Branding

Nuthin’ but a Leaf Thang – Toronto Maple Leafs take issue with Snoop Dogg’s trade-mark application for LEAFS BY SNOOP Logo

By In Branding, Famous Marks, Protection & Enforcement, Registration, Trademark Oppositions

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.

Mark Image               Mark Image

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  Snoop also owns a word mark application for LEAFS BY SNOOP, although that application will not be published for opposition by the U.S. Patent and Trademark Office until July 19, 2016.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.

Proposed New French Language Requirements in Québec

By In Branding, Legislation

As discussed in our previous blog entry, after losing the battle in court over the requirement that businesses must add French language to English trade-marks displayed on signage outside their stores, in June 2015 the Québec government announced its intention to make modifications to Québec’s Regulation respecting the language of commerce and business (“Regulation”).

As recently reported in the media, the Québec government has just announced the proposed changes to the Regulation, the stated purpose of which is to ensure that commerce in Québec has more of a French language presence. The proposed changes require businesses to ensure that when trade-marks in languages other than French are used on exterior signage (as defined by the proposed rules), a French language component is displayed on the site as well. The proposed amendments set out the circumstances in which the new rules will apply, including when the trade-mark is displayed on interior signage that is intended to be seen from the outside, or when exterior signage is located in a mall or shopping centre complex.

The French language component may take the form of a slogan, a generic term or description, or other information concerning the products and services offered by the business. The proposed rules do not require that the French component be predominant over the non-French trade-mark, but they require that the French component be permanently visible in a manner similar to that of the non-French trade-mark being displayed, and be legible in the same visual field as the trade-mark.

A helpful illustration of acceptable and non-acceptable signage under the proposed changes can be found here.

A 45 day period for public feedback on the proposed amendments commenced on May 4, 2016. We will report again when there is a further update. In the meantime, brand owners using trade-marks in languages other than French in Québec should start considering how they will comply with the new French language requirements, assuming those requirements are passed into law, and whether their proposed strategy necessitates any changes to their current Canadian trade-mark portfolio.

 

 

Location Matters: The Perils of Geographic Names as Trade-marks

By In Branding, Case Law, Protection & Enforcement, Trademark Oppositions

When choosing a trade or business name it may seem like a good idea to incorporate the location of your business into the name. There are benefits: it is helpful for marketing, it gives your audience an idea of where your business is and who your market is, it can help establish your business in a neighborhood, and it can help you build a brand based on community and locality.

However, using the location of your business in your trade or business name can cause difficulties when it comes to registering that name as a trade-mark. Under section 12(1) (b) of the Trade-marks Act, a trade-mark is not registerable if it is clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services with which the trade-mark is used, unless that trade-mark has acquired distinctiveness through its use.

The Federal Court of Appeal recently reviewed section 12(1)(b), and considered the issue of whether a service provider can register, as a trade-mark, the name of a geographic location, purely in relation to its services.

In 2012, a dental practice owned by Dr. Cragg applied to register the trade-mark OCEAN PARK (the “Mark”) in association with dental services based on use since as early as 2000. The Mark was registered for use in association with “dental clinics” in 2013.

Prior to Dr. Cragg applying to register the Mark, another dentist, Dr. Lum purchased an existing dental practice a block away from Dr. Cragg’s and changed the name of the practice to “Ocean Park Dental Group”. Then, after moving the practice, Dr. Lum changed the name to “Ocean Park Village Dental”, and advertised and displayed signage using the trade-name “Village Dental in Ocean Park”.

In early 2014 Dr. Cragg brought an action against Dr. Lum for infringement of the Mark. In response, Dr. Lum brought an action seeking to invalidate the Mark on the grounds that it was not registerable under section 12(1)(b) of the Trade-marks Act.

In the court below, the trial judge held that in order to prove that a trade-mark is not registerable under section 12(1)(b), a plaintiff has to show (1) that a trade-mark refers to a geographic location; and (2) that the location was indigenous to the services in question. Under this analysis, in order for the Mark to be non-registerable, a reasonable person would have equate the geographic location “Ocean Park” with dental services.  Based on the evidence, the trial judge found that this was not the case, and the court dismissed the action to invalidate the Mark.

However, the Court of Appeal held that this was not the correct analysis.  Instead, the analysis under section 12(1)(b) is to focus on:

–          the type of services involved;

–          the average consumers to whom the services are offered; and

–          the character of the geographic location.

Under this analysis, if the trade-mark is the name of the geographic location where the services or goods are provided, then the trade-mark is descriptive within the meaning of 12(1)(b) and non-registerable because the trade-mark is descriptive of the origin of the services or goods.

