Jeffrey Vicq

Off-colour Trademark Decision Leaves Glaxo Purple With Frustration

By In Case Law, Protection & Enforcement, Registration

In reasons issued late last year, the Federal Court of Appeal has upheld a decision to expunge a trademark registration obtained by Glaxo Group Limited (“Glaxo”) for two-tones of the colour purple as applied to the visible surface of an asthma inhaler. The decision raises interesting questions both about primary and secondary marks, and about the amount of evidence necessary to support a finding that a mark is distinctive.

Inhaler - Front ViewBy way of background, Glaxo registered its mark (depicted right, below) in May of 2007. A collection of generic drug manufacturers brought a Federal Court application to expunge the mark about 6 months later, alleging that the mark was not distinctive.

In its decision, the Federal Court concluded that for the mark to be distinctive the constituency of consumers for the inhaler (including physicians, pharmacists and patients) must relate the trade-mark to a single source, and thereby use the mark to make their prescribing, dispensingInhlaler - Top/Side View and purchasing choices. In market sectors where purchasing decisions are made by or on the advice of professionals, commercial distinctiveness of such marks will be inherently more difficult to establish: such persons will make purchasing or prescription decisions based on the specific properties of the product, and not on the packaging or marks associated with those products. Read more

Bonhomme, Maclean’s “meilleurs amis”

By In Famous Marks, Protection & Enforcement

In an update to a story we shared with you a few weeks ago, a report today that the organizers of the Quebec Winter Carnival and Maclean’s magazine have reached a settlement regarding Maclean’s use of the image of Bonhomme – mascot of the Carnival – as part of a cover image promoting an article on corruption in Quebec.   While Carnival organizers confirmed the settlement and advised that they were “pleased”, specific terms of the settlement were not disclosed.

Is There a Trademark Enforcement App For That?

By In Foreign Protection, Protection & Enforcement

News today that Apple is about to obtain a US trademark registration for “THERE’S AN APP FOR THAT”.

Filed in 2009, Apple’s initial application covered both wares and services.  However, following a recent division and filing of evidence of use, the USPTO approved the registration of the mark for use in association with retail store services and various online services, including app recommendations.  Additional claims pertaining to various wares and to telecommunication services remain in the divided parent application, and Apple  has obtained an extension of time to file use information on those points.  (In Canada, Apple filed an application for “THERE’S AN APP FOR THAT” this past May; it remains pending with CIPO.)

With a registration nearly in hand, it is unclear is whether Apple plans a campaign to aggressively enforce its mark.  In addition to Apple’s use, the mark and its derivatives have been widely referenced in the US – most notably by Verizon in its “There’s A Map For That” advertising campaign (intended to mock the limited coverage of Apple’s exclusive US carrier, AT&T).  An “app for that” catch-phrase generator, “App For That“, was also developed.  And writers seem to love using the phrase in their article and blog headlines.

In this light, one wonders if such uses of the mark and its derivatives reinforce or dilute the mark’s association with Apple. If the latter, Apple will have to go on the offensive to protect its rights, lest it lose them.

We’ll keep you “app”-rised of new developments.

Bonhomme’s Bad Day

By In Protection & Enforcement

There has been considerable coverage this week about the Maclean’s magazine article on alleged corruption in Quebec.  The magazine’s cover (which can be seen here) depicts the well-known mascot of the Quebec City Winter Carnival, Bonhomme Carnaval, clutching a briefcase bursting with money.

Perhaps unsurprisingly, the article quickly elicited a loud hue and cry from politicians, both federal and provincial alike.  The resulting pressure was so intense that Maclean’s publisher – Rogers Publishing – felt compelled to issue an apology, noting that both the article and the cover image promoting it had clearly rankled some readers, and expressing regret for any offence caused.

In addition to being quite eye-catching (at least for Canadians), the cover raises an interesting trademark issue.   Specifically, the association of Bonhomme Carnaval with an article on corruption might be argued to lessen the goodwill in the mascot itself.  (To be clear, there is no suggestion in the article that Carnival organizers are corrupt.)

While the Carnival owns several trademark registrations for depictions of Bonhomme, it would be difficult to argue that Bonhomme’s image was being used as a trademark, or that anyone was confused as to the source of goods following the depiction of Bonhomme on the Maclean’s cover.

Though section 22 of the Trade-marks Act contemplates an action may be brought for depreciation of goodwill, it also appears that the tests associated with such a claim would be difficult to make out for similar reasons.

Nonetheless, the Carnival is seeking advice from counsel in order to determine what action, if any, it can take to protect Bonhomme. We’ll keep you posted on whether or not this dispute gets any more (ahem) …frosty.

“Bad Faith” Decisions Bad News for Trademark Applicants?

By In Case Law, Protection & Enforcement, Trademark Oppositions

The following article, authored by Jeffrey Vicq, was originally posted on the IPilogue—a co-operative blog hosted on the IP Osgoode website of York University’s Osgoode Hall Law School.

Those of us who provide trademark prosecution and counselling services—and particularly those of us who work with clients that have multi-national trademark portfolios—know that clients are sensitive to developments not only in Canadian practice, but also in other key markets around the world.  Many of my clients were concerned about a line of United States cases, decided over the last several years, that regarded innocent filing errors in applications, renewal forms, and other correspondence with the US Patent and Trademark Office as attempts to perpetrate a fraud on the Office, justifying refusal, expungement, or some other highly punitive penalty.  These decisions had effectively broadened the notion of “fraud” on the USPTO to include innocent mistake and negligence.

However, it appears generally acknowledged that this trend halted in 2009 with a decision titled In re Bose Corp. In the most general terms, Bose served to restore the concept of fraud on the Office to a more conventional meaning.  Now, only if an applicant knowingly makes a false, material representation with the intent to deceive does their action rise to the level of fraud, meriting harsh punishment.

However, I am becoming concerned we may be seeing the start of a trend in Canada toward permitting challenges to applications for alleged lack of good faith akin to what our US friends experienced pre-Bose.  In decisions released over the last two years, the Canadian Trade-marks Opposition Board appears to be breathing new life into the ability of opponents to challenge applications on the basis of good faith. Read more

World Trademark Review publishers launch TM blog

By In Uncategorized

Our friends over at the World Trademark Review have recently launched what they’re calling the first blog by specialized IP journalists.  The group – which already offers the widely respected World Trademark Review magazine, several periodic update services, and a variety of directories, special reports and the like – anticipates that the launch of the blog will provide them with another means to report on how developments in trademark law will affect the wider business community, in addition to providing discussions of legal updates and case reports.

We welcome the WTR to the blogoshpere, and look forward to their continued, valuable contributions.

Books Titles Unregistrable as Trademarks in Canada

By In Case Law, Legislation, Protection & Enforcement

In a decision that could significantly impact rights-holders in the media and entertainment industries, the Federal Court has suggested that book titles are, prima facie, not properly registrable as trademarks in Canada.

In Drolet v. Stiftung Gralsbotchaft (2009 FC 17) the court was tasked with considering a range of copyright and trademark issues.  The litigants were all involved in the Grail Message movement—a religious movement centred around a series of writings prepared in Germany in the 1920s and 1930s. The plaintiff sought to expunge the defendant’s Canadian trademark registrations pertaining to the title of a book central to the movement for reasons relating to descriptiveness.

First applying the conventional analysis proscribed under s. 12(1)(b) of the Trade-marks Act (the “Act”) to determine if the mark was “clearly descriptive”, the court concluded the mark did not meet this test, as the title did not convey to a consumer a clear indication of the book’s contents or subject matter.  However, writing for the court Mr. Justice de Montigny went on to assert: Read more