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.


The Olympics and Trade-marks

The Canadian Olympic Committee (“COC”) has recently sent a cease and desist letter to The North Face, alleging that its clothing and outerwear is in violation of trade-mark law.  The COC takes specific issue with the colours, symbols, and flags of several countries being displayed on North Face jackets in association with the text “2.7.14” (the date of the opening ceremonies) and “RU 14”, which, according to the COC implies Russia 2014, the host country of the Olympics.

Trade-mark law plays an important role in the Olympics, protecting the brands, sponsors, and more importantly, the spirit and goodwill of the games.  In Canada, the Olympics and Paralympic Marks Act was introduced as Federal legislation prior to the 2010 Olympic Games, to afford additional (and extensive) protection to the trade-marks associated with the Olympic Games held that year in Vancouver, British Columbia.  That legislation restricts the use of any Olympic names, logos, or symbols which are used in the games.

In fact, each host country of the Olympic Games, as part of their bid to host the games, must agree to pass legislation which protects the Olympic trade-marks, and host countries and the organizing committees must also agree to protect the sponsorships which bring major financial assistance to the games.  Products which aren’t specifically licensed by the organizing committee of that year’s event are monitored and in some cases removed from the area (brand exclusion zones), or, if they must be present, they are covered over.  Olympics viewers might notice evidence of this in the Bolshoy hockey arena, where behind the players’ benches are drinks covered in a black label and marked “isotonic energy drink” as opposed to what obviously is some brand-name beverage.

“Can I use the Olympic Rings?” tops the frequently asked questions on the Olympic website.  The simple answer is no, and if you do, expect to hear from some gold medal lawyers.

For more information on trade-marks, contact me.


Pirate Joe’s new fight: McDonald’s

For those who have been following my posts on the legal battle between Pirate Joe’s and Trader Joe’s (links: Part 1 and Part 2) can interpolate that the owner of Pirate Joe’s, Michael Hallatt, is an entrepreneur with a vision.  However, while his entrepreneurial spirit combined with a little bit of jurisdictional assistance in trade-mark law assisted him with his legal battle with Trader Joe’s, it may not help him if Hallatt decides to proceed in opening a fast food restaurant with a large black letter M.  This could raise a few eyebrows with McDonald’s.

In a CBC news article dated November 9, 2013, Hallatt was quoted as saying that he plans on creating a fast food chain with such a letter displayed, and stated, “McDonald’s doesn’t have a [trademark] on the letter M”.  That may be the literal case judging from a glance at the trade-mark register.  However, there is more to trade-mark law in Canada than registration and letters.

Despite McDonald’s not having a registered trade-mark for the letter M, it certainly carries on business and sells fast food underneath, in conjunction with, and in some cases, wrapped up in, large golden arches depicting the letter M.  It is therefore arguable that McDonald’s has an unregistered trade-mark and common law rights associated with the use of a letter M for fast food and the operation of a fast food restaurant.

Moreover, trade-mark law also encompasses something called “trade dress” or a “distinguishing guise”, which is a way of saying that the whole “get-up” or packaging in which a product is sold can sometimes be held to be a trade-mark in and of itself.  Examples include the curved shape of a Coca-Cola bottle or the triangular shape of a Toblerone chocolate bar.  It can also be applied to the look, feel, and atmosphere of the customer experience when entering a place of business, such as a large golden M at a McDonald’s.  A distinguishing guise is registered like a trade-mark, but can also be unregistered and give the owner common law rights.

Mr. Hallatt would certainly face an uphill battle if he were to take on McDonald’s, not only since trade-mark law seems to support McDonalds’ rights of a letter M, but also because McDonald’s would likely have a very strong interest (and huge resources) in defending its business.

For more information on trade-marks, contact me.

De Niro Shuts Down Vancouver Restaurant

In 1999, De Niro’s Supper Club was a popular restaurant establishment in downtown Vancouver.  At the time, the city was experiencing a large commercial growth in the film industry and often referred to as “Hollywood North”.  Unfortunately for the owners of De Niro’s Supper Club, the popularity of the establishment and of the city’s recognition with the film industry garnished the attention of the actor, Robert De Niro.

Not wanting his name associated with the restaurant, De Niro threatened to sue the owners under section 3 of the BC Privacy Act, which creates an actionable claim if a person uses someone else’s name to promote their business or sales.  The restaurant cleverly changed its name to “Section (3)” in response.

De Niro could have also sued under section 9(k) of the Canadian Trade-Marks Act, which prohibits adopting a business name which falsely suggests a connection with any living individual.  Had the restaurant also used De Niro’s portrait or signature, the actor could have sued under section 9(l) of the Trade-Marks Act, which prohibits the use of same for living individuals or those deceased within the last 30 years.

Unfortunately Section (3) no longer operates in Vancouver, but it taught us all a great lesson in trade-mark law.

To learn more about trade-marks, contact me.

Bill C-8: Does it pass the smell test?

On October 28, 2013 the Canadian Parliament tabled legislation in Bill C-8 to update the Trade-marks Act.  I say again, since, prior to the recent prorogation of Parliament, these similar changes were already tabled by the old Bill C-56.  It is unknown when these changes will take effect.

Let’s recap the major points:

  1. The definition of “wares” will be replaced with “goods”.
  2. The definition of “trade-mark” will now include “signs”, which shall include sounds, scents, tastes, textures, and positioning of signs.
  3. Section 19.1 of the proposed Act will include an absolute prohibition against counterfeit goods in Canada, including manufacturing, importing, exporting, attempting to manufacture, and other actions involving these goods.
  4. Section 36 of the proposed Act will allow a “divisional” application to separate goods which have already been in use from those for proposed use, which although triggers an additional filing fee, will be treated with the same filing date and priority.
  5. Criminal sanctions will be introduced for counterfeiting registered trade-marks, including up to 5 years in prison or a fine of up to $1,000,000.00.

Of particular interest to me is the introduction of scents, tastes, textures, and sounds, which I believe to be a step in the right direction of protecting marketing brands.  There are certain types of goods whose goodwill and reputation rely heavily on these areas (think perfume or the taste of Coca-Cola).  However, I fail to see how these “signs” will be properly protected, yet alone how they will be submitted for registration.  Functionally, getting the “taste” or “smell” to the Trade-Marks Office for an application could be quite the hassle (trap the newly baked cookies in a glass container?).  Administratively, these types of applications could also not be done online.  Secondly, how will the Trade-Marks Office categorize the taste or smell of an item when these are, I would imagine, subjective and depend on the chemical makeup of our taste-buds or olfactory sensors.

It will be interesting to see whether the latest court battle will be Coca-Cola and Pepsi claiming infringement of the other’s taste.  From years of street-side taste challenges, there ought to be plenty of survey evidence to support the lawsuit!

To discuss trade-marks further, contact me today.