The Court of Appeal reminded us that the reason why trade-marks that are descriptive of geographic locations are not registerable or protectable is to prevent a single service provider from monopolizing the name of a geographic location, so as to prevent other service providers from using that name to describe their own services.

On the issue of acquired distinctiveness, the problem identified by the Court of Appeal was that while geographic locations can be used in business names and for other purposes, they often do not meet the key requirement of a registerable trade-mark: distinctiveness. In this case, the Mark as registered, OCEAN PARK, was never used by itself in association with dental services. It was always used in the context of the name Ocean Park Dental. In this case, upon hearing “Ocean Park”, consumers would not think about Dr. Cragg’s dental services; as such, it could not be said that the Mark had acquired distinctiveness. Therefore, the Mark was declared invalid and struck from the Trade-mark Register.

This case warns businesses to be careful when choosing geographic locations as business or trade names which they may wish to register as a trade-mark. The use of a geographic location within the context of a broader trade-mark may be permissible. However, it is unlikely that a business can expect to register a trade-mark consisting purely of a geographic location, unless that business and the trade-mark have acquired significant distinctiveness through lengthy and extensive advertising and use.

C’est vrai: Québec government to continue seeking use of French on store signage

By In Branding, Legislation

The Canadian media, including the CBC, is reporting that the Québec government intends to continue its fight to require the use of French on signage where trade-marks and business names are otherwise displayed in English.

This is the latest development in a dispute that has gone on for a number of years.  As previously discussed in our post from November 23, 2012, a number of well-known retailers took the Québec government’s French language watchdog, the Office québécois de la langue française (“OQLF”), to Court over a requirement that all retailers must use either a generic French descriptive word or a French language slogan or explanation to reflect what they are selling, if their signage features an English language trade-mark – even if such trade-mark is registered under the Federal Trade-marks Act.

The retailers, which included multinational heavyweights such as WALMART, COSTCO and BEST BUY, were successful both before the Québec Superior Court and, more recently in April 2015, before the Québec Court of Appeal.  The Courts confirmed that the display of English language trade-marks on exterior store signage, without additional French descriptive language, did not violate Québec’s Charter of the French Language (the “Charter”), as retailers in Québec are entitled to post their trade-marks as is – i.e., in English – on the storefronts of their establishments, because of exceptions built into the Charter.

The retailers were therefore granted the declaratory judgment they requested against the OQLF.  The Québec government has until June 26, 2015 to file for leave to appeal to the Supreme Court of Canada, although the CBC reports that the government will not seek such leave.

In the meantime, the Québec government has decided to approach the issue from a matter of legislative change.  Framing the issue as a matter of “politeness” and awareness of the French language, the government will propose legislative amendments in the fall that will “ensure a permanent and visible presence of French” on exterior storefronts.  The government is hoping to have the legislative amendments in place by 2016.

Using as an example the SECOND CUP coffee retailer, which apparently is known as “Les cafés SECOND CUP” in la belle province, Premier Philippe Couillard takes the view that while “everyone knows” they sell coffee, the fact that the company uses “les cafés” in Québec is a recognition on the part of the retailer of the existence of French in Québec.

While there will apparently be no requirement to translate English language trade-marks, there will instead be a need to add descriptive or generic language in French.  Hence, once again, the Québec government is set to challenge the resistance of companies wishing not to use French on their English language signage in that province.

The CBC reports that the Retail Council of Canada has endorsed the move; however, it remains to be seen how companies, including the aforementioned retailers, will react.

Given the history and the nature of the businesses involved, we expect that there are more chapters to come in this story.

Combating Counterfeit Products Act Receives Royal Assent

By In Branding, Counterfeit goods, Famous Marks, Foreign Protection, Legislation, Protection & Enforcement

On December 9,2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trade-marks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had been criticized for not having meaningful policies to combat the global problem of counterfeit trafficking which flowed across Canadian borders.

Specific enforcement mechanisms contained in Bill C-8 include:

  • new civil prohibitions under the Trade-marks Act and Copyright Act giving rights holders the ability to start civil actions against those who infringe their trade-mark or copyright by possessing, manufacturing, distributing or trafficking goods for commercial purposes;
  • new criminal offences under the Trade-marks Act and Copyright Act for possessing, manufacturing, distributing or trafficking counterfeit goods for commercial purposes;
  • new provisions giving customs officials ex officio power to independently seize and detain suspected counterfeit goods. This includes the ability for copyright and trade-mark owners to file a “request for assistance” with customs officials to increase the information available to customs regarding possible counterfeit goods.

For a deeper review of the changes contained in Bill C-8, please see our previous post written in March 2013 when the bill was first introduced as Bill C-56.

While the Bill has obtained Royal Assent, it is only partially in force. Changes currently in force include:

  • the introduction of the new criminal provisions;
  • the deletion of section 7(e) of the Trade-marks Act; and
  • amendments to Section 20 of the Trade-marks Act dealing with infringement.

