Canadian Trademark eFiling Systems Outage from June 13 to 17, 2019 – What you need to be aware of

The Canadian Intellectual Property Office will be taking its efiling systems for trademarks down from Thursday, June 13, 2019, at 00:00 EDT to Monday, June 17, 2019, at 06:00 EDT, for system upgrades and enhancements.

How does this affect Applicants and owners of  trademark Registrations in Canada?  Among other things, this outage will affect:
• e-Filing of new Trademark Applications;
• Registration of pending Applications; and
• Renewal of existing Registrations

Long awaited and significant changes to Canadian Trademark law – many of which have been previously discussed in this Blog – don’t come into force until June 17, 2019 (the CIF Date).  However, with the above systems outage, anyone hoping to file a new application or to renew an existing registration – with the intent of doing so under the current, lower pricing that is not tied to the number of Nice classes of goods/services covered – will need to do so prior to midnight (EDT) on June 12, 2019.  The same time limit applies to anyone hoping to finalize registration of an allowed application with the intent of obtaining a 15 year term, rather than the 10 year term available for registrations that issue after the CIF Date.

Please contact the author for more information or advice on the above.

No Going Back – Canada Formally Accedes to Singapore, Madrid and Nice Treaties

The Canadian Intellectual Property Office (CIPO) has announced that as of March 17, 2019, Canada has formally acceded to the Singapore Treaty, the Madrid Protocol and the Nice Agreement.  All three of these treaties will come into force in Canada on June 17, 2019.

According to CIPO “As of that date, trademark owners in Canada will be able to apply for trademark protection in more than 100 jurisdictions through a single application, in one language, with one set of fees and in one currency.”

June 17, 2019 will also be the coming into force date for numerous other significant changes to Canadian trademark practice.  Please see our recent post which explains some of the most important changes.  These are exciting times for trademark owners and their legal Counsel in Canada!

Royal Assent Received for Most Recent Amendments to Canada’s IP Legislation

Bill C-86, the Budget Implementation Act, 2018 (the “Act”), received Royal Assent on December 13, 2018, after moving through Parliament at a blistering pace. In all, less than two months elapsed between the tabling of the bill and its passage.

These amendments will affect the Trade-marks Act, the Patent Act and the Copyright Act.  In addition, a new regulatory body for Canadian Patent and Trade-mark Agents will be created pursuant to the College of Patent and Trade-mark Agents Act. 

The most significant amendments to Trade-marks Act are as follows:

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Delays Nourish Desires: Canada’s New Trademark Laws Come Into Force June 17, 2019

Earlier today, the Canadian Intellectual Property Office announced that long-anticipated amendments to Canada’s trademark laws will come into force on June 17, 2019.  It also published a new set of Trademarks Regulations, which will support those amendments.

First introduced in June of 2014, the amendments contain the most significant changes to Canada’s trademark law in decades, (discussed in earlier posts) including:

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Parliament Tables Proposed Amendments to the Trade-marks Act

On October 29, 2018, the Canadian Parliament tabled, in a surprise to many practitioners, the Budget Implementation Act 2 (Bill C-86), which would amend, among other things, the Patent Act, Trade-marks Act, and Copyright Act. In addition, the bill contains provisions enacting the College of Patent and Trade-mark Agents Act .

Proposed amendments to the Trade-marks Act include adding bad faith as a ground of opposition and expungement; requiring use as a precondition of alleging infringement in some circumstances; adding some restrictions to the term of official marks; giving the Registrar additional powers to govern the process of opposition proceedings; and requiring leave to file additional evidence with the Federal Court on appeal from a decision of the Registrar.

David Bowden

No Hotel in Canada? No Problem – Trademark Owner Maintains Trademark Registration With Hotel Services

The Federal Court of Canada (the “Court”) recently released its decision in Hilton Worldwide Holdings LLP v Miller Thomson, 2018 FC 895. In the decision underlying this appeal, the Registrar expunged the Canadian trademark registration for WALDORF-ASTORIA, owned Hilton Worldwide Holdings LLP (“Hilton”), on the basis of non-use. The Court allowed the appeal, and found that Hilton had proven the requisite use of its trademark in Canada, notwithstanding the fact that it did not operate a physical hotel in Canada.

Under the Canadian Trade-marks Act (the “Act”) a trademark is deemed to be used in association with services if it is “used or displayed in the performance or advertising of those services.” Courts have found that this statutory provision includes a condition that the services themselves must be performed or delivered inside Canada, and the mere advertisement of services in Canada does not constitute use within the meaning of the Act.

