Hayabusa CEO, Ken Clement, discusses the importance of having an IP strategy and securing IP protection in the fight against counterfeits.  A good defence is always the best offence — even outside the ring.

21 Savage recently took to Twitter to express his frustration over individuals profiting from the use of the word “Yessirskiii”, a word he claims to have coined in his 2020 song Yessirskiii. According to 21 Savage, authorship of this word should entitle him to 50 percent of the profits from every song that uses the Yessirskiii hook.
 
Although 21 Savage may have coined the word Yessirskiii, and while he may very well have copyright in his “Yessirskiii” song, to enforce ownership rights over the word Yessirskiii and to claim infringement, he would need to pursue a trademark registration.
 
If you have questions about ownership or how trademark protection can benefit you, please contact us at Clancy PC!

By Trish Sawhney

Samsung Displays, the display making affiliate of Samsung Electronics, has filed trademark applications in the United States, Korea, Australia, and Europe for QNED. QNED is an acronym for "quantum nano-emitting diode" which is a new type of display technology.

Samsung Display’s QNED application comes just weeks after LG Electronics also filed trademark applications for QNED. The two Korean tech companies have been competing globally in the electronic market for years. It will be interesting to see which company, if any, emerges victorious in this trademark battle. There may be an argument that QNED lacks distinctiveness or that it is descriptive of quantum nano-emitting diode display technology, which means that neither company may be able to monopolize this term.

For further information about what potential pitfalls you may encounter in the trademark registration process, please contact us. 

Is there a nicer surprise than receiving fresh flowers from a client?  A big, heartfelt thank you to our friends at Liuming International for the gorgeous flowers.  We are happy to celebrate the Harvest Moon Festival with you and we thank you so very much for the beautiful gift. We are so grateful for our clients in Canada and around the world who permit us to do what we absolutely LOVE to do each and every day.  

By Paula Clancy

Cannabis trademark owners are not able to obtain Federal Trademark Registrations in the U.S. This position was affirmed by the Trademark Trial and Appeal Board ("TTAB") last month in In Re NL LLC, wherein the Board held that for a trademark to meet the "use in commerce" requirement, the use must be "lawful". 

Although cannabis and CBD products have been legalized in several U.S. states, the Federal Food, Drug & Cosmetics Act (FDCA) and the Controlled Substances Act (CSA) prohibit the sale of products containing cannabis.

The Applicant argued that under Colorado state law, its use was indeed "lawful", however the TTAB rejected this argument. “The fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law”. Under the Supremacy Clause of the U.S. Constitution, in cases where  there is conflict between federal and state law, federal law prevails. 

This is of course disappointing to cannabis brand owners who are excluded from the benefit of Federal Trademark Registration.  The upcoming U.S. election may provide some solace given that Biden/Harris have vowed to legalize cannabis if they win.

We will continue to track these developments as cannabis is a growing sector in Canada, and many Canadian companies are anxiously awaiting the decriminalization of cannabis in the U.S.

Please contact us for further information on protecting your brands worldwide.

By Paula Clancy

The Government of Ontario has introduced legislation to modernize its Business Corporations Act. Pursuant to Bill 213, the Canadian residency requirements for the board of directors of Ontario corporations would be eliminated.  Currently the Ontario BCA requires that at least 25% of the directors be Canadian residents.  Consequently, many foreign companies opt to incorporate in other jurisdictions offering more flexibility. Bill 213 further proposes to lower the threshold for resolutions adopted by written resolution (as opposed to by vote at a meeting of shareholders) from "unanimous" to "majority" approval. 

​These are both welcome changes as they reduce the administrative burden, and add flexibility to Ontario corporations.

By Sukey Omran

In the recent decision of Miller Thomson LLP v Hilton Worldwide Holding LLP, the Federal Court of Appeal provided more clarity on what constitutes use of a mark in relation to "hotel services" in Canada. 
 
The owner of the WALDORF ASTORIA brand, Hilton Worldwide Holding LLP, has been trying to defend its registration from a non-use cancellation proceeding.  The requesting party argued that the WALDORF ASTORIA brand was not in use in Canada since there is no 'bricks and mortar' hotel that is available in Canada.

Hilton maintained that the mark was indeed in use in Canada since Canadian consumers could access the online reservation, booking, and payment services to book at the chain's other WALDORF ASTORIA hotels around the world.  This would fall within a broad interpretation of "hotel services".  
 
The Federal Court of Appeal made three important assessments:

1. The ordinary commercial meaning of hotel services has changed overtime to include online services that may seem ancillary, such as reservations and bookings;
2. Registered trademarks cannot be faulted for using pre-approved terms that were found in the Goods and Services Manual at their time of registration;
3. There must be a sufficient degree of interactivity between the trademark owner and the Canadian consumer when offering services over the internet (viewing a website it not enough).

The use requirement for registered marks is important because it permits third parties to remove 'deadwood' (i.e. marks that are no longer in use) from the Canadian Trademarks Register. The use requirement balances the monopolistic rights that brand owners obtain through trademark registration, since there is no rationale to protect and grant such a broad scope of protection to marks that are no longer in use in the Canadian marketplace. 
 
Do you have a question about the use requirements for your trademark? Schedule an appointment with us.