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:
Do you have a question about the use requirements for your trademark? Schedule an appointment with us.
We are delighted to announce that Clancy PC’s Managing Partner, Paula Clancy, has been ranked among the world’s leading trademark practitioners by the World Trademark Reporter’s Top 1000 (“WTR 1000”) for the 10th consecutive year.
The WTR 1000 is a publication that ranks the top firms and individuals that are deemed outstanding in the practice of Trademark Law. In order to do so, the World’s Trademark Reporter undertakes an exhaustive four-month qualitative research project in more than 80 jurisdictions.
To learn more about WTR 1000, click here.
To view the official rankings, click here.
By Ashley Moniz
Chooseco LLC, the owner of the mark and creators of the Choose Your Own Adventure children’s book series, has brought an action against Netflix for their use of their registered word mark, “Choose Your Own Adventure”. Netflix used this mark, as well as its concept, as the premise for their interactive film, Black Mirror: Bandersnatch. Like the plaintiff’s book series, the film requires viewers to make decisions for the characters based on two given options. Unlike the series, and in classic Black Mirror style, all of the viewers’ choices result in either the ultimate demise or failure of the main character.
In its defence, Netflix argues that the mark should be cancelled because numerous American storytellers are using a "Choose Your Own Adventure" model. Netflix claims that this concept has become a category of product, and that its use of the phrase “Choose Your Own Adventure” is unlikely to cause confusion with Chooseco LLC’s brand because the mark’s use has become “generic”.
Earlier last month, Vermont federal state Judge William Sessions dismissed Netflix’s motion to dismiss the lawsuit. Netflix brought the motion on the basis of their First Amendment right to freedom of expression; however, Judge Sessions cited, from the movie, at least one specific reference to the structure of the books that mirrored both the protagonist’s video game in development and the film itself. We will continue to monitor this case for further developments.
For more information on how to protect your trademarks from becoming generic, contact us.
Last week, the United States Patent and Trademark Office (USPTO) published a new examination guide entitled “Mandatory Electronic Filing and Specimen Requirements”. As of February 15, 2020, all applicants must provide and maintain a valid email address, even if they have appointed US counsel to act as agent before the USPTO. Furthermore, the USPTO will now only communicate by email. But beware: email addresses provided to the USPTO will now be part of the public record, and will likely be viewable on the Trademark Status and Document Retrieval (TSDR) platform. Concerns have already been raised about the potential misuse of trademark owners’ email addresses, particularly in light of the growing number of scam letters being sent to unsuspecting trademark owners.
If required to provide an email address to the USPTO, we are recommending to clients to create a generic account for this specific purpose, i.e. uspto@[enterdomain].com to reduce the risk of spam email.
For more information on protection your marks outside of Canada, please contact us.
On January 31st, 2020, the United Kingdom formally withdrew from the European Union. The good news for owners of EU trademarks and designs is that no changes will be made to trademark and design protection in the UK. Specifically, until December 31st, 2020, UK trademarks will continue to be protected by European Union trademark (‘EUTM’) registrations, and trademark applications filed in the European Union will continue to include the United Kingdom.
Once the transition period ends on or after January 1st, 2021, registered EUTMs will automatically convert to UK registrations and will continue to be protected in the United Kingdom as if they have been filed and prosecuted under UK law. However, trademarks applications which are pending in the European Union will not be granted automatic protection in the United Kingdom. Although EUTM priority filing dates will be maintained, these trademark applications will need to be converted to UK applications within nine months of the end of the transition period.
More information regarding trademark protection and BREXIT can be found at www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks#stay-up-to-date
For more information on registering and protecting your trademark internationally, contact us.
Written by Alina Cartan.
Since December 11th, 2019, Lucasfilm Ltd. LLC has filed over twenty-eight new US trademark applications, including applications for THE MANDALORIAN THE CHILD, and THE CHILD covering toys, food, jewelry, images, mobile apps, printed matter, bags, clothing, bakeware and, believe it or not, cosmetics.
“The Child”, otherwise known as “Baby Yoda”, has captivated millions following his appearance on the new Star Wars series “The Mandalorian”.
Lucasfilm filed these trademark applications after the series premiere. According to Disney CEO, Bob Iger, this was necessary to prevent any possible leaks of the adorable character. However, the late applications opened the door to a multitude of unauthorized sales using THE CHILD mark, which may have cost Disney over $3 million in lost revenue.
Registering a trademark takes time but offers you significant legal protection and benefits. For more information on registering your trademark, contact us.
