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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.
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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:
.This article was written in collaboration with IP Osgoode and has been cross-posted on their blog.
You have probably heard of the stubborn and widespread phenomenon known as the “gender wage gap”. It varies between countries and professions; however, one thing remains constant: on average globally, women earn less money than men. What is the Gender Wage Gap? The gender wage gap is a prevalent indicator of women’s economic equality. It refers to a metric that describes the average difference in earnings between men and women, typically calculated by dividing women’s wages by men’s wages. Even when all compensable factors (i.e., experience, education, etc.) are controlled, women are still being paid less than men for no other reason than gender. Why Does the Gender Wage Gap Exist? The gender wage gap is complex and results from multiple factors, such as:
The Gender Wage Gap in the Canadian Legal Profession Despite Canada having more women lawyers than men (53% women vs. 47% men), the legal profession sees some of the highest gender wage gaps. Ironically, lawyers, who are perceived to be flag bearers of social justice and equality, have failed to make significant progress towards closing the gender wage gap in their own profession. Men and women start out in the legal industry in nearly equal numbers; however, the number of women slowly dwindles as you move up the legal career ladder. For example, there are fewer women equity partners in Canadian law firms than men. Even still, women equity partners make 25% less (estimated $200,000 a year) than men despite their equal work and billing hours. Moreover, in-house women lawyers in Canada outnumber men in the legal corporate profession by 2%, yet still make 11% less. Additionally, male in-house lawyers take home performance bonuses nearly double that of women in-house lawyers. Furthermore, Crown Corporations, Government entities, in-house counsel corporations, and not-for-profit companies employ the highest number of women employees, yet women in these organizations face even greater disparities than in private practice. Typically, in the legal profession, compensation is evaluated based on factors that indicate productivity and collections; however, the gender wage gap is bound to widen if women do not receive the opportunity to work on higher-paying files simply due to gender discrimination or being overlooked by their superiors because of the “motherhood penalty.” Women leave the legal profession for a myriad of reasons; however, the most significant reasons all stem from the gender wage gap: the lack of monetary appreciation for their work of equal value, lack of an inclusive environment in the workplace, and lack of transparency in the pay scales policies. Comparing the Gender Wage Gap in Other Jurisdictions Similar disparities are evident in gender wage gap statistics in the legal professions of other jurisdictions. In the United Kingdom, 78% of law firms pay men more than women. The numbers reflect the fact that men are more often considered for higher paid roles and are awarded with higher bonuses. On average, men are paid approximately 20% more than women in every law firm. In the United States, the average yearly income of a male partner in a top-tier law firm is nearly one million dollars, whereas women partners make a third as much. A major barrier is ‘old boy’ networking tactics and business development techniques, which, whether unconsciously or consciously, usually exclude women. Another reason for this disparity is the unequal hourly billing rates of partners ($650 for women and $736 for men). Data shows that regardless of the jurisdiction, women in the legal profession are, regrettably, on average, being paid 20-30% less than men. Strategies for Reducing the Gender Wage Gap The World Economic Forum’s 2020 report has predicted that, at our current rate of progression, it will take an astounding 257 years to close the global gender wage gap! So, what strategies can we implement to accelerate this process? At a general level, the report has identified four helpful strategies:
More specifically, in the legal profession, some effective strategies to narrow the gap are as follows:
When women are recognized for the work they do and are compensated equally to their counterparts in return, everyone stands to gain. Gender equality is a matter of justice and fairness. There is no more compelling reason to accelerate progress toward gender parity than that. This article is co-written by Trish Sawhney, Articling Student at Clancy PC and Aishwerya Kansal, IPilogue Contributor and IP Innovation Clinic Fellow. Trish completed her law degree at the University of Birmingham in England. She also pursued a Bachelor of Music with an Honours in Music History, and a Bachelor of Arts with a specialization in Business Administrative Studies from Western University. Aishwerya has a Master’s in Law in International Business Laws from Osgoode Hall Law School and is an Internationally Trained Lawyer with experience in Intellectual Property and Brand Protection. 
Photo by Joey Csunyo on Unsplash
This week’s guide focuses on protecting your trademarks in Australia.
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? IP Australia (Australia's IP office) is the Australian government agency responsible for granting patents, trademarks, designs and plant breeder's rights. Trademarks Filing System: Australia follows a "first-to-use" system for trademark rights; whoever can prove significant use of a trademark first in the Australian marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with IP Australia, as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered. Registration Period: In Australia, a trademark is registered for 10 years and may be renewed every 10 years. Non-Use: If you are not regularly using your trademark in the Australian marketplace, it may be subject to a dispute or challenged for non-use. Madrid Protocol: As a member of the Madrid Protocol, Australia can be designated in an international application filed via the Madrid System. IP Enforcement There are numerous ways to enforce your rights against unauthorized use of your IP in Australia: · The Australian government Department of Home Affairs helps prevent counterfeit and pirated goods from entering Australia. Owners of IP rights can file a customs notice known as a Notice of Objection, which enables the Department of Home Affairs to seize and detain imported goods that violate Australian IP rights. · IP owners have many options when they suspect infringement of their IP rights, such as sending a letter of demand, which is often the first step taken. In cases where a letter of demand is not sufficient, it may be best to seek legal action. · Australia also provides the option of ADR, which encompasses mediation, arbitration, and expert determination. ADR processes are generally more informal, less adversarial, cheaper and settlement focused. They can be used before or as an alternative to going to court. Interested in expanding your trademark protection into Australia? Contact us today.
By Sukey Omran
Photo by Alice Yamamura on Unsplash
For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.
This week’s guide focuses on protecting your trademarks in Brazil. Where is IP registered? Brazil’s National Institute of Industrial Property (INPI) is the agency responsible for the administration and registration of patents, trademarks, geographical indications and industrial designs. Trademarks
Enforcement is administered on a country-by-country basis. Therefore, you must monitor the Brazilian 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:
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