Neil Melliship

Official Marks Up For Review

By In Legislation, Registration

A Private Members Bill was introduced in Canada’s federal parliament yesterday, which, if passed, will result in significant amendments to the official mark provisions in the Trade-marks Act.  Section 9(1)(n)(iii) of that Act currently sets out a very simple procedure whereby public authorities can attain official mark status for virtually any mark that they have adopted and used.  Once attained, official mark status prevents other parties from adopting, using or registering the same or a very similar mark in association with any wares (goods) or services, unless the public authority consents.  Under the current Act, official mark requests cannot be opposed, there is no specified term or renewal process for such status and there is no process for expunging an official mark if it is no longer in use, unless the public authority voluntarily abandons that status.

Bill C-611 would, if passed, add a definition of public authority to the Act and set out an opposition procedure for third parties to challenge official mark requests.  It would also provide for a 10 term for such status, with the ability to renew for further 10 year periods, each of which could also be opposed.

Time will tell if this Bill gains any traction.  The Member who introduced the Bill is with the minority Liberal party.  This Bill is unrelated to the wide ranging changes to the Act that are set out in Bill C-31.

Fumbling Towards Accession: Canadian government proposes massive trademark law overhaul

By In Legislation

This post is the first in a series discussing proposed changes to Canadian trademark law.

The Canadian Government dropped a bombshell on the trademark community on March 28, 2014, proposing massive changes to the Canadian Trade-marks Act (the Act), such changes being buried in a budget bill—namely, the Economic Action Plan 2014 Act, No. 1 (Bill C-31).  The immediate response from practitioners and other stakeholders in the trademark space was one of consternation: the changes are extensive, and are being introduced with virtually no notice to stakeholders about these changes prior to the introduction of the bill.

According to Federal Government sources,  the changes  are intended to prepare Canada for accession to the Madrid Protocol, the Nice Agreement and the Singapore Treaty—and Canada has telegraphed its planned accession to these agreements for several years.  However, many of the changes required for this purpose were already contained in Bill C-8, the Combating Counterfeit Products Act, which is expected to be enacted in the next few months.  Bill C-31 contains many other proposed revisions to the Act that go far beyond what is required for accession to the above Treaties, and appear to be directed more at cost cutting for the benefit of the Federal Government.

Rather than simply listing some or all of the proposed changes, we have decided to examine, in some detail, the likely impact of the changes in a series of posts.  In this first post, we examine some of the effects that the changes will have on the clearance of trademarks in Canada.  In future posts we will examine the anticipated effects of Bill C-31 on Applications for Registration of trademarks in Canada, on Opposition practice, and on post-registration matters.  We will attempt to do all of this from the perspective of prospective applicants, current applicants (where applications have been filed prior to Bill C-31 coming into force), existing registrants and other interested parties.

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Just in time for the Olympics – a Race to the Trademark Podium

By In Case Law, Famous Marks, Protection & Enforcement

As we approach the opening ceremonies of the 2014 Olympic Winter Games in Sochi, the Canadian Olympic Committee (COC) has launched a lawsuit against outdoor apparel maker The North Face in the British Columbia Supreme Court, over allegations that it is infringing on Olympic trademarks through ambush marketing techniques.

The COC is seeking an injunction against The North Face and unspecified damages.  Readers of this blog will recall that the 2010 Winter Olympic Games in Vancouver/Whistler featured many similar skirmishes and special legislation enacted to assist the COC in its ongoing battle against ambush marketing.

As reported in the Globe and Mail, the North Face is not a sponsor of the Olympic games, but introduced a new line of clothing in November 2013.  The clothing line, originally launched as the Villagewear Collection, was renamed as the International Collection in response to complaints by the COC. 

The clothing line, which includes jackets, toques and bags, is decorated with the colours and flags of various countries. This includes items bearing the Canadian flag which feature the colours red and white.  Some items featured a patch with the symbol “RU 14” which, according to the COC, is a reference to the Winter Olympic games in Sochi, Russia.  Other merchandise showed a world map with a red star where Sochi is located.  A t-shirt featured the date of the opening ceremonies for the Games.

Canadian Government Tables 5 IP Treaties in the House of Commons

By In Foreign Protection, Legislation

The Canadian Government tabled 5 intellectual law Treaties in the House of Commons on January 27, 2014.   The purpose of this action is for Canada to harmonize its trademark, patent and industrial design laws with those of many other countries.

The Treaties tabled are as follows:

The first three Treaties in particular will have significant impacts on the procedures for trademark applications and registrations in Canada.   The tabling of these Treaties is the first procedural step towards their ratification and implementation by the Government of Canada.  Implementation will require amendments to Canada’s existing IP legislation, which could take a long time to be approved.  The Canadian Intellectual Property Office published a paper in January of 2012 on the changes required to the Trade-marks Act in order for Canada to adhere to the Madrid Protocol.  Until such amendments are approved by the Canadian Parliament, none of these Treaties will be binding in Canada. 

 

.CA Domain Names Held To Be Personal Property

By In Case Law, Domain Name Disputes, Domain Names

A recent Ontario Superior Court of Justice decision (Court File No. CV-13-480391) has held that .CA domain names are personal property and as such are subject to the rules that govern any other type of personal property, including those against wrongful conversion.  Perhaps more importantly, the case appears to stand for the proposition that title in .CA domain names exists independently of the registration of those domain names.