Written by Ashley Moniz
On January 17, 2020, the Canadian Intellectual Property Office (CIPO) published a Practice Notice limiting an applicant's time to respond to an examiner's office action or to request for a classification of goods and services.
As before, applicants must respond within six months from the issuance of an office action. Where an applicant could previously receive one six-month extension, this extension is no longer available unless the applicant can prove that exceptional circumstances exist which have prevented the applicant from responding within the initial six-month term. If the applicant neither meets the deadline nor secures an extension, the application will be considered in default.
When a request for clarification is issued, the applicant also has six months to respond. However, if CIPO does not receive a response within six months, they will issue a notice of default providing an additional two months to respond. As above, CIPO will only grant a further six-month extension under exceptional circumstances. This process also differs because, as this is a statutory deadline, the extension request is subject to a $125 fee.
CIPO has included a non-exhaustive list of events which constitute an "exceptional circumstance". Among these exceptions are circumstances beyond the applicant's control, associated proceedings related to the mark, and additional time needed to gather evidence in response to a substantive objection to the mark's registrability. You can read the full list of objections in the CIPO Practice Notice here.
For more information on registering and protecting your trademark, contact us.
Paula Clancy is attending INTA’s 2019 Leadership Meeting in Austin, Texas. This is her last year as Chair of the Public Information Committee, though she is excited to take on a new role in the “Brands for a Better Society” Committee for the 2020-2021 term.
We're pleased to announce that Paula Clancy will be a member of the panel session "Genuine Use of Trademarks" at the AIPPI World Congress in London on September 17.
For more information and to register for the panel, visit here.
It turns out that “Taco Tuesday” is a trademark owned by a fast food chain from Wyoming, Taco John's. The mark, filed on March 23, 1989 and registered with the U.S. Patent and Trademarks Office (USPTO) under registration number 1,572,589, covers “restaurant services” in international class 42. The only exception in the country-wide registration is the state of New Jersey, where the same mark owned by a different restaurant preceded it.
This registration has caused an online stir after Freedom’s Edge Brewing Co., located five blocks from the taco chain’s national headquarters, received a cease and desist letter. The warning was for a sign advertising an unaffiliated food truck that parks outside of the establishment weekly.
The Wyoming brewing company posted on their Facebook July 31, the day after receiving the letter, “Just to clear things up, we have nothing against Taco John's, but do find it comical that some person in their corporate office would choose to send a cease and desist to a brewery that doesn’t sell or profit from the sales of tacos.”
While the company says the term is part of the company’s “DNA,” others argue that the slogan is no longer distinctive of Taco John's due to its widespread usage. "Taco Tuesday" has its own Wikipedia entry mentioning its widespread usage in restaurants, LeBron James is in headlines celebrating it, not to mention references from pop culture such as the Simpsons.
In other words, the Taco Tuesday mark may have suffered "genericide". For more information on "genericide" and how to avoid it, please visit INTA's guide here.
After cancelling the BIG MAC trademark in the EU, Irish fast food chain Supermac's has continued its offensive against McDonald's, this time petitioning to cancel its MC trademark in the EU. In another blow to the multinational fast-food giant, the EUIPO has partially cancelled the MC mark on the basis of a lack of use as a standalone mark as it is exclusively used as a prefix, only retaining chicken nuggets and some sandwiches.
While McDonald's will continue to maintain its registrations for products containing the "Mc" prefix, such as "McNuggets" and "McFlurry", the EUIPO determined that there is no use of the MC mark by itself. The question, then, is if the addition of these other elements altered the distinctiveness of the mark. The EUIPO Cancellation Division determined that, if paired with a descriptive element such as a "Muffin" (ie. as in "McMuffin"), the additional element does not add to the distinctiveness of the mark.
McDonald's will most certainly appeal the decision; however, the partial cancellation of the MC trademark is a reminder that giants aren't immune to challenges by the "little guy".
For further information on protecting your brand, please contact us.
Paula Clancy is honored to have been a guest on the Ottawa Entrepreneurs podcast with Patrick Whalen. Ottawa Entrepreneurs is a podcast for business owners in which entrepreneurs share valuable lessons learned and ‘tips from the trenches’. Each episode is hosted by Patrick Whalen, founder of Extension Marketing. For more information visit www.extensionmarketing.com.
Thank you Pat for this opportunity and thank you to the listeners for tuning in! If you need any assistance with IP protection in Canada or around the world, please contact us at email@example.com.
