We are pleased to announce that Paula Clancy will be a lecturer at McGill's Summer IP program (Understanding Trademarks), offered in partnership with the Intellectual Property Institute of Canada (IPIC).

Attendees can look forward to learning about trademark procurement, proceedings, portfolio management, as well as advanced topics such as opposition and cancellation proceedings.

Spots are still open. If interested, sign up here.

​The team at Clancy PC has been preparing since its announcement and is ready to welcome the new legislation into Canada. Key changes include:

• Reducing the registration period from 15 years to 10;
• The elimination of the requirement to file a Declaration of Use if a trademark application is based on proposed use;
• The elimination of associations between marks; and,
• The introduction of a per-class filing fee.

For more information on Canada's changes in legislation, contact us.

Article by Nathalie Siah.

The Toronto Maple Leafs have opposed Snoop Dogg’s trademark for his new cannabis brand “Leafs by Snoop,” in both Canada and the US. 

The Maple Leafs have taken issue with the cannabis brand “Leafs by Snoop” on the basis that it infringes on its signature marks that have been in use for decades.

Specifically, the Leafs have objected to the incorrect spelling of “leafs” (rather than “leaves”) arguing that this creates a direct association with the Toronto hockey team. 

We will continue to monitor this case to see how Snoop fares in this trademark battle.

A competitor to popular children’s animated TV series Peppa Pig has come to the playground—a tapir with the mark “TOBBIA”.

The show Peppa Pig is known for its 2-dimensional drawings and centers around Peppa, a young pig, her family and friends. Its creation over a decade ago has become an icon for young children around the world.

In April 2015, Entertainment One UK Ltd and Astley Baker Davies, owners of the Peppa Pig Mark filed an application for a declaration of invalidity against Xianhao Pan’s trademark for “TOBBIA”. Both marks are associated with Class 25 "clothing".

The case was originally heard by the EUIPO Cancellation Division and, to much surprise, the court held the marks were not confusingly similar. The decision was appealed to the EUIPO First Board of Appeal. It was here that the marks were reviewed for similarities and differences, visually, aurally and conceptually.

In regards to the visual similarities, the Appeal Board found the shape of the head and snout to be almost identical as well as the ears, cheeks and eyes. In addition, the shape of the bodies was also found to be very similar.

The elements of the word were also considered. The Board noted that aurally, the double letter in the middle of both words “Peppa” and “Tobbia” would be similar when spoken. Xianhao Pan's argument that the animal depicted in his mark was a tapir, not a pig, was dismissed by the board.

The Appeal Board declared the “TOBBIA” mark invalid in the EU for all goods.
​
For more information about EU trademarks, please contact us.

We have been advised by our Brazilian colleagues that the Brazilian Patent and Trademarks Office will be closed for an extended period between June 5 and June 10, 2019 as they conduct a data migration. Please ensure that we have instructions in advance for any matters with a deadline that falls between this time period.

Last month, singer and actress Ariana Grande filed two new trademark applications for ARIANA GRANDE THANK YOU, NEXT and thank u, next in the United States.  The marks relate to her hit single of the same name.

ARIANA GRANDE THANK YOU, NEXT™ is for use with a line of beauty products including perfumes, body lotions, bath gels and body mists, whereas thank u next™ is for use with clothing.

The artist has already successfully registered the marks ARI BY ARIANA GRANDE and ARIANA GRANDE before the USPTO, as well as having pending applications for ARIANA ARMY, BE GRANDE, ONE LOVE MANCHESTER, EAU FOR ALL, ARIANA GRANDE SWEET LIKE CANDY. 

Ariana is one of many artists seeking trademark protection for their brands. Artist Taylor Swift famously trademarked several of her lyrics including “This Sick Beat” and “Nice to Meet You, Where You Been?” Similarly, Hailey Bieber has filed an application for the trademark “Bieber Beauty” with future plans to launch a beauty and cosmetics line.
​
Yet, you don’t need to be a celeb to recognize and take advantage of the power of branding.  If you’re looking to register your next trademark, please contact us.

On April 15, 2019, the U.S. Supreme Court considered whether the mark “FUCT” could be registered on the U.S. Trademarks Registry in Iancu v. Brunetti.  (Apparently, the judges struggled with how to refer to the brand during the hearing, drawing a few chuckles from spectators).
See oral arguments on C-SPAN here.

The case was brought by Los Angeles graffiti artist, Erik Brunetti, owner of FUCT fashion line, after the USPTO rejected his application on the basis that the mark was scandalous. The term “FUCT,” an acronym for the paradox “Friends U Can’t Trust”, challenges federal law that states “immoral or scandalous matter” must be refused trademark protection.  Brunetti argued that his first amendment rights under the U.S. Constitution were violated.  Indeed, he has launched a supplementary brand:  Fuct is free speech. Free speech is Fuct™. 

In 2017, the US Supreme Court unanimously invalidated a related provision of federal law on the basis that it violated the Free Speech Clause of the First Amendment. See Matal v. Tam. In that case, an Asian American rock band had been refused registration of their mark THE SLANTS on the basis that it was a disparaging mark that was offensive to Asians. The Lanham Act’s anti-disparagement provision was deemed by the U.S. Supreme Court to be unconstitutional, and the band was permitted to register THE SLANTS.

The Supreme Court is due for a decision this summer, but till then, we hope the result isn’t “FUCT”. 
​
For more information on what can (and cannot!) be trademarked, please contact us.

​Joey Tomato’s (Canada) Inc. (“Joey”), the company behind the well-known JOEY restaurant chain, won a recent trademark victory in Canada.

Joey registered the LOCAL trademark in 2013 for use with restaurant, bar and lounge services as well as various beverageware goods.  In 2014, another entity (1786325 Ontario Ltd) filed an application for the trademark “LOCALE and Design” which featured the silhouette of a rooster, and which was also for use with restaurant services and promotional items, including glassware.  Joey opposed the LOCALE & Design application on the basis of, among other things, confusion with its prior mark.

The test for confusion is whether, as a matter of first impression, the average Canadian consumer with an imperfect recollection of one mark is likely to be confused upon encountering the other party’s mark. 

In this case, the Canadian Trademark Opposition Board found that there was a high degree of resemblance between “LOCAL” and “LOCALE”, both visually and phonetically. The overlapping goods and services also increased the likelihood for confusion and lead a typical Canadian consumer to assume that the parties’ restaurant goods and services share a common source. Accordingly, 1786325 Ontario Ltd.’s application was refused. 
​
For more information on trademark oppositions, and how to avoid them, please contact us.

 Photo by Jay Wennington on Unsplash