 Fast-fashion giants like Shein, Zara and AliExpress have often been accused of misappropriating designs from small businesses and independent fashion designers. With increasing social media usage, this problem is becoming more prevalent. On the other side, social media has also allowed small fashion brands to publicly call out these large companies for misappropriating their designs. Interestingly, in the U.S., the fashion industry is regarded as “manufacturing” rather than a creative industry such as film or music. Because clothing has a practical function, most garment designs cannot be protected by IP rights ownership. Elements of the garment, such as the print or a graphic, can be copyrighted; however, most small designers cannot afford to register a copyright for their design. What can and cannot be protected by copyright law in the fashion industry is subjective, leaving many designers vulnerable to having their designs copied. Most small brands cannot afford to go through any legal action when their designs are used without their consent. Social media has proven to be a powerful tool for brand enforcement, as several designers have taken to Instagram to tell their followers about incidents of misappropriation. These have resulted in mass amounts of support and many posts condemning the company that stole the design. Read more about copying incidents. Intellectual property rights are a valuable asset for all companies, regardless of size. For fashion designers, their intellectual assets are the biggest driver of competitive advantage. Companies should respect the creative work of others. Maintaining this integrity is essential to your brand’s identity and helps create a business environment where small businesses can thrive. Examples of Intellectual property assets for fashion companies: Trademarks: logos, brand name, graphics Patents: the technology involved in creating a particular fabric Trade secrets: supplier lists, software tools for garment design Read more about designs, branding, trademarks, patents and trade secrets in the fashion industry from WIPO.
The issue of integrity and respect also comes into question concerning cultural appropriation. This year, Mexico’s ministry of culture accused international fashion brands Zara, Anthropologie and Patowl of cultural appropriation. The incident was with these companies using patterns from indigenous Mexican groups without any permission or compensation to these groups. The ministry of culture stated that Zara used a pattern belonging to the indigenous Mixteca community of San Juan. Read their complete statement from the government of Mexico translated to English here. Zara’s owner, Inditex, responded to the Ministry of Culture, stating that the design was not intentionally borrowed or influenced by the Mixtec people of Mexico. Anthropologie and Patowl did not comment. Cultural appropriation in the fashion industry has been a long-standing issue. This further emphasizes the importance of respecting other’s creative work and the cultural significance behind it. Read more about cultural appropriation in the fashion industry from WIPO. Photo by Charlota Blunarova via Unsplash
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On June 28th, the Government of Canada’s College of Patent Agents and Trademark Agents (CPATA) was established to implement a regulatory framework for the professions of patent and trademark agents. The College is a part of Canada’s Intellectual Property Strategy and aims to ensure the integrity of these professions. The CPATA is now responsible for:
For informational resources, see below:
Graphic by Clancy PC using: CPATA logo from CPATA's website Photo by Maarten van den Huevel via Unsplash  June 27 was Micro, Small and Medium-Sized Enterprises (MSMEs) Day. The United Nations (UN) started MSME Day in 2017 in recognition of the importance of small businesses to local and global economies. The UN also recognizes that MSMEs are crucial to achieving their Sustainable Development Goals (SDGs). As a small business ourselves, Clancy PC recognizes the importance of supporting other MSME to allow them to grow. In honour of this, we have put together a guide on how IP rights can build value and protect small businesses. “SMEs that apply for patents, trademarks or designs are more likely to grow quickly and succeed than those that do not.” – World Intellectual Property Office Magazine Quick Facts about small businesses from the Government of Canada Key Small Business Statistics 2020
Protecting intellectual property rights (IPRs) can be essential to ensure the growth and success of small businesses. IPRs are very valuable assets that can be used and leveraged to create added value. The five most common forms of intellectual property are: Trademarks: Trademarks can consist of virtually any sign that allows one company to distinguish itself from its competitors. They can include words, designs, tag lines, scents, textures, sounds, tastes, motion marks, etc. Protecting your company’s trademarks is essential as it allows you to take swift action in cases where you spot unauthorized use that can lead to confusion in the marketplace. Moreover, by registering your trademarks, you ensure that the accrued goodwill in your brand inures to your benefit. Industrial Designs: Industrial designs protect the aesthetic features of a product, such as the shape, ornamentation, patterns applied to the product. Patents: Patents protect innovation and provide a monopoly period within which a business can monetize the invention. Copyrights: Copyright protects original literary, artistic, dramatic, or musical works and gives you the sole right to reproduce, publish or perform the works. Trade Secrets: Trade secrets can be any exclusive information that gives your company a competitive edge in the industrial, manufacturing or commercial sector. A very famous trade secret is the Coca-Cola recipe. For more information about the various forms of IP protection available in Canada, visit CIPO Why IP matters for your business
