Hard Hat – Some Protection, but Not Enough

A recent Federal Court of Appeal decision upheld the trial decision that Société Laurentides Inc. (“SLI”) did not infringe the trade-mark of Osmose-Pentox Inc.(“OPI”).  SLI produced wood primers under the name “wood conservator”, and OPI is the registered owner of the design trade-mark CONSERVATOR DESIGN, where the “O” has been replaced with the image of a tilted hard hat.  OPI also sells wood primers under its CONSERVATOR trade-mark.  The full version of the decision is available here.

The question answered in the negative by the trial judge (and upheld on appeal) was whether OPI had a monopoly over the word CONSERVATOR and whether SLI was liable for infringement of OPI’s registered trade-mark.  The Court determined NO – SLI was merely using the descriptive word CONSERVATOR as a means to describe its product as being able to conserve and protect wood.  The Court confirmed this, referring to a defense available within the Trade-Marks Act, section 20(1)(b)(ii), which states that no registration of a trade-mark prevents a person from making a bona fide use of a term as a description of its wares, without having any effect of depreciating the goodwill of the registered owner.

There was no evidence raised at Court of there being any actual confusion and no evidence that a common purchaser would have suspected that SLI was using the descriptive term as a trade-mark.  Likewise, there was no evidence of any depreciation of goodwill or economic damage to OPI.

The Court summarized it nicely in the appeal decision at 17:

[17] There is no doubt that Osmose-Pentox enjoys the exclusive right to use the design mark CONSERVATOR DESIGN. However, as a design mark, the protection it has under the Act covers only the representation of the word “conservator” where the letters “o” or “eu” have been replaced by a hard hat, and does not extend to the words suggested by the design mark. In other words, the distinguishing feature of Osmose-Pentox’s design mark is only the hard hat. In the absence of the hard hat, it would be difficult to imagine that there would be any protection under the Act.

Therefore, the hard hat offered some protection, but not enough.

For more information on protecting your brand, or on trade-marks, contact me.


Recently, the Insurance Corporation of British Columbia (“ICBC”) lost a trade-mark dispute against Stainton Ventures Ltd. (“Stainton”), which owns the website <ICBCadvice.com>.  A full version of the decision is available here.

As a brief summary of the trial case, ICBC claimed that Stainton had violated ICBC’s trade-mark rights under sections 9 and 11 of the Trade-Marks Act.  Sections 9 and 11 refer to “official” trade-marks, or trade-marks which are owned by government or public authorities (more discussion here), and aim to prevent others from using these official marks.  The trial judge ruled against ICBC, an appeal by ICBC was unsuccessful, and a further appeal to the Supreme Court was also denied.  The Court ruled against ICBC for many reasons including:

1. ICBC failed to discharge its onus to prove that there were mistakes or confusion resulting from users looking for the ICBC official website and mistakenly directed to Stainton’s website.

2. The mere use of the official mark as a portion of the website address was not enough to prove that Stainton was attempting to redirect traffic from users looking for the ICBC official website (i.e. there was no intention of passing off).

3. An average internet user would not associate Stainton’s website as owned by ICBC, but merely come to the impression that it had something to do with ICBC.  Appeal judge: “a domain name which, in part, contains the name of a business or its acronym will not necessarily be affiliated with or endorsed by that business and may, instead, be the subject matter of the website or entirely unrelated to that business” (at 37).

4. Stainton was not using the official mark “as a trade-mark or otherwise”, and not holding itself out to be offering services under that name (i.e. no infringement).

5. The mere use of the official mark in the website address is not determinative in and of itself, and the website as a whole must be analyzed (at 37).

6. There is a plethora of other websites containing the official mark as an indirect reference such as <sueicbc.com>, <icbcinjurylawyers.ca>, or <ihateicbc.com>.

