I Hear You Calling – Sound Mark Applications Now Being Accepted

In a reversal of it’s long held position, the Canadian Intellectual Property Office (CIPO) has today announced that it is now accepting applications to register sound marks.  This announcement apparently comes as a result of ongoing Federal Court of Canada proceedings regarding an application filed in 1992 by Metro-Goldwyn-Mayer Studios Inc. (MGM) to register as a trade-mark in Canada, the sound of a roaring lion that precedes most, if not all, of their film productions.  

For many years, CIPO’s blanket policy has been to refuse all applications for sound marks on the basis that Section 30(h) of the Trade-marks Act requires “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed” unless the application is for a word or words not depicted in a special form.  The MGM case is the first where the issue of the registrability of sound marks has been dealt with by the Federal Court.

CIPO’s new Practice Notice on applications for sound marks states that “The application for the registration of a trade-mark consisting of a sound should:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.”

This change of tune for CIPO comes on the heels of a recent (and still outstanding) consultation on a number of proposed changes to the Trade-marks Act Regulations, including a proposal to permit registration of non-traditional marks, such as sound marks, motion marks and holograms.  Time will tell how many applicants decide to take advantage of this change of policy.  Certainly, there are a number of well known sound marks in the marketplace and registration of such marks has been possible in other important jurisdictions, such as the United States, for many years.

Teachers Get Schooled In Trademarks – Again

In a previous post, we reported on a Federal Court of Canada decision, upholding the decision of the Registrar of Trademarks to refuse registration of the mark TEACHERS in association with services described as “administration of a pension plan, management and investment of a pension for teachers in Ontario”.  Undaunted, the Ontario Teachers’ Pension Plan Board decided to appeal that decision to the Federal Court of Appeal.  

The Federal Court of Appeal has now issued its own decision in this matter, upholding the lower Court’s ruling and again refusing registration, on the basis that the mark is clearly descriptive of the character of the claimed services.  In dismissing the Applicant’s arguments on Appeal, the Court of Appeal found that “the word TEACHERS’, which clearly describes those whose pension plan the appellant administers and in whose benefit the management and investment services of the pension fund are rendered, describes a highly prominent feature, trait or characteristic belonging to the appellant’s services.”

It remains to be seen whether the Applicant has learned its lesson or will seek leave to appeal to the Supreme Court of Canada.

A Tale of Two Trademark Appeals

In Clic International Inc. v. Convenience Food Industries (Private) Ltd., 2011 FC 1338, Clic International appealed a decision of the Registrar to expunge its trademark. The mark, which was used in association with the company’s line of canned fava beans, consisted of LAZIZA and an accompanying palm-tree design. Under s. 45 of the Trade-marks Act, a trademark may be expunged at the request of a third party if the owner cannot demonstrate use within the last three years. Here, Convenience Foods made the s. 45 request to the Registrar.

Before the Registrar, Clic attempted to show use of its trademark with evidence of the word LAZIZA on a can of fava beans. However, the Registrar noted that Clic had not used the accompanying palm tree logo (which was part of the trademark). The “evidence of modified use” did not constitute “use” for the purposes of s. 45, as far as the Registrar was concerned, and the trademark was expunged.

On appeal, Clic was entitled to provide new evidence and asserted that the change to its logo was within the scope of “cautious variations” that are allowed under current jurisprudence, citing, among other cases, Promafil Canada Ltee v. Munsingwear Inc, [1992] FCJ 611, which held that as long as the dominant features of a trademark are maintained and the differences are “so unimportant as not to mislead an unaware purchaser”, the use of the modified trademark should be enough to satisfy s. 45.

In response, Convenience Food pointed to Bierrsdorf AG v. Becton Dickinsons and Co., (1992), 44 CPR (3d) 151, where use of the word component and an altered design component were sufficient for s. 45, noting that Clic’s design component was done away with altogether.

The Court, agreed with Convenience Food, explaining that the logo being used was quite different than the registered trademark. Not only was there no palm-tree drawing, but LAZIZA was in a different font and was above an oval depicting some Arabic characters. This gave the whole mark quite a different look, which, according to the Court, departed from a “cautious variation”.

The Court was careful to refute Clic’s assertion that the trademark not be expunged because consumers still recognized the mark and associated it with Clic’s fava beans. This had no bearing on the issue of “use” for s. 45, and the correct consideration was whether the mark had been used in a substantially unchanged manner.

*****

In David M. Locke v. Osler, Hoskin & Harbourt LLP, 2011 FC 1390 the Registrar expunged a mark in the initial hearing, but the Court overturned that decision based on new evidence. Here, the Court did not have to consider a modified trademark. Rather the issue was much more straightforward; the trademark holder had not introduced any evidence at the initial hearing, but did on appeal.

The trademark in question here was SPORTSMAN’S CHOICE, which was used in association with a small, home-based sporting goods and pet accessories store. In the original s. 45 hearing, Locke did not put forth any evidence because he had not initially understood the nature of the claim, and only retained legal counsel just prior to the extinguishment of the trademark. The Federal Court held that a failure to adduce evidence during the underlying hearing was not a bar to introducing it on appeal. So, Locke was able to introduce evidence of his use of SPORTMAN’S CHOICE in the appeal, including labels affixed to pet food, labels on hunting clothes and gear, and tags on pet supplies.