The majority of the amendments to the Trade-marks Act and Copyright Act, including the provisions relating to importation and exportation and ex officio powers of custom officials, will be brought into force by regulation. It is not clear when this will occur. However, it is thought that implementation will be in step with Bill C-31, the Budget Implementation Act, which is also waiting to come into force sometime in 2015 early 2016 and contains further significant amendments to the Trade-marks Act.

We will keep you updated as coming into force dates are announced and these legal tools become available to trade-mark and copyright owners.

Trademark Evidentiary Issues / Colour as a Trademark

By In Branding, Trademark Oppositions, Uncategorized

JTI Macdonald TM Corp. v. Imperial Tobacco Products Limited, a recent decision of the Federal Court, includes interesting findings regarding the introduction of additional evidence on appeals, colour constituting a trademark rather than a distinguishing guise and the evidence necessary to establish non-distinctiveness.

Imperial Tobacco applied to register “the colour orange applied to the visible surface of the packaging as shown in the attached drawing”, namely a drawing of a cigarette package.  JTI-Macdonald opposed the application and, being unsuccessful before the Opposition Board, appealed to the Federal Court.  The Federal Court agreed with the Board and rejected the various grounds of opposition.

The Court applied a standard of reasonableness, rather than correctness, when considering the appeal, given that the issues were mixed fact and law and within the expertise of the Board.  On an appeal from the Opposition Board a party is entitled to introduce new evidence and if that evidence would have “materially affected” the Board’s findings, the standard of review is one of correctness.  However, in this case, the Court concluded that the additional evidence that JTI-Macdonald sought to introduce merely provided additional examples of products rejected by the Board in its analysis of distinctiveness and therefore would not have affected the Board’s decision. 

The Court also considered the issue whether the applied for colour formed part of a mode of wrapping or packaging so as to constitute a distinguishing guise.  The Court noted that what was applied for was the colour orange applied to the packaging.  The colour was claimed separately and was not just an element of the packaging. Thus, the Board reasonably concluded that the colour was not part of the wrapping or packaging and could be claimed alone as a trademark.

With regards to the evidence necessary to establish distinctiveness, the Court noted that the relevant date for establishing a lack of distinctiveness is the date of the filing of the opposition.  Some of JTI-Macdonald’s evidence was from the period prior to the date when the opposition was filed and was therefore not probative.  As well, a number of the products relied on by JTI-Macdonald to establish non-distinctiveness either lacked sales data or had very low sales figures and did not assist.

In the end none of the grounds of opposition were accepted by the Board or the Court and the trademark was allowed to proceed to allowance.

Injunction for Trademark Infringement: Québec

By In Branding, Case Law, Protection & Enforcement, Uncategorized

In Solutions Abilis Inc. v. Groupe Alithis Inc., the Québec Superior Court granted the plaintiff an interlocutory injunction precluding the defendant from using ALITHIS as part of its corporate name or trade name or as a trademark.  The test for an interlocutory injunction in Québec turns on whether the rights which the plaintiff invokes are clear, doubtful or non-existent.  If those rights are clear an injunction should be granted if serious harm would otherwise result.  If those rights are doubtful the court must also consider the balance of convenience.  This test is similar, although not identical, to the test used in the common law provinces where the courts must consider whether there is a serious issue to be tried, irreparable harm and the balance of conclusive irreparable harm. 

After setting out the test the Court then considered the plaintiff’s trademark rights, starting from the premise that trademarks are a guarantee of origin and intended to protect the public by indicating the source of the goods and services.  The Court then focused on whether there was confusion, finding that the plaintiff’s marks,

 abilis it           abilis ti

were inherently distinctive, since the included word, ABILIS, was a coined term with 3 syllables that created a strong sonority – “ab-il-is” and because of the use and position of the “it” and “ti” symbols in the marks.  The defendant’s mark,

alithis

 also used 3 syllables and a symbol.

The length of time also favoured the plaintiff and the nature of the trade was similar, namely computer consulting services.  The Court was not willing to accept the defendants’ argument that persons purchasing computer services would take time to determine the source, noting that initial interest confusion was sufficient and might, among other things, result in the plaintiff not being invited to bid for a potential customer’s work.  The Court was also convinced there was a sufficient degree of resemblance, referencing a number of Québec cases where the degree of resemblance led to a finding of confusion even where the goods or services were different. 

Since the likelihood of confusion was clear, a loss of goodwill and clientele were presumed and therefore the injunction was granted.  A decision regarding the balance of convenience was not necessary, but the Court noted, in the event of an appeal, that it favoured the plaintiff, particularly given the shorter period of time the defendants had been in the market.