The Court (at 38) also suggested that the analysis of this case might also apply to non-official trade-marks, and I tend to agree.  What should also be taken from this case is that while Stainton may not have successfully defended this case, it should not be taken as a blanket approval to use any trade-marks in website addresses or within the text of a website.  The Court alludes to the fact that if the website does misdirect traffic or essentially offer a business or services which competes with the owner of the trade-mark, that website may be held to be infringing.  One should also consider that although the mere use of the trade-mark in line with the Stainton case may not be infringing, one should still not use the trade-mark in such a way as to depreciate the goodwill of the registered owner or defame or slander the owner in any way.

For more information on trade-marks, contact me.

HALAL and KOSHER – potential trade-marks?

I came across an interesting case today: Islamic Society of North America – Canada v. Bank of Montreal, in which the Trade-Marks Opposition Board (“TMOB”) was asked to consider whether HALAL was distinctive for the purposes of identifying mortgages, mutual funds, and other investment products for the Bank of Montreal.

The case arose during the course of the trade-mark application process where any interested third party is entitled to “oppose” the trade-mark application, after it passes through initial examination by the Registrar of Trade-Marks, and before it is fully registered.  In this case, the opponent was the Islamic Society of North America – Canada, which claimed that the mark HALAL was descriptive of the quality or nature of the goods and services being offered.

The case re-confirms that a trade-mark can not be merely descriptive of the wares or the quality or nature thereof.  The word HALAL originates from the Qur’an, the Muslim holy text, and generally means lawful or permissible according to the teachings of Allah.  While generally associated with foods, HALAL can be extended to any wares and services, including lending practices.

The TMOB ultimately concluded that the trade-mark was not distinctive at the date of application, meaning that the applicant could not satisfy the TMOB that the use of the word HALAL was tied to its own wares and services.  In doing so, the TMOB considered extensive search results from GOOGLE to show that HALAL was used extensively and linked to many different sources, and could therefore not be linked to the single source, namely, the applicant.

The TMOB also stated that largely because of the extensive use of the term, the trade-mark is unregistrable according to section 12(1)(b) of the Trade-Marks Act, since it was generally accepted to describe the quality and nature of the wares and services offered.  And, if not descriptive, then it would be deceptively misdescriptive, since a large number of Canadians would expect the wares and services to comply with the meaning of the HALAL mark.

Trade-marks which describe the quality or nature of the product, or processes involved in production can potentially be registered as “certification marks”.  These special type of trade-marks do not distinguish a particular source of the wares and services, but rather highlight that wares and services have received a particular “stamp of approval” or certification which the public can rely on as being reviewed and approved.

For more information on trade-marks, contact me.

New Year’s Trade-Mark Checkup

Every year, I recommend that businesses perform a “checkup” on their branding and advertising to ensure proper usage of their trademarks.

First, recall that even though a trademark may be registered, this alone does not ensure protection – a trademark must be used properly and consistently to ensure its survival and scope.  For more information on how to use a trademark properly, see this post.

Second, what if your trade-marks, advertising or logos don’t look exactly like what you originally started with 5, 10, or 20 years ago?  With “design” trademarks or logos, this is entirely possible where new artwork is updated or re-started after old design templates are lost, or where marketing decisions affect the look and feel of the logo.  An example of this was highlighted in the well-known decision of the Court in Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (FCA).  In that case, the long-standing use of a thin, fit penguin design on shirts was changed by marketing decision to a more robust “corpulent” penguin design.  As a result, a challenger attempted to strike the “thin” penguin registration from the register of trademarks due to its non-use (this is possible under section 45 of the Trade-Marks Act… see my post on this here).  However, the Court ruled that the deviation from the original design was not sufficient enough as to completely abandon the original trade-mark.  With “word” trade-marks, the test is similar but extremely stringent as even a single letter or space could potentially alter the meaning of the trade-mark.  It remains prudent, however, that if your trade-mark has changed, you should register the new one.

Thirdly, it may be possible that you are no longer using your originally registered trade-marks, or you have developed further trade-marks which are not registered.  You should review these and seek registration for any trade-marks you now use.

For more information on trade-marks or if you would like a trade-mark “checkup”, contact me.

Changes to the Trade-marks Act

On June 19, 2014 the Canadian government ratified a bill which will modernize our current Trade-marks Act, and with it comes sweeping changes to the methods and processes behind trademark registration and enforcement.  While the bill received royal assent, changes are not yet in force until the regulations are finalized, which are anticipated sometime in 2015.

