In her article (read here), our colleague Caroline Camp reviews the recent Trademark Opposition Board (the “Board”) case of Pablo Enterprise pte. Ltd. v Hai Lun Tang, 2019 TMOB 54. As Caroline discusses, this case serves as an important reminder that trademark and copyright protection can and do overlap. Moreover, the case confirms that the Board has jurisdiction to assess certain copyright claims within the context of a trademark opposition. Accordingly, if an applicant attempts to register a trademark which includes design elements that are already subject to third party copyright protection (registered or not), the copyright owner may oppose registration on grounds that the applicant is not entitled to use the mark because such use constitutes copyright infringement.
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!
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:Read more
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.
In Pfizer Canada Inc. v. Teva Canada Limited, 2016 FCA 161, the Federal Court of Appeal (“FCA”) recently overturned a substantial damages award in a pharmaceutical patented medicines action on the basis that the trial judge admitted improper hearsay evidence. This is an important reminder that the hearsay rule of evidence is alive and well.
At trial, only one witness was called to testify in support of damages and he did not have actual firsthand knowledge of the purported facts to which he was testifying. Instead the witness could only testify to the oral and written statements of others. The FCA ruled that this evidence was hearsay, and therefore inadmissible.
Hearsay evidence is an oral or written statement made by a party who has not come to court to testify. An example of oral hearsay is a witness testifying that “John told me he would give me $100”. This is hearsay because the author or speaker of these statements is not present in court to testify to the truth of the statement. Whether or not the statement is admissible depends on the use of that statement. If the purpose of calling the hearsay evidence is to prove the truth of the statement, then the statement is inadmissible. Therefore, in this example, the proper way to prove that John would give the witness $100 is to call John as a witness to testify to the truth of that statement; otherwise, the statement cannot be used to prove that John would have given the witness any money.
Despite the recent trend of some courts and tribunals to relax the rules of evidence regarding the admissibility of hearsay evidence to allow for more flexibility, here, the Federal Court took a more strict and traditional analysis.
As a result, parties to intellectual property disputes must be aware of the potential inadmissibility of hearsay when collecting evidence. This is particularly germane in trade-mark disputes where evidence of confusion generally comes from second hand sources. The proper collection and documentation of this evidence can make or break a successful infringement or opposition proceeding.
Trade-mark holders should be proactive when presented with evidence of confusion. It may not be enough for a representative of the company to swear an affidavit that the company received phone calls from those who say they confused the company’s trade-mark with another. The better evidence is directly from each of those callers who can testify first hand to their confusion. Where feasible, trade-mark holders should have a process in place to document the names and contact information of witnesses and the details of any evidence of confusion. This way, individuals able to give first hand evidence can be contacted if the matter proceeds to litigation or an opposition proceeding. If such evidence is not properly preserved, a trade-mark holder may be left with no admissible evidence to prove its claim.
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.
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.
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.