References: https://sagaciousresearch.com/blog/why-ip-protection-important-startups/ In the most recent issue of the International Trademark Association’s (INTA) Bulletin, Tracy Rengecas explores issues surrounding the unauthorized use of Traditional Cultural Expressions (TCEs). TCEs include Indigenous names, words, symbols, songs, images and other expressions that are imbued with significant meaning, and even sacred value, for Indigenous communities.
When a company adopts an Indigenous word or symbol and uses it for commercial gain, without authorization or context, this results in cultural misappropriation. As Ms. Rengecas notes, citing a recent blog post by Wend Wendland: “… the tribal name of the Maasai, an indigenous community of East Africa, has been used without permission by 80 companies, including Jaguar Land Rover and Louis Vuitton. The Maasai community continues to live in poverty and does not derive any income from the use of its name.” Similar issues have arisen in the U.S. with Jeep’s use of the trademark GRAND CHEROKEE. The use of derogatory or offensive words for commercial gain is a related issue. The Washington football team recently dropped the use of REDSKINS, after significant pressure from sponsors and the BLM movement forced their hand. The Canadian Trademarks Act contains a prohibition against the registration of “any scandalous, obscene or immoral word or device” - Section 9(1)(j). This section may be used to object to the registration of, or to expunge marks that are offensive to Canada’s Indigenous community. Nevertheless, this may be of limited value since the company may conceivably continue to ‘use’ the offensive word or design. Article 31 of the United National Declaration on the Rights of Indigenous Peoples (the “Declaration”) recognizes the right of Indigenous peoples to maintain, control, protect and develop their cultural heritage, including IP rights in such heritage. In December 2020, the Government of Canada introduced legislation to implement the Declaration. Bill C-15 (the “United Nations Declaration on the Rights of Indigenous Peoples Act”) received Royal Assent earlier this week (on June 21, 2021). It will be interesting to see how the Government and Indigenous communities work together to fully implement the Declaration. To read Ms. Rengecas article in the INTA Bulletin, click here. To learn more about the Declaration, click here Amazon’s IP Accelerator helps businesses gain access to valuable tools on Amazon’s Brand Registry platform. The IP Accelerator launched in Canada on April 26th, 2021, helping connect small-to-mid-sized businesses with third-party Intellectual Property (IP) law firms. These firms are curated by Amazon and are all trusted Canadian firms, including woman-and-minority-owned firms. Clancy PC one of eight service providers selected for the Amazon IP Accelerator in Canada. As the Ottawa Business Journal highlighted, this partnership between Clancy PC, a small firm, and the world’s e-commerce leader, Amazon, is a tremendous opportunity. How it worksIt can take up to 3 years to register a trademark with the Canadian Intellectual Property Office (CIPO). Amazon’s IP Accelerator allows brand owners to access the Brand Registry program with a pending application, rather than having to wait until a registration issues. This means that brand owners can sell and be protected on Amazon within two weeks of filing their Canadian trademark application. The process is simple:
Benefits
Clancy PC is an independent, woman-owned firm and proud to be a part of the Amazon IP Accelerator. An Amazon press release quoted Founder and Managing Attorney Paula Clancy:
“In today’s competitive marketplace, your brand is one of your most valuable assets as it represents your reputation in the eyes of consumers, directing them to your products and services. Brand protection on a store like Amazon, which reaches millions of customers worldwide, is essential, not only to prevent unauthorized use of your marks, but also to protect you from potential claims by third parties. Amazon’s IP Accelerator helps small businesses connect with trusted trademark professionals to protect their brands. Clancy PC is excited to be part of the program and to assist small businesses through the trademark registration and Amazon Brand Registry process.” Clancy PC has received more than 100 trademark requests since the IP Accelerators launch. To read Clancy PC’s Amazon reviews, click here.  Clancy PC is delighted to welcome Nitin Gomber as an Associate Lawyer.