Here is a summary of some of the major changes and what I believe might be their effect:

  • The death of the hyphen: a trade-mark in Canada will finally be called a trademark, as is the case is most other countries
  • Modernization of other terms: For example, we will refer to associated products as “goods” rather than “wares”
  • Renewal periods will be reduced from 15 years to 10 years
    • While this brings Canadian time periods in line with other counties, it also will increase a registrant’s cost over the lifetime of the trademark
  • Canada will adopt the Nice Agreement which means trademarks will be classified according to certain codes
    • This may result in a per-class filing fee as is common in other countries
    • It is possible that renewals may also be per-class, further increasing costs
  • An applicant will no longer have to submit a declaration of use (or date of first use) of a trademark prior to registration
    • It will be easier (and faster) to obtain a trademark registration
    • A search of the register will yield uncertain results when analyzing whether a particular trademark registration is in use or not.  This will be unfortunate when advising clients of pending registrations, as one may not be certain who has the rights associated with first use, and further (and potentially expensive) market investigations may be necessary to determine this with certainty.  We may also see an increase in opposition proceedings filed as a precautionary measure in order to block pending applications until disclosure of first use is provided and investigated.
    • We may see an increase of trademark “trolls” or “squatters” filing for applications with no proof of use, solely to hinder and sell existing registrations to bona fides applicants
  • The Trademarks Examiner may object to applications on the basis of “lacking distinctiveness”
    • This new ground of objection is yet unexplored but may lead to objections based upon internationally famous marks
  • A new type of divisional application will be permitted
    • This will allow applications which are being opposed in part to continue to registration for those portions of the application which are not being opposed (by dividing the application into two portions)
  • Canada will adopt the Madrid Protocol, allowing the filing of international trademark applications from within Canada
    • This will undoubtedly result in cost savings for applicants as multiple international applications can be filed using a single Canadian agent

Overall, the changes are welcome and will serve to bring the Canadian registration process and laws in line with many other countries.  What is clear is that the costs for applicants may increase, due to shortened lifespans, the possibility of a per-class registration cost, and the potential of true owners of unregistered brands having to expend resources and money to cancel or defend against trademark squatters.  Applicants concerned with these changes should act soon.

For more information, contact me.

Redskins trademark cancelled

I’d like to chime in about the recent trademark news concerning the Washington Redskins football team.

If you are unaware of the recent controversy, the story begins at least as early as 1992, when Suzan Harjo and six other plaintiffs petitioned the US Patent and Trademark Office (USPTO) to cancel the REDSKINS trademark on the grounds that it is disparaging, scandalous, contemptuous, or disreputable towards Native Americans or Aboriginal persons.  The cited grounds exist in US trademark legislation, and similar legislation exists in Canada under section 9(j) prohibiting a trademark which is “scandalous, obscene, or immoral”.  The case went on for 7 years but finally the USPTO cancelled the mark only to have the appeal court overturn that decision, finding insufficient evidence of disparagement.  The court also mentioned that the team had been named as such for several years and any claim on the basis of disparagement was extinguished by the doctrine of laches (i.e. if the plaintiffs were concerned, they should have brought the case much sooner).

The most recent trademark dispute is filed by Amanda Blackhorse and 4 other plaintiffs, claiming the same or similar issues.  The difference in this case is that since 1992, the USPTO has rejected applications for eleven new applications containing the component REDSKINS on the basis that it is disparaging.  Allegedly as well, the plaintiffs claim that a new generation of plaintiffs and Native American persons is not bound by the previous delays and the doctrine of laches.  The USPTO agreed with the plaintiffs and cancelled the trademark.

I struggle with this case.  While I do agree that society changes and the term REDSKINS may not have been socially disparaging according to the majority of Americans at the time of filing (1978 or first use as early as 1932), the name is certainly disparaging today as much as it was then, to that particular group of persons affected by it.  We don’t see trademarks for the “n-word” or other clearly disparaging names.  However, the same argument may have applied should such a trademark have existed back in the early 1900s.  Would that have been cancelled as well?  What would happen if such a disparaging term, while historically disparaging, became socially acceptable to even those affected groups?

