canada and the U.S. for different iterations of the Toronto Maple Leafs logo, for use with a variety of clothing and souvenir related goods.

For side-by-side comparison, below is Snoop’s logo next to the most recent version of the Toronto Maple Leafs logo.

Mark Image               Mark Image

Snoop’s application covers the goods “cigarette lighters not made of precious metals”.  Snoop also owns a word mark application for LEAFS BY SNOOP, although that application will not be published for opposition by the U.S. Patent and Trademark Office until July 19, 2016.

More information about Snoop’s LEAFS BY SNOOP products is available at his website dedicated to that brand.  Interestingly – and perhaps not surprisingly – the products on the website appear to be cannabis and food products including cannabis.

Snoop also owns a Canadian application to register the words LEAFS BY SNOOP for a broader category of goods, including clothing-related products, edible oils, jams, candies, and live plants.  (Although the Canadian Intellectual Property Office (“CIPO”) is usually known for being strict when it comes to the specificity of goods listed in trade-mark applications, in this case, it did not ask Snoop to provide further specificity as to the “edible oils and jams”, nor the “live plants”.)

Snoop’s Canadian application was advertised for opposition on June 8, 2016.  At this time, it is unclear whether MLSE has opposed – or requested an extension of time to oppose – Snoop’s Canadian application.

TSN, the source that broke news of this potential dispute, reached out to lawyers for both MLSE and Snoop, but did not receive a response.  An IP lawyer at the New York University School of Law provided TSN with his thoughts on the matter, generally opining that MLSE would likely face a tough road should it proceed with its opposition in the United States.

The intersection of pop culture and trade-marks is always a fascinating topic for us here at the Canadian Trademark Blog, and we will be watching with interest to see if this leads to an actual opposition-izzle.

Federal Court of Appeal considers “special circumstances” in appeal of trade-mark expungement

In a recent decision of the Federal Court of Appeal (“FCA”), the FCA took the rare opportunity to consider an appeal from a section 45 expungement proceeding. In One Group LLC v Gouverneur Inc, the FCA reviewed the Registrar’s decision not to expunge One Group LLC’s (“One Group”) trade-mark registration for STK (the “Mark”) on the basis of non-use, as well as the subsequent Federal Court (“FC”) decision to overturn the Registrar’s ruling.

One Group operates high end restaurants using the Mark outside of Canada.  In preparation for a new restaurant in Toronto, One Group registered the Mark in Canada. However, due to failed discussions with hotels and developers, a Toronto restaurant never materialized.

In due course, Gouverneur Inc. (“Gouverneur”) brought a section 45 proceeding, alleging that One Group failed to use the Mark in the three preceding years. The Registrar refused to expunge the Mark on the basis that there were special circumstances that excused the non-use, namely that the non-use was not in the control of One Group, and that there was evidence that One Group was close to coming to an agreement with a hotel chain which would see the Mark used in Canada.

Gouverneur appealed to the FC on the basis that the Registrar misunderstood or misapplied the test for special circumstances. The FC agreed and overturned the decision of the Registrar on the basis that it was not a reasonable finding that special circumstances excused the non-use of the Mark, and ordered the Mark expunged.

One Group then appealed to the FCA. In a relatively brief decision, the FCA allowed the appeal and reinstated the ruling of the Registrar.

This decision highlights a number of points:

  • First, the FCA emphasized that deference must be given to the Registrar in expungement proceedings, as well as in those instances where the Registrar is applying its “home statute”. As a result, courts should not disturb the Registrar’s findings of fact except in those circumstances where such findings are clearly not correct.
  • Second, it appears that there is a general willingness of the Registrar to preserve registrations. Hence, to the extent the Registrar makes factual findings in support of preserving a registration, the court’s deference to those findings on an appeal presents a potentially difficult hurdle to overcome.
  • Third, this case is a reminder that there is a “special circumstances” exception to non-use which can be used to preserve registrations. The criteria for determining if “special circumstances” exist are:

– the length of time during which the trade-mark has not been used;

– whether the reasons for non-use were beyond the registered owner’s control; and

– whether the registered owner has a serious intention to shortly resume use of the trade-mark.