Nitin holds an LL.M. in Intellectual Property from the Franklin Pierce School of Law in the US and a B.A.LL.B. (Honours) from Panjab University in India. He is called to the bar in New York, as well as in Delhi, India. Nitin is fluent in English, Hindi and Punjabi. Nitin has been in the legal industry for over a decade and has worked as a trademark lawyer, as well as an academic. As a lawyer, he has worked with the largest trademark filing law firms both in the US & India and brings a multi-jurisdictional perspective to the table for our clients. He has represented clients before the US Patent and Trademark Office, the Indian Trade Marks Registry, the Trademark Trial and Appeal Board, and the Santa Clara County Superior Court. Nitin has also taught law at Jindal Global Law School in India that makes him particularly sensitive to the needs of people, with a strong ability to connect with them. Welcome Nitin!  Clancy PC is thrilled to announce that it has achieved WBE Certification! WBE Canada certifies Canadian B2B businesses that are at least 51% owned, managed and controlled by women and connects them to corporate and government supply chains.
The WBE certification is built on global supplier diversity standards and is recognized by such giants as IBM, General Motors, Toyota, Accenture, top Canadian companies like BMO, TD Bank, RBC, TELUS, Rogers, Bell and others. WBE Certification helps Canadian women-led businesses by providing direct access to corporate and government supplier diversity leaders and buyers in organizations. This is a very exciting achievement for Clancy PC. If you are a woman-led business and would like more information about the WBE Certification process, visit https://wbecanada.ca  Photo by Markus Winkler on Unsplash By Trish Sawhney In an effort to speed up the trademark registration process in Canada, effective immediately, CIPO will begin accepting expedited examination requests in the form of an affidavit or statutory declaration. The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
Should the request be accepted, CIPO will examine the application as soon as possible, which reduces the current 24-28 month wait time significantly. If you believe your trademark application meets the requirements above, contact us today to see if we can expedite your application process!  Photo by Christian Wiediger on Unsplash By Trish Sawhney We are delighted to announce that Clancy PC has been featured in the Ottawa Business Journal!