For trademarks associated with hotels, the Registrar has interpreted this condition restrictively. The Registrar has issued a number of recent decisions which found that the operation of a “bricks and mortar” hotel in Canada is necessary to establish the use of a trademark for “hotel” or “hotel services” in Canada (see, for instance, Bellagio Limousines v Mirage Resorts Inc, 2012 TMOB 220; Stikeman Elliot LLP v Millennium & Copthorne International Limited, 2017 TMOB 34; and Ridout & Maybee LLP v Sfera 39-E Corp, 2017 TMOB 149).

In contrast to the Registrar’s decisions involving “hotel services”, the Court has increasingly recognized circumstances in which companies operating outside of Canada can establish use of their trademarks in association with services directed to consumers in Canada. In HomeAway.com v Hrdlicka, 2012 FC 1467, the Court held that the appearance of a trademark on a computer screen via a website accessed in Canada, regardless of where the information may have originated from or is stored, constitutes use and advertising of the mark in Canada. The evidence in HomeAway.com also showed that people in Canada used the service at issue to post available rental properties located in Canada, and that these postings were available online to customers in Canada.

In allowing the appeal brought by Hilton, the Court focused on the ordinary understanding of the term “hotel services”, which would include ancillary services, such as reservation and booking services. Because these ancillary services would be included in “hotel services”, the Court found the Registrar erred in equating these services with “the operation of a hotel” – services which can only be performed at a physical hotel location. The ancillary services, in contrast, go beyond the physical “bricks and mortar” hotel, and the evidence showed that Hilton had performed such services in Canada, despite operating a physical hotel in another country.

Moreover, the type of hotel services which can be delivered online had greatly expanded since Hilton’s registration issued. The scope of the registration, according to the Court, must be considered in light of the development in online commerce as it relates to the ordinary commercial understanding of “hotel services.” Technological developments which occurred post-registration meant that Hilton could provide services online to Canadians who benefited from them. This also supported Hilton’s claim that it used the mark in Canada.

The decision forms part of a growing trend of Canadian trademark decisions which recognize that companies based entirely outside of Canada can offer services in Canada, and that the performance of those services will constitute use in Canada of the trademarks associated with such services.

David Bowden

In no mood for charity: Federal Court confirms that charities are not necessarily public authorities

The Federal Court of Canada recently confirmed in Starbucks (HK) Limited v. Trinity Television Inc., 2016 FC 790 (the “Decision”) that status as a charity is, in and of itself, insufficient to constitute an entity as a public authority for the purpose of obtaining an official mark.

(For a discussion about official marks and their interplay with regular trade-marks, please see this previous post on our blog.)

The facts leading up to the Decision are straightforward: in 2013, Starbucks (HK) Limited (“Starbucks”) filed an application to register the trade-mark NOW TV & Design.  During prosecution, an official mark for NOWTV, owned by Trinity Television Inc. (“Trinity”), was cited against the Starbucks application.  In response, Starbucks commenced a judicial review application against the Registrar’s decision – made in June 2001 – to give public notice of the adoption and use of NOWTV as an official mark.

In the result, the Court quashed the Registrar’s decision to grant NOWTV as an official mark to Trinity, clearing the path for Starbucks to move ahead with its application.  Of particular interest were the following points made by the Court:

– the law is now clear that status as a charity is, in and of itself, insufficient to constitute an entity as a public authority; and

– it would be patently unfair and completely contrary to the interest of justice if an entity that is not a public authority was permitted to enjoy the exceptional rights conferred on the holder of an official mark.

As a potential point of distinction when it comes to the precedential value of this case, it is noteworthy that Trinity did not participate in the judicial review application; indeed, the Court was advised by counsel for Starbucks that a former president and director of Trinity had advised that Trinity had sold its business to Rogers in 2005.  That being said, given how easily the Court arrived at the conclusion that charitable status does not necessarily equate to being a public authority, it seems unlikely that Trinity’s participation would have changed the result.

From a practical perspective, the Decision serves as a timely reminder to trade-mark applicants that, while robust, official marks can nevertheless be challenged and removed under the right circumstances.  Where an official mark has been cited during prosecution of a regular trade-mark application, it is important to carefully scrutinize the official mark, in order to ascertain any potential vulnerabilities that could lead to its removal.

On the other hand, the Decision is also a reminder to charities holding official marks that those official marks may potentially be at risk, if challenged via judicial review.  To mitigate that risk, those charities ought to consider filing regular applications to register their trade-marks.