Whether special circumstances exist will be determined by the Registrar from the evidence. Such findings, as stated above, will be given deference by the courts.

With this deference in mind, the FCA found no error in the Registrar’s decision that justified judicial intervention, and restored the decision of the Registrar.

Order prohibiting Google from delivering search results heads to SCC

The Supreme Court of Canada has agreed to hear an appeal from a decision of the B.C. Court of Appeal which upheld a worldwide injunction against Google Inc. (“Google”), wherein Google was ordered to stop delivering search results to its users that pointed to certain websites.

You can find my commentary on the B.C. Court of Appeal’s decision in Equustek Solutions Inc. v. Google Inc., 2015 BCCA 265, here.

The facts underlying the appeal arose from Equustek Solutions Inc.’s (“Equustek”) attempts to enforce its intellectual property rights against a former distributor, Datalink Technologies Gateways Inc. (“Datalink”).  Allegedly, Datalink was passing off Equustek’s products as its own and using Equustek’s confidential information and trade secrets to manufacture a competing product.  Equustek was successful in obtaining various interlocutory orders against Datalink; however, Datalink failed to comply with those orders, and continued “clandestine” operations online to market and sell its infringing products.

In order to more effectively stop Datalink’s infringing activities, Equustek sought an injunction against Google (which was not a party to the dispute), restraining it from publishing search results that included Datalink’s websites, on the basis that this was the only way to give effect to the orders already in place.  The B.C. Supreme Court granted the order, and the B.C. Court of Appeal upheld the order on appeal.

In its brief reasons granting leave to appeal, the Supreme Court of Canada outlined the issues for its consideration:

–          Under what circumstances may a court order a search engine to block search results, having regard to the interest in access to information and freedom of expression, and what limits (either geographic or temporal) must be imposed on those orders?

–          Do Canadian courts have the authority to block search results outside of Canada’s borders?

–          Under what circumstances, if any, is a litigant entitled to an interlocutory injunction against a non-party that is not alleged to have done anything wrong?

Whatever the Supreme Court of Canada decides in this matter will hopefully provide direction and clarify the law regarding the ability of a Canadian Court to grant a worldwide injunction, as well as with respect to access to information and freedom of expression in the digital age.

We will keep you updated.

Location Matters: The Perils of Geographic Names as Trade-marks

When choosing a trade or business name it may seem like a good idea to incorporate the location of your business into the name. There are benefits: it is helpful for marketing, it gives your audience an idea of where your business is and who your market is, it can help establish your business in a neighborhood, and it can help you build a brand based on community and locality.

However, using the location of your business in your trade or business name can cause difficulties when it comes to registering that name as a trade-mark. Under section 12(1) (b) of the Trade-marks Act, a trade-mark is not registerable if it is clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services with which the trade-mark is used, unless that trade-mark has acquired distinctiveness through its use.

The Federal Court of Appeal recently reviewed section 12(1)(b), and considered the issue of whether a service provider can register, as a trade-mark, the name of a geographic location, purely in relation to its services.

In 2012, a dental practice owned by Dr. Cragg applied to register the trade-mark OCEAN PARK (the “Mark”) in association with dental services based on use since as early as 2000. The Mark was registered for use in association with “dental clinics” in 2013.

Prior to Dr. Cragg applying to register the Mark, another dentist, Dr. Lum purchased an existing dental practice a block away from Dr. Cragg’s and changed the name of the practice to “Ocean Park Dental Group”. Then, after moving the practice, Dr. Lum changed the name to “Ocean Park Village Dental”, and advertised and displayed signage using the trade-name “Village Dental in Ocean Park”.

In early 2014 Dr. Cragg brought an action against Dr. Lum for infringement of the Mark. In response, Dr. Lum brought an action seeking to invalidate the Mark on the grounds that it was not registerable under section 12(1)(b) of the Trade-marks Act.

In the court below, the trial judge held that in order to prove that a trade-mark is not registerable under section 12(1)(b), a plaintiff has to show (1) that a trade-mark refers to a geographic location; and (2) that the location was indigenous to the services in question. Under this analysis, in order for the Mark to be non-registerable, a reasonable person would have equate the geographic location “Ocean Park” with dental services.  Based on the evidence, the trial judge found that this was not the case, and the court dismissed the action to invalidate the Mark.