The article, written by David Sali, highlights our recent partnership with Amazon via the Amazon IP Accelerator program. This program aims to provide small and medium-sized businesses across Canada the opportunity to secure trademark protection for their brands on Amazon and the Canadian marketplace in a timely and cost-effective manner. As one of only 8 firms in Canada to be chosen, we are honoured to partner with Amazon and eager to help Canadian businesses build their brands and protect their intellectual property. As stated by Paula Clancy herself, this is a tremendous opportunity and of national importance! Check out the article here: https://www.obj.ca/article/techopia/mark-ottawa-law-firms-join-program-aimed-protecting-amazon-merchants-ip If you are interested in selling your products on Amazon, contact us today to learn more! By Trish Sawhney  Photo by StellrWeb on Unsplash The newly announced Federal Budget 2021 proposes a variety of amendments to ensure Canadian innovators, start-ups, and technology-intensive businesses can access proper capital to protect innovations and succeed in the long term. While further details have yet to be released, we have provided a snapshot of some of the proposed investments below:
To begin, Budget 2021 introduces a new measure, which will allow Canadian-controlled private corporations to immediately expense up to $1.5 million in eligible investments, including intellectual property. Secondly, Budget 2021 proposes a variety of amendments to the Canada Small Business Financing Program (“CSBFP”). These changes are expected to increase annual financing by $560 million, resulting in support for nearly 3000 more small businesses. For example, as it currently stands, the CSBFP does not provide financing to help small businesses protect intellectual property. However, Budget 2021 intends to expand the CSBFP’s loan class eligibility to include lending against intellectual property and start-up assets and expenses. Budget 2021 also plans to expand borrower eligibility to include non-profit and charitable social enterprises. Lastly, Budget 2021 proposes to support Canadian businesses through the following investments:
These welcomed changes are intended to further incentivize businesses to invest in assets like intellectual property, ultimately acting as a driver for innovation and growth throughout Canada. If you would like to learn about other financing options that are currently available for Canadian businesses, please check out this resource from the Canadian Intellectual Property Office. Interested in discussing strategies for protecting your intellectual property? Contact us today! By Sukey Omran  Photo by Christian Lue on Unsplash The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
Where is IP registered? The European Union Intellectual Property Office (EUIPO) is the agency responsible for registering EU-wide trademarks and designs. The granting of EU patents is administered by the European Patent Office (EPO). Trademarks
IP Enforcement Enforcement is administered on a country-by-country basis. Therefore, you must monitor the marketplace for any unauthorized use of your IP. Enforcement of your IP rights is your responsibility. You may choose to do the following in protecting your IP rights:
Interested in expanding your trademark protection into the European Union? Contact us today!  We’re so proud to be working with Invest Ottawa and Digital Main Street to bring the Future Proof program to our local businesses. The program helps shops, restaurants, skilled trades companies, and home-based artisans increase online sales and build more efficient, sustainable businesses –for free. We’re dedicated to making our neighbourhood the best place to shop, explore, and eat.This is our way of showing our dedication to OUR community. Visit our website today! #LoveOttBiz #DigitalMainStreet208
 Paula Clancy will be attending this year's virtual INTA Leadership Meeting from May 3-7. We are looking forward to seeing friends and colleagues from around the world. Connect with us today!
By Trish Sawhney  Photo by Jezael Melgoza on Unsplash The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
Where is IP registered? The Japan Patent Office (JPO) is the Japanese government agency responsible for granting trademark, patent, utility model and design rights. Trademarks Filing System: Japan follows a "first-to-file" system for trademark rights, which means that whoever registers a trademark first holds the exclusive right to the use of the trademark. Registration Period: In Japan, a trademark is registered for 10 years and can be renewed every 10 years. Non-Use: If you are not regularly using your trademark in the Japanese marketplace, it may be subject to a dispute or challenged for non-use. Cancellation may be requested if the trademark is not used for 3+ consecutive years. Madrid Protocol: As a member of the Madrid Protocol, Japan can be designated in an international application filed via the Madrid System. IP Enforcement There are several ways to enforce your rights against unauthorized use of your IP in Japan:
 We are thrilled to announce that Paula Clancy has been appointed as a DMS Ambassador for Invest Ottawa's Digital Mainstreet Program.The program aims to future-proof businesses by offering a variety of services for digital transformation. To find out more about the program, click here. #iLoveOttBiz
By Sukey Omran  Photo by Julian Yu on Unsplash The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
Where is IP registered? Trademarks, copyrights, patents, and designs are granted under the authority of the Office of the Controller General of Patents, Designs & Trademarks (also known as Intellectual Property India), operating under the Department of Industrial Policy & Promotion. Trademarks
India offers several ways to enforce your rights against unauthorized use, including customs seizures and civil litigation. You may choose to do the following in protecting your IP rights:
Interested in expanding your trademark protection to India? Contact us today! By Nitin Gomber This article was originally published by The Lawyer's Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.  Photo by Jonas Denil on Unsplash In Iancu v. Brunetti 139 S.Ct. 2294 (2019), the Supreme Court of the United States struck down the bar in Lanham Act 15 U.S.C. § 1051 to register immoral or scandalous marks. Since that decision, several marks containing the f word and its variations have been approved for registration by the United States Patent and Trademark Office.