In considering this evidence, the Court noted that the threshold for proving “use” is quite low, and a prima facie case of “use” is enough. Indeed, evidence of a single sale can suffice as long as it is not contrived for the purposes of the hearing.

Certification Marks: Decision Affirmed by Court of Appeal

An earlier blog discussed a Federal Court decision, agreeing with a decision of the Registrar of Trade-marks and preventing the registration of a certification mark, HALLOUMI, in association with cheese.  In The Ministry of Commerce and Industry of the Republic of Cyprus v. International Cheese Council of Canada, the Federal Court of Appeal affirmed the decision.

The Trade-marks Act defines a certification mark as a type of trademark and sets up a specific regime for its adoption and registration by a person not engaged in the manufacture, sale, leasing or hiring of the wares or services in question, who wishes to license others to use the marks.  With wares a certification mark is intended to signify character or quality, working conditions, the class of persons producing the wares or the area they are produced.

The opponent successfully established that HALLOUMI could not be registered pursuant to section 12(1)(b) of the Trade-marks Act, which precludes registration of a mark contrary to section 10, namely a mark that has by ordinary and bona fide usage become recognized in Canada as designating, among other things, a kind of wares.  The evidence established such usage with regards to the cheese at issue.

On appeal to the Court of Appeal, the Cyprus Ministry of Commerce and Industry argued that the relevant date for an opposition based on section 10 was other than the date of the Registrar’s decision and that the judge had failed to apply the proper burden of proof and assess the evidence.  However, none of these arguments succeeded and the registration was not allowed.

CIPO Approves New Wares and Services Descriptions

The Canadian Intellectual Property Office (CIPO) today announced the approval of over 500 new or changed wares (goods) and services descriptions in its online Wares and Services Manual.   This is the Manual that the CIPO Examiners refer to when reviewing applications for registration of trade-marks under the Trade-marks Act (the Act).   Under Section 30(a) of the Act, an applicant is required to describe its claimed wares and services in ordinary commercial terms. 

While certainly not exhaustive of all of the descriptions that an Examiner will consider to be acceptable, if an applicant’s wares and services can fit within the approved descriptions in the Manual, the processing of the application is likely to be much smoother.  

The complete list of descriptions that were approved as of today can be accessed by typing the query “2011-09-07” as a search term in the online Wares and Services Manual.  These changes relate almost entirely to descriptions of wares, with only a few new service descriptions.  Notable changes to the services descriptions include “online social networking services”, “real estate development” and “resort services”.  This is somewhat disappointing in that rapid ongoing changes in online service delivery (e.g. social media, cloud computing, outsourcing and the like) and technology continue to far outpace changes to the Wares and Services Manual and challenges often arise in attempting to obtain approval for descriptions of new wares and services.

Practitioners continue to eagerly await the implementation of many new wares and services descriptions called for in the Trilateral Agreement – see our earlier post on this topic.

Supreme Court Has Spoken On Confusion

Following up on a couple of earlier posts on this topic, the Supreme Court of Canada has this morning handed down its decision in the Masterpiece Inc. v. Alavida Lifestyles, Inc. case.  This decision has been long awaited as it appears to put to rest a critical issue in relation to the assessment of confusion in the context of who is entitled to registration of a mark in Canada.

First, a recap of the basic facts.  Alavida obtained a registration of the mark MASTERPIECE LIVING in Canada in 2007 for use in association with various real estate related services.  Its application was filed in December of 2005, based on proposed use of the mark in Canada.  Alavida commenced use of the mark in January of 2006.   Masterpiece Inc. didn’t oppose Alavida’s application, but instead sought to expunge Alavida’s registration, after it issued, on the basis, among other things, that Masterpiece Inc. had used the same or a similar mark in Canada in association with the same or similar services, prior to Alavida’s application being filed and prior to Alavida’s use of the mark in Canada.

At the Trial Division and in the Federal Court of Appeal, Alavida won and its registration was maintained, on the basis of the argument that Masterpiece Inc.’s prior use of the same mark for the same services, even if proven, was limited in time and space and was in a different part of Canada (Alberta) than where Alavida used its mark (Ontario) and that the geographic location of any alleged prior use was a factor to be looked at in determining likelihood of confusion – in essence importing into the analysis, a common law passing off test. Read more

CIPO Wares and Services Manual Contracts Again

In an update to this story, this morning CIPO announced its discovery that a number of the entries it added to the Wares and Services Manual as a result of Canada’s participation in the trademark identification harmonization project conducted by the Trilateral Partners do not comply with Canadian trademark requirements.

As such, the over 12,000 Trilateral-approved entries that were added to the Wares and Services Manual yesterday are being removed today.  CIPO has provided no official word on possible solutions, or a timetable for the (re)implementation of Trilateral-approved identification entries.