To be clear, the cancellation of the Washington Redskins trademark is not an order that the team change its name.  However, it may have implications in licensing its product sales or spinoff merchandise as well as other associated trademarks and names, such as its cheerleading squad, the Redskinettes.

It will be interesting to see how this case evolves, as undoubtedly the Washington Redskins team will launch an appeal.

For more trademark info, contact me.

Orange you using this trade-mark?

Scotiabank acquired ING Bank of Canada in 2012, and in November of 2013, applied for a trade-mark for a new name for the banking subsidiary, TANGERINE.  The name is fresh and allows the continued use of the bright orange formerly known to dominate ING banking advertisements.  The marketing department in Scotiabank probably had an orange-themed party… until they received a letter of demand from Tangerine Financial Projects LP, alleging that it was entitled to the trade-mark.  Tangerine Financial Products LP sold retirement planning, RRSPs, and financial advice, all products similarly offered by Scotiabank.  The owners of Tangerine Financial Projects LP, RSP Generation LP (“RSP”) alleged the use of the name TANGERINE back as early as October 2008.

You will recall that Canada and the US are “first to use” jurisdictions, meaning that it is not a land rush to the Trade-mark Office in order to gain first priority.  The person or entity which uses a particular trade-mark first in commerce gains the right to apply for that particular trade-mark (if they want to wait) and has the further right to challenge and oppose anyone who attempts to register an exact or similar trade-mark to the trade-mark they currently use.  However, a successful opposition requires proof of use and other information, and can be quite costly to prepare and file.  It is therefore recommended to register your own trade-mark early to give the disadvantage to anyone else who might try to oppose you.

In the present case, the facts are very unclear.  While RSP may have used the TANGERINE name in its partnership registration, it soon thereafter went into bankruptcy and very likely did not continue to use the name (if at all).  RSP did apply for a trade-mark for TANGERINE, but failed to sign the declaration of use to conclude the trade-mark registration, which can only be signed once the trade-mark is in use in commerce.  This leads one to believe it failed to use the trade-mark else it would have signed the declaration.  It is unclear whether RSP had used the trade-mark at all, and to what extent.

Based upon the current facts from various news sources, I find it difficult to believe that RSP will produce the necessary evidence.  I believe it more likely that Scotiabank will buy out RSP’s interests and settle.

It is important that an owner of a trade-mark (1) use its trade-marks consistently, (2) register for a trade-mark, and (3) keep records of all advertising, sales, and trade-mark displays.  You never know when you might need to present it at court.

For more information on trade-marks, contact me.

No trademark in Europe? Pinterest-ing!

Businesses need to plan ahead and consider future markets for their trademarks.

The popular photo-sharing website PINTEREST.COM (“Pinterest”) failed to secure trademark rights in Europe in November 2013 when the Office for Harmonization in the Internal Market (“OHIM”) determined that a U.K.-based business, Premium Interest Ltd. (“Premium”) was entitled to the registration of the PINTEREST trademark.

OHIM operates similarly to the Canadian Trade-mark Office, and publishes a trademark application for third-party (public) opposition once it receives preliminary approval.  In this case, Premium filed a trademark application on January 31, 2012.  Pinterest had been operating since about 2010.  After receiving notice of the Premium application, Pinterest opposed the application on the basis that it had become well-known in Europe prior to the application.  Due to its familiarity, Pinterest argued that it had gained common law rights within the European community and would have been entitled to the trademark ahead of Premium.

In Canada we have a similar provision which allows extra-jurisdictional entities (i.e. companies or persons from outside Canada) who have become sufficiently famous and identifiable to the Canadian consumer to acquire the right to apply for a trademark.  The application is based upon the trademark “becoming known” in Canada, despite not having any direct market presence within the country itself.

Pinterest lost its case, primarily because OHIM determined that while Pinterest had been operating since about 2010, it had done so primarily in the US and had not become sufficiently known in the European community as of the date of the Premium application (2012).  Therefore, Premium was entitled to its registration.