Given the close trading ties between the US and Canada, it is only a matter of time before such brands seek protection in Canada. Therefore, this piece tries to identify verifiable trends and give suggestions on how such brands may successfully prosecute their trademark applications at the Canadian Intellectual Property Office (“CIPO”). The relevant legislation in Canada Canada’s Trademarks Act, R.S.C., 1985, c. T-13 contains a prohibition against registering marks that consist of or so nearly resembles a scandalous, obscene or immoral word or device. In addition, the Trademarks Examination Manual provides that it is the duty of the Registrar to consider not only the general taste of the time but also the susceptibilities of persons, by no means few in number, who still may be regarded as old fashioned. Therefore, the threshold in Canada for registering profanity as an element of a mark is much higher. Trends at CIPO regarding mild profanity The following is a list of marks that contain mild profanity, but were nonetheless approved for registration by CIPO: HOLY CRAP THE WORLD’S MOST AMAZING BREAKFAST CEREAL (Reg. No. TMA839232), MISS NUDE CANADA (Reg. No. TMA871013), FAT BASTARD (Reg. No. TMA660750), DOUBLE BASTARD (Reg. No. TMA904533), BULLSHIT (Reg. No. TMA228302; now expunged for failure to renew), NO FRIGGIN CLUE (Reg. No. TMA643831), FREAKIN’ GOOD (Reg. No. TMA1006734), DAMN GIRL! (Reg. No. TMA1092930). The foregoing list of marks clearly shows that applicants in Canada who use or want to use mild profanity, such as “crap,” “nude,” “bastard,” “bullshit,” “friggin,” “freakin” or “damn” in their marks are at less of a risk of refusal to register. Trends at CIPO regarding not-so-mild profanity The following trends have been observed based on marks, which are either currently registered or were once approved for registration by CIPO: 1. Variation in visual representation only may not help, as long as the mark is a phonetic equivalent of a not-so-mild profanity The marks (App. No. 1778974), as well as GOPHUQYERZELF (App. No. 0642281), were objected to by CIPO on the basis that they contained phonetic equivalents of the f word. Therefore, a simple variation in the visual representation of the mark may not be of much help, as long as the mark is a phonetic equivalent of the f word or another not-so-mild profanity. 2. Masking the not-so-mild profanity with socially acceptable substitutes may help When three trademark applications for FUCK CANCER (App. No. 1453214), (App. No. 1472208), and (App. No. 1472201) were filed by a single applicant, CIPO only approved the last of the lot. On similar lines, the mark (Reg. No. TMA779766) proceeded to registration. In contrast to the foregoing, however, the marks CAN’T F&!K IT UP! (App. No. 1769070) and LATHER THE F@#K UP (App. No. 1607632) were objected to by CIPO. The one way in which these marks are different from those in the above paragraph is that these marks have the first and the last alphabet of the f word spelled out so that the consumer has little or no confusion as to its pronunciation and meaning. On the other hand, the and marks, by only spelling out the first alphabet of the f word leave some room for the onlooker to come to their own conclusion about how to pronounce and/or understand the masked word. Therefore, the key to registration is not to make the f word or another not-so-mild profanity apparent and mask it in a way that onlookers have some leeway in pronouncing and/or understanding the mark. In addition to masking the profanity with stars, dashes, and other devices, there may be another way to succeed: integrating the profanity with ordinary words to arrive at a fanciful mark. The approval of SHIP OUT OF LUCK (Reg. No. TMA1046661), CUMBRELLA (Reg. No. TMA 1870424) and SASSHOLE (App. No. 1895050) evidences this. 3. Providing evidence of pronunciation The mark F.H.U.K. (App. No. 1036021) was also approved for registration by CIPO. While the examiner did raise an objection initially, citing the mark to be immoral/scandalous, they changed their mind after a response from the attorney of record. In the said response, it was submitted: (a) that the mark is not a word and therefore Section 9(1)(j) of the Trademarks Act does not apply, and (b) that the periods separating the alphabets F, H, U, and K are so distinctive that an onlooker is likely to perceive the mark as an acronym or abbreviation only. Therefore, it appears that to increase the likelihood of registration of a mark, evidence of how a mark may be pronounced will help, even if the said mark would make the viewers think of the f word or another not-so-mild profanity nonetheless. 