However, the Court of Appeal held that this was not the correct analysis.  Instead, the analysis under section 12(1)(b) is to focus on:

–          the type of services involved;

–          the average consumers to whom the services are offered; and

–          the character of the geographic location.

Under this analysis, if the trade-mark is the name of the geographic location where the services or goods are provided, then the trade-mark is descriptive within the meaning of 12(1)(b) and non-registerable because the trade-mark is descriptive of the origin of the services or goods.

The Court of Appeal reminded us that the reason why trade-marks that are descriptive of geographic locations are not registerable or protectable is to prevent a single service provider from monopolizing the name of a geographic location, so as to prevent other service providers from using that name to describe their own services.

On the issue of acquired distinctiveness, the problem identified by the Court of Appeal was that while geographic locations can be used in business names and for other purposes, they often do not meet the key requirement of a registerable trade-mark: distinctiveness. In this case, the Mark as registered, OCEAN PARK, was never used by itself in association with dental services. It was always used in the context of the name Ocean Park Dental. In this case, upon hearing “Ocean Park”, consumers would not think about Dr. Cragg’s dental services; as such, it could not be said that the Mark had acquired distinctiveness. Therefore, the Mark was declared invalid and struck from the Trade-mark Register.

This case warns businesses to be careful when choosing geographic locations as business or trade names which they may wish to register as a trade-mark. The use of a geographic location within the context of a broader trade-mark may be permissible. However, it is unlikely that a business can expect to register a trade-mark consisting purely of a geographic location, unless that business and the trade-mark have acquired significant distinctiveness through lengthy and extensive advertising and use.

Implementation of Trademarks Act amendments pushed back to 2018

Since the Canadian Government announced massive changes to the Canadian Trademarks Act (the “Act”) in 2014, practitioners and other stakeholders in the trademark space have been anxiously awaiting its implementation.

Unfortunately we are all going to have to wait a little longer.

It is now expected that the amendments to the Act which have been passed but not yet implemented will not be implemented until sometime in 2018. This pushes out the implementation date again, from an original (and optimistic) implementation date of late 2015, and a revised implementation date of  2017, to 2018.

The implementation of the remaining amendments is expected to coincide with the Canadian Intellectual Property Office’s implementation of the Madrid Protocol, the Nice Agreement and the Singapore Treaty.

We will provide further updates here on the timeline for implementation as more information becomes available.

Back to school – Keyword advertising 101

In the 21st century, when advertising is frequently conducted via the Internet, the use of keyword advertising has become an increasingly contentious point of trade-mark law.

In short, keyword advertising is a form of online advertising in which a business selects words or phrases (the “keywords”) that trigger its advertisements to appear when the user of a search engine performs a search using those keywords.  The advertisements typically appear alongside the organic search results produced by the search engine.

Where multiple companies use the same keywords to trigger advertisements, the search engine will use an algorithm to select which company’s advertisements actually appear and in what order, based at least in part on the amount each business is willing to pay for the advertisement.  The difficulty from a trade-mark perspective is that businesses frequently choose competitors’ trade-marks as keywords.

There has been little development in Canadian jurisprudence in the area since the first Canadian decision on keyword advertising in 2010.  Last week, the Supreme Court of British Columbia, writing through Justice Affleck, tackled the issue head-on in Vancouver Community v. Vancouver Career (Burnaby) Inc., 2015 BCSC 1470.

In this case, the Vancouver Community College (“Community”) brought a passing off action against the Vancouver Career College (“Career”) in which it alleged, among other claims, that Career, principally through keyword advertising, misrepresented its educational services as those of Community.  As part of its claims, Community objected to the use of the acronym VCC by Career as part of the latter’s keyword advertising campaign, notwithstanding Community’s unregistered, common law trade-mark rights in VCC.  The evidence showed that Community used VCC as a trade-mark from 1965 until 1990, when it largely abandoned the use of VCC, until 2013, when significant use resumed.

