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.

By Sukey Omran

The Quaker Oats Company took an important step this year in deciding to overhaul its AUNT JEMIMA brand. Kristin Kroeplf of Quaker Foods stated: "We recognize Aunt Jemima's origins are based on a racial stereotype. While work has been done over the years to update the brand in a manner that intended to be appropriate and respectful, we realize those changes are not enough."
 
The AUNT JEMIMA brand used the "mammy" stereotype, namely the stereotype of an African American woman who is happy to be enslaved. The Aunt Jemima character was first created in the ministrel show song “Old Aunt Jemima”. Minstrel shows were known for skits and musical performances that involved entertainers in blackface. The original owner of the AUNT JEMIMA brand based the brand on the character in these minstrel shows. After acquiring the AUNT JEMIMA brand, the Quaker Oats Company moved away from the stereotypical mammy caricature, and updated the image of Aunt Jemima to that of a modern African American woman.  However, the name AUNT JEMIMA did not change, thereby perpetuating the link to the brand's racialized history.
 
What have we learned from this?  Brand owners should constantly re-evaluate their trademarks. If a trademark is imbued with a history or meaning that does not align with the brand, then a prudent course of action is to update or revamp the mark. Since marks may be renewed in perpetuity, and decades may pass between registration and subsequent renewals, brand owners should always include a re-evaluation step to ensure the brand is appropriate and that it resonates with consumers. 

By Trish Sawney

With the increase in homemade masks to help prevent the spread of COVID-19, it is important to understand what licensed fabric is and what one can do with it.

Licensed fabric is fabric on which there is a printed image that is protected by a registered trademark or copyright. Fabric that is produced under license requires an agreement between the fabric manufacturers and the copyright or trademark owner, to permit the reproduction of the owner’s design, characters, logo, etc., onto the  fabric.

Licensed fabric typically contains a notice printed on the selvage that the fabric is ‘for individual use only’ or that it is ‘not for commercial use,’ or both. The former means that you can use the fabric to make products for yourself; however, you cannot distribute them, even if you are doing so for free. The latter means you cannot buy the licensed fabric, create your product, and then sell it for profit. 

These notices are important and legally binding, yet often overlooked.  Masks created from licensed fabric and then sold online most often constitutes an unauthorized use of the fabric, and could lead to penalties such as having your online listing taken down, to an interim, interlocutory or permanent injunction, damages, and even legal costs. 

Therefore, although making homemade masks is laudable, be careful when using licensed fabrics as you will need authorization to distribute or selling these masks. 

For more information on licensing IP, please contact us.

By Sukey Omran

What inspires a trademark? Everyone has their story… but none quite like NBA player, Lou Williams. Williams has filed a U.S. trademark application for LEMON PEPPER LOU for use in association with various clothing articles. The trademark application, in Williams’ words, came out of the desire to 'own a joke'.
 
In order to resume the NBA season, players were required to abide by strict rules to protect the safety of their quarantine bubble. On a pre-approved trip to attend a friend’s funeral, Williams stopped in at an Atlanta strip club, famous for its delicious lemon pepper wings. When the media caught wind of William’s pit stop, he was plagued with the name “Lemon Pepper Lou”.
 
Williams' story goes to show that brands can originate from the most unlikely stories. Williams turned a joke into a business idea.
 
Contact us at Clancy PC to tell us your trademark origin story. 

By Trish Sawhney

In March 2019, Nike Inc. filed a trademark application with UPSTO for the term FOOTWARE. You may assume I have made a mistake in the spelling of FOOTWARE but I assure you, there was no typo on my part: the athletic company is hoping to trademark the term FOOTWARE in relation to hardware and software products used on or within footwear products. Nike hopes to use the brand FOOTWARE to market its smart footwear.

Understandably, many rival companies have expressed concern about this potential registration. Puma SE not only filed a “letter of protest” with the USPTO but has also initiated opposition proceedings against Nike’s application, asserting that the term FOOTWARE is ‘merely descriptive’ of technology-based footwear and therefore is not registrable. 

In its Notice of Opposition, Puma argues that Nike is not the only company that “combines footwear, hardware, and/or software technologies,” and so, “just as consumers understand that spyware describes software combined with spying, they will also understand that ‘footware’ describes software combined with foot products, including footwear.”

We will be closely monitoring this case and providing updates. If Nike can register its FOOTWARE trademark, it could be the beginning of a remarkable branding scheme.  