4. Well known slangs of profanity The marks NO FRIGGIN CLUE (Reg. No. TMA643831) and FREAKIN’ GOOD (Reg. No. TMA1006734) were allowed to proceed to registration, whereas EFFIN BURGER (App. No. 1624144) was not. For refusing the latter mark, the examining attorney cited the meaning of the word “effin” from the Urban Dictionary: “a way to say fucking so you won’t get in trouble.” The only problem with the foregoing analysis is that the words “Friggin” and “Freakin” are also defined in the Urban Dictionary in similar terms: “a way to say f*uk when your parents are around” and “to replace the word fucking when you are saying/writing it for a large audience, especially in a business setting,” respectively. While it is not clear why CIPO drew the line where it drew, it is clear that it considers the use of the word “effin” too close to the f word, whereas it lets the words “friggin” and “freakin” slide by. Conclusion In conclusion, CIPO is more conservative in approving the f word and other profanity than the USPTO and therefore, our friends from the south will have to rely on the foregoing strategies to successfully prosecute their marks in Canada.
By Trish Sawhney
Photo by Jorge Aguilar on Unsplash
The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
Where is IP registered? The Mexican Institute of Industrial Property (IMPI) is the decentralized agency responsible for the administration and registration of patents, trademarks, and industrial designs. Trademarks Mexican trademarks may consist of names, letters, numerals, figurative elements, holographic signs, 3-dimensional shapes, sounds, scents, the plurality of operating elements, image elements (including the size, design, colour, layout form, label, packaging and decoration) or any other elements that, when combined, distinguish goods or services in the market. Filing System: Mexico follows a "registration" and "first-to-use" system for trademark rights. This means that any natural person may use a trademark in association with their goods and services without registration, but the right to exclusive use may only be obtained by registration. Registration Period: In Mexico, a trademark is registered for 10 years and can be renewed every 10 years if it continues to be used.
Language: Since Spanish is the official language in Mexico, consider protecting the Spanish translations of your trademark as well. IP Enforcement There are several ways to enforce your rights against unauthorized use of your IP in Mexico:
Mexican courts can award varying remedies in IP disputes, including damages, punitive damages, a temporary or permanent injunction, an order prohibiting the importation, delivery or destruction of all infringed articles or an account of all profits made by the infringer. If you pursue a legal battle and win, there is always a chance that you will receive less money than you could receive through settlement proceedings. Interested in expanding your trademark protection into Mexico? Contact us today.
By Sukey Omran
Photo by Jie on Unsplash
This week’s guide focuses on protecting your trademarks in China.
The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion. Where is IP registered? The China National Intellectual Property Administration, PRC (CNIPA) administers the registration of trademarks as well as the grant of patents, whereas copyright registration is overseen by the Copyright Protection Center of China (CPCC), which falls under the National Copyright Administration of China (NCAC). Trademarks
There are several ways to enforce your rights against unauthorized use of your IP in China, including administrative actions, customs seizures and civil litigation. You may choose to do the following in protecting your IP rights:
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