Ultimately, Justice Affleck concluded that there was no passing off by Career, since Community failed to meet the first part of the test for passing off, in that it did not have sufficient goodwill and acquired distinctiveness in its unregistered VCC trade-mark to impart a secondary meaning to consumers.  However, the trial judge went on to discuss the second part of the test, namely, whether Career had caused confusion by misrepresenting its services as those of Community.  In doing so, Justice Affleck made the following comments of interest:

-on bidding by advertisers, and the operation and process of searching using search engines – “a bid on a keyword may send a searcher to the bidder’s landing page, but the process of the search is controlled by the searcher and the search engine, not by the advertiser”.

-on when a first impression is made on the consumer – consistent with the decision in Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296 (the “ICBC Decision”), “the “first impression” cannot arise on a [search] at an earlier time than when the searcher reaches a website […] the “relevant consumer” will “understand that it is necessary to view a website to determine whose site it is” [citing the ICBC Decision].  In my opinion that is the point during a search when the relevant first impression is made”.

-on bidding on another company’s trade-mark as a keyword – “to award damages to the plaintiff or to enjoin the defendant from certain conduct because the defendant bids on the plaintiff’s name for the purposes of keyword advertising would be to disadvantage the defendant in a way that other online advertisers are not”.

In the result, Justice Affleck concluded that Career did not cause confusion by taking advantage of the keyword advertising service offered by Google.

Other than the issue of keyword advertising, which we expect is the point that will garner the most interest and commentary from practitioners, the decision is interesting for:

-Justice Affleck’s reliance on the ICBC Decision, as referenced above, which sparked its own interest for its assessment of when a “first impression” is made upon Internet users;

-Justice Affleck’s disposition of the official mark issue raised by Community in essentially 3 brief paragraphs without going into detail, such as whether Career actually used VCC as a trade-mark prior to publication of Community’s official mark for VCC;

-Justice Affleck’s finding that Community’s VCC mark enjoys “goodwill in the educational services it provides, but [has] not achieved a “secondary meaning” in the marketplace”, which contrasts with the comments of the Trade-marks Opposition Board (the “Board”) with respect to Community’s VCC mark in an earlier decision in which the Board rejected Career’s application to register the trade-mark VCCollege.ca; and

-Justice Affleck’s observation that Community’s action for passing off was an attempt to handicap Career, and was “motivated by a concern that its own inability to invest the necessary funds and expertise to create a sophisticated online advertising program leaves it at a competitive disadvantage in the marketplace in comparison with [Career]”.

Community has until September 19, 2015 to appeal Justice Affleck’s decision to the British Columbia Court of Appeal.

Combating Counterfeit Products Act Receives Royal Assent

On December 9,2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trade-marks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had been criticized for not having meaningful policies to combat the global problem of counterfeit trafficking which flowed across Canadian borders.

Specific enforcement mechanisms contained in Bill C-8 include:

  • new civil prohibitions under the Trade-marks Act and Copyright Act giving rights holders the ability to start civil actions against those who infringe their trade-mark or copyright by possessing, manufacturing, distributing or trafficking goods for commercial purposes;
  • new criminal offences under the Trade-marks Act and Copyright Act for possessing, manufacturing, distributing or trafficking counterfeit goods for commercial purposes;
  • new provisions giving customs officials ex officio power to independently seize and detain suspected counterfeit goods. This includes the ability for copyright and trade-mark owners to file a “request for assistance” with customs officials to increase the information available to customs regarding possible counterfeit goods.

For a deeper review of the changes contained in Bill C-8, please see our previous post written in March 2013 when the bill was first introduced as Bill C-56.

While the Bill has obtained Royal Assent, it is only partially in force. Changes currently in force include:

  • the introduction of the new criminal provisions;
  • the deletion of section 7(e) of the Trade-marks Act; and
  • amendments to Section 20 of the Trade-marks Act dealing with infringement.

The majority of the amendments to the Trade-marks Act and Copyright Act, including the provisions relating to importation and exportation and ex officio powers of custom officials, will be brought into force by regulation. It is not clear when this will occur. However, it is thought that implementation will be in step with Bill C-31, the Budget Implementation Act, which is also waiting to come into force sometime in 2015 early 2016 and contains further significant amendments to the Trade-marks Act.

We will keep you updated as coming into force dates are announced and these legal tools become available to trade-mark and copyright owners.