By Nathalie Siah.
The recent decision of Roots Corporation v. YM Inc. (Sales) 2019 FC 16 has shed some light on the consequences of material misstatements made in the registration of a trademark.
In this case, the trademark CABIN FEVER and Design was registered in 2017; however, the court found that a material misstatement was made in the Declaration of Use of the application – specifically, its description of “Men’s, women’s and children’s casual, dress, business and athletic clothing; fashion accessories, namely rings, earrings, necklaces, bracelets, scarves, belts, socks, handbags, sunglasses; cold weather accessories, namely mittens, gloves, scarves, hats, toques; footwear, namely shoes, boots, slippers and sandals.”
Nevertheless, the court held that the registration could be amended to delete the goods/services in question, without affecting the registration as a whole. In other words, the court refrained from finding that the registration was void ab initio.
Major changes to the Act coming in June 2019 may lower the risk of material misstatements since applicants will no longer be required to file Declaration attesting to the use of the mark to secure registration.
For more information on the Canadian trademark registration process please contact Paula Clancy.
By Nathalie Siah.
Brexit is fast approaching on March 29, 2019. What will the impact be on IP rights?
Below is a summary of the key areas:
For trademarks, the effects will be minimal. The UK government has confirmed that in the event of a “No Deal Brexit”, equivalent rights will be granted in the UK that correspond to the EUTM registration. These rights will be created automatically and without cost to the owner. Registration certificates will not be issued by the UKIPO, but the details of these marks will be available on the database. For “pending” EUTMs, the applicant will have 9 months to apply for the same protections in the UK while retaining the priority date of the EU application. For pending applications, UK application fees will apply. The mark and the specification must be identical to, or at a minimum, contained within, the EUTM application.
There will be no change to the way patents are filed and prosecuted. The UK will remain a member of the European patent system, governed by the European Patent Convention (EPC) –completely separate from the EU. There are many non-EU members such as Iceland, Switzerland and Norway that are also part of the EPC. The European Patent Office (EPO) will continue to validate European patents in the UK and patent prosecution will follow suit.
Copyright has existed for centuries, prior to the formation of the EU. The UK and EU member states are part of several international treaties on copyright which do not depend on UK’s membership in the EU. Therefore, protection of copyright will be largely unchanged.
What may change
As the first country to leave the EU, the UK has the opportunity to deviate from established EU law. The threshold for copyright protection for example, may be of interest. Currently, the threshold in the EU for copyright is a “uniform test of originality, based on intellectual creation” established by the Infopaq case. However, prior to joining the EU, the originality threshold was far lower and the result of their “labour, skill or effort”. The UK may be inclined to revert back to this lower threshold once the UK leaves the EU if they so choose. Similar trends may be seen in patent and trademark jurisprudence emanating from the UK post-Brexit.
For more information on the effects of Brexit for Canadian IP owners, please contact Paula Clancy.
By Nathalie Siah.
The IP Canada Report was published on January 22, 2019. This annual publication contains the most recent statistics and trends in intellectual property (IP) usage by Canadians and by foreign entities in Canada.
Here are some of the key statistics worth noting:
By Paula Clancy
On June 17, 2019 Canada's trademark laws will change dramatically. Some of the critical changes include:
Applicants who have pending "allowed" trademark applications therefore have an option: namely, to register prior to June 2019 or to wait. Let's review the pros and cons: one of the primary reasons to wait would be to take advantage of the fact that the requirement to file a Declaration of Use will be eliminated. This means that if "Proposed Use" was claimed in respect of any goods or services, and if use has not yet commenced in Canada, the mark may nonetheless proceed to registration post-June 2019. In other words, the applicant will not be required to file a Declaration of Use or delete goods and services that are not currently in use in Canada to proceed to registration.
The advantage of proceeding to registration prior to June 2019 is that the applicant will benefit from a flat registration fee of $200 (as opposed to a per class registration fee), and the applicant will receive a 15 year registration period. Of course, this may require the deletion of goods and services for which Proposed Use was claimed, if use of the mark has not yet commenced with respect to same.
Please contact Paula Clancy if you would like further information about the legislative changes coming in June 2019.
With the New Year just passed, people are reflecting on their personal as well as professional goals for 2019 and making a list of what they are hoping to achieve. This year, we are encouraging clients to reflect on their Intellectual Property (IP) assets. Here are Clancy PC’s recommendations:
Article by Nathalie Siah