Its been an exciting week at Clancy PC, with the addition of not one but two new articling students! Trish Sawhney majored in both business and music at the University of Western Ontario, and came in top of her class in law school at the University of Birmingham. Welcome Trish!

We want to acknowledge the huge generosity of Sandra Harvey and Enviromasks.ca who donated over 300 masks to the Childrens' Aid Foundation of Ottawa.  Thanks so much for supporting the kids in our community.  #hero 

It would have been hard to predict back in March 2020 that all CIPO deadlines would be pushed forward 3 months until June 2020, but here we are.  CIPO has announced a further extension until June 15, 2020 of all deadline for IP matters that fall on or before June 12, 2020. 

These extensions are of course necessary due to the hardships caused by Covid-19, but they may also create hardships for IP owners. For example, CIPO's system recently inadvertently issued Registration Fee Notices which permitted applicants to register their marks even though the opposition period had technically not yet expired due to the deadline extensions. As a result, several alarmed prospective opponents had to contact CIPO to request the retraction of these registrations/registration fee notices so that the full opposition period would be preserved.

​Despite this additional extension of time, CIPO is encouraging applicants to proceed "business as usual" where possible with responses to Office Actions, the submission of evidence, and so forth. 

We will keep you updated of all further extension periods.  If you need information on how these extension period affect you IP, please contact us.

​

CIPO has once again announced an extension of all deadlines on IP matters under the Patent Act, Trademarks Act and Industrial Design Act as a result of the COVID-19 pandemic. All deadlines between March 16 and May 29, 2020 will now fall on Monday, June 1, 2020. Further extensions may be possible depending on the circumstances as the Office has indicated a willingness to consider the pandemic a sufficient reason to justify extensions of time. To view CIPO's announcement click here.

Please contact us if you need any assistance with your IP matters. 

By Alina Cartan

Armando Christian Pérez, better known as Pitbull, has successfully registered his distinct “EEEEEYOOOO” sound as a trademark before the USPTO.  This sound has featured prominently in Pitbull's pop songs since as early as 2002.

This sensory mark (U.S. Registration Number: 5877076) is described as a sound consisting of a man yelling "EEEEEEEYOOOOOO" in falsetto with "E" drawn out followed by a "U" sound.  

Non-traditional marks are registrable in Canada since June 2019. For more information regarding trademark registration, for both traditional and non-traditional marks such as sound marks, please contact us.

Listen to Scott Shayko of EnvisionSQ, featured as part of IPIC's "Own IT" campaign, discuss the value of protecting your IP rights.

There's no better time than now to #ownyourIP.  Please contact us for further information on IP protection.

Lithion Recycling turns to IP to protect the innovative technique they have developed to recycle batteries and expand their global reach. #ownyourIP #votreIPcestavous @LI_Recycling @IPIC

By Ashley Moniz

​The European Court of Justice (ECJ) recently found that Amazon, as an online retail outlet, was not liable for trademark infringement after unwittingly storing third-party goods that were infringing.The German unit of Coty, an American cosmetics company, brought the action against Amazon when a third-party seller advertised grey market DAVIDOFF cologne for sale.

The third-party vendor used Amazon Marketplace under the "Fulfilled by Amazon" scheme to stock and sell their goods. Under this scheme, vendors pay a fee to use Amazon’s warehouses and logistics. Even though Amazon owns this platform, the ECJ found that Amazon did not itself sell the infringing goods but merely stored them, and therefore was not liable for trademark infringement.



The ECJ found that the storage of goods without knowledge that the goods infringe trademark rights does qualify as 'trademark use'.  

For more information about protecting your intellectual property rights (and preventing the infringement of third party rights!) in international e-commerce channels, please contact us.

In the recent Canadian case Ontario (Energy) v Quality Program Services Inc, the Federal Court held that governmental agencies using official marks could be liable for infringement of a prior trademark owner’s rights. 

Official Marks are unique to Canada.  They are a type of mark that may only be owned by a Canadian public authority such as government agencies. Once public notice is given of an Official Mark, use of the Official Mark by third parties is prohibited under the Act. Official Marks cannot be opposed by third parties or cancelled for non-use.  T

The Federal Court has now clarified that a public authority that uses a mark confusing with a registered trademark does so at its peril as a finding of infringement may be made.  This is an interesting limitation on the broad scope of protection normally thought to apply to Official Marks.


For more information concerning Official Marks, trademark protection (and clearance searches to avoid infringement claims!) please contact us.