17 .CA domain names were in issue,  including mold.ca and mould.ca.  All were registered by Mr. Sullivan in his own name for the benefit of a company that he co-founded with Mr. Dalrymple, called Mold.Ca Inc.  (Mold.Ca Inc.)  The business of Mold.Ca Inc., not surprisingly, involves  mold inspection and removal services in the Greater Toronto area.  Sullivan purchased the domain names using the company’s credit card but listed himself as the Registrant of all of the domain names, rather than Mold.Ca Inc., unbeknownst to Dalrymple. 

Sullivan parted ways with Dalrymple and Mold.Ca Inc. a year later, while Mold.Ca Inc. continued to carry on its business, as before.  Unbeknownst to Dalrymple, Sullivan retained the domain name registrations and the passwords for the domain name registrations and then subsequently transferred the domain name registrations to a third party (Romelus).   Once Dalrymple found out about the above events, he commenced a Canadian Internet Registration Authority (CIRA) Dispute Resolution Proceeding (CDRP) against Romelus.  The CDRP proceeding were unsuccessful because there was no evidence that the domain names had been registered by Romelus in bad faith (they hadn’t been), nor was there evidence that they were being used for other than legitimate purposes by Romelus.

Following the failed CDRP proceeding, Romelus transferred the domain names back to Sullivan and Sullivan began using them in a competing business to that of Mold.Ca Inc.  Undaunted by its loss in the CDRP, this turn of events led to Mold.Ca Inc. to commence proceedings in the Ontario Superior Court of Justice.  Finding in favour of Mold.Ca Inc., the Court held that “the issue is a simple matter of property law”, whereby title to the domain names belongs to the company, which had been wrongly converted by Sullivan.  The Court therefore ordered that all of the domain names, including all administrative information and passwords, be transferred to Mold.Ca Inc.

Significant Amendments to Canada’s Trade-marks Act Closer To Reality

By In Counterfeit goods, Legislation, Protection & Enforcement

Canada’s federal Government introduced Bill C-56 on March 1, 2013 – the Combating Counterfeit Products Act.   The primary focus of this Bill is to improve the ability of copyright and trade-mark owners to combat the manufacture, importation, sale and distribution of counterfeit goods in Canada. 

 While the primary focus of the Bill is on counterfeit goods, the Bill calls for amendments to both the Copyright Act and the Trade-marks Act that will have effects beyond counterfeiting. 

Should this Bill go through as is, the changes to the Trade-marks Act (the “Act”) include the following: 

–         “Wares” will become “goods” and the definition of a “distinguishing guise” will be repealed

–          “distinctive” in relation to a trademark will describe a trademark that actually distinguishes or that is inherently capable of distinguishing the goods and services of the trademark’s owner from those of others

–          The references to “mark(s)” throughout the Act will now be references to a “sign or combination of signs”

–          “sign” will include a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign

–          A trademark will not be registrable if its features are dictated primarily by a utilitarian function (codifying recent case law)

–          In order to make a priority filing date claim, an applicant will no longer be required to have a real and effective industrial or commercial establishment in the country where the first application to register the trademark was filed. 

–          A Counterstatement to a Statement of Opposition will only need to state that the applicant intends to respond to the opposition.

–          It will be made clear that the Trade-marks Opposition Board can, in applicable circumstances, refuse some goods/services and let the remainder of the goods/services through to Registration, when dealing with Opposition proceedings

–          Divisional applications will be permitted, as well as mergers of registrations that stem from an original application that was divided

–         Applications for proposed certification marks will be permitted

–          The Bill contains many provisions relating to offences arising out of manufacturing, sale, possession, importation, distribution, and the like of counterfeit goods, labels and packaging, with fines of up to $1,000,000 or imprisonment for up to 5 years, if convicted on indictment.  There are also a number of provisions dealing with detention and destruction of infringing goods

There are, unfortunately, a number of  other provisions in the Act that could have been modified, deleted or clarified, which this Bill does not currently deal with.  Time will tell what changes are made to this Bill as it proceeds through the legislative process, with input from various committees and special interest groups.

Bodum Gets French Pressed by Federal Court In Trademark Dispute

By In Case Law, Protection & Enforcement, Registration

Canada’s Federal Court has recently handed Bodum USA, Inc. (Bodum) another loss in its ongoing fight to enforce its trademark and other intellectual property rights in this country.  In the most recent decision, the Court has found that the Canadian Registration for the trademark FRENCH PRESS is invalid and unenforceable.  This Registration is owned by Pi Design AG (Pi), a related entity to Bodum and the licensor of the mark to Bodum in Canada and covers wares described as non-electric coffee makers.

As a result,  Bodum’s infringement claims against Meyer Housewares Canada Inc. (Meyer) over its use of the FRENCH PRESS mark have been dismissed.  Even worse for Bodum, the Registration for FRENCH PRESS has been ordered expunged on the grounds that it should never have been issued in the first place and even if it was properly registered, that Registration is now invalid on the basis that the mark is descriptive and not distinctive of Bodum as the sole source of the goods that this mark is registered in association with.

When assessing the evidence presented by the parties, the Court found that the term “French Press” was already in widespread use in North America as a generic term describing a popular type of coffee making device in 1995, which Pi was aware of when it sought to register the mark in Canada and thereby claim exclusive rights to the mark.  The Registration for this mark issued in 1997.

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