This case highlights the importance of businesses to consider future markets, including distant international markets, as they expand and grow.  It may be prudent to file “proposed use” trademark applications in other jurisdictions just in case the business expands.  In most jurisdictions, a proposed use application can secure a priority date for a particular trademark for 3-5 years and offer protection against new applications in the meantime.

For more information on trademarks, contact me.

Trademarks and … Clowns?

Next time you’re clowning around, be sure not to imitate any other clowns, or you could be held liable!

All kidding aside, most artistic performers, and (according to Wikipedia) particularly clowns, participate in an unspoken Code of Non-Infringement.  Essentially this means that each performer will try not to copy the performance attire, mannerisms, and decorations of the other.  But believe it or not, the “Code” is something which has legal backing.

While not technically “infringement”, which is generally a right reserved for registered intellectual property protection, clowns (and anyone else in a profession or trade) enjoy a form of protection called trade dress or unfair competition.  That is to say, the particular manner of dress or mannerisms which define that particular performer, or even a particular business, are distinguishing factors which set that particular business apart from others.  The law seeks to protect those interests and encourages competition by requiring businesses to develop their own particular get-up, packaging, or style.  These “distinguishing guises” can be the particular colour and shape of an apron worn by store clerks, patterns in linen, magazine cover arrangements, colour and shape of wrapping paper, the features of the interior and exterior of a restaurant, and yes, potentially, the distinguishing motley or apparel of a particular clown.

While there might be some argument to suggest that the trade dress of a clown is predominantly hackneyed or non-unique (everyone wears a red nose and has a squirting flower these days), there could be some clown out there with a brand new idea that sets him apart from all the other clowns.  Then who would be the fool, the fool, or the fool who copies the fool?

For more on trademarks, contact me.


Maintenance of Trade-Marks

In both Canada and the US, trade-marks must be consistently used in their original state in order to maintain their validity.  In Canada, the Trade-Marks Office (“TMO”) only requires that a client certify that they are using the trade-mark in association with its wares and services in order to qualify for registration.  The TMO does not require any pictures or samples.  It is possible, therefore, for little changes to the trade-mark to go unnoticed.

This is contrasted by the US Patent and Trademark Office which requests filing “specimens” of use prior to registration.  The specimens are also required for renewal of the trade-marks years later.  This additional requirement for these specimens often catches clients off-guard, but allows trade-mark practitioners like myself a unique opportunity to assist clients in ensuring that their trade-marks are being properly used.  My practice is to assist clients with these requirements in both Canada and the US, despite the TMO not requiring it.

Here’s an example: Often a client might think that ABC WIDGETS is a great trademark, and use it for years.  However, over the years, their marketing department stops using ABC WIDGETS on products, and develops the plan to include only the ABC portion of the trade-mark on new products, and displays ABC TOOLS, ABC HOLDER, and/or just ABC on their products.  Unfortunately, while these are similar, they are not the client’s original trade-mark.  If the client were to then attempt to register or renew ABC WIDGETS in the US, they likely would have difficulty proving that the trade-mark was used on all of these new products, and it may have not been used at all.

This is not only important to clients in ensuring that they have proper specimens for proving use or for renewal of their trade-marks, but in both Canada and the US, if you are not using your trade-mark consistently within the last 3 years, any third party can apply to have your trade-mark expunged (cancelled) from the register.  This could be tragic to your brand image and cost you thousands in re-branding and marketing costs.  Therefore, while the issue is most prominent in the US as a requirement with registration and renewal, in either of Canada or the US, if you can’t prove actual use of the trade-mark in the EXACT form as was registered, your trade-mark may be cancelled.  I wrote a blog post on the Canadian process here: Section 45 Proceedings.

It is also important that if you wish to alter the appearance or text of your trade-mark, you speak to a trade-mark practitioner as you may want to file for an additional trade-mark with the new text/logo.  It is recommended in most situations to also display both trade-marks, for example ABC TOOLS and ABC WIDGETS, to continue the use of the original trade-mark, while also developing rights for the new one.

For more information, contact me.