A competitor to popular children’s animated TV series Peppa Pig has come to the playground—a tapir with the mark “TOBBIA”.
The show Peppa Pig is known for its 2-dimensional drawings and centers around Peppa, a young pig, her family and friends. Its creation over a decade ago has become an icon for young children around the world.
In April 2015, Entertainment One UK Ltd and Astley Baker Davies, owners of the Peppa Pig Mark filed an application for a declaration of invalidity against Xianhao Pan’s trademark for “TOBBIA”. Both marks are associated with Class 25 "clothing".
The case was originally heard by the EUIPO Cancellation Division and, to much surprise, the court held the marks were not confusingly similar. The decision was appealed to the EUIPO First Board of Appeal. It was here that the marks were reviewed for similarities and differences, visually, aurally and conceptually.
In regards to the visual similarities, the Appeal Board found the shape of the head and snout to be almost identical as well as the ears, cheeks and eyes. In addition, the shape of the bodies was also found to be very similar.
The elements of the word were also considered. The Board noted that aurally, the double letter in the middle of both words “Peppa” and “Tobbia” would be similar when spoken. Xianhao Pan's argument that the animal depicted in his mark was a tapir, not a pig, was dismissed by the board.
The Appeal Board declared the “TOBBIA” mark invalid in the EU for all goods.
For more information about EU trademarks, please contact us.
Last month, singer and actress Ariana Grande filed two new trademark applications for ARIANA GRANDE THANK YOU, NEXT and thank u, next in the United States. The marks relate to her hit single of the same name.
ARIANA GRANDE THANK YOU, NEXT™ is for use with a line of beauty products including perfumes, body lotions, bath gels and body mists, whereas thank u next™ is for use with clothing.
The artist has already successfully registered the marks ARI BY ARIANA GRANDE and ARIANA GRANDE before the USPTO, as well as having pending applications for ARIANA ARMY, BE GRANDE, ONE LOVE MANCHESTER, EAU FOR ALL, ARIANA GRANDE SWEET LIKE CANDY.
Ariana is one of many artists seeking trademark protection for their brands. Artist Taylor Swift famously trademarked several of her lyrics including “This Sick Beat” and “Nice to Meet You, Where You Been?” Similarly, Hailey Bieber has filed an application for the trademark “Bieber Beauty” with future plans to launch a beauty and cosmetics line.
Yet, you don’t need to be a celeb to recognize and take advantage of the power of branding. If you’re looking to register your next trademark, please contact us.
On April 15, 2019, the U.S. Supreme Court considered whether the mark “FUCT” could be registered on the U.S. Trademarks Registry in Iancu v. Brunetti. (Apparently, the judges struggled with how to refer to the brand during the hearing, drawing a few chuckles from spectators).
See oral arguments on C-SPAN here.
The case was brought by Los Angeles graffiti artist, Erik Brunetti, owner of FUCT fashion line, after the USPTO rejected his application on the basis that the mark was scandalous. The term “FUCT,” an acronym for the paradox “Friends U Can’t Trust”, challenges federal law that states “immoral or scandalous matter” must be refused trademark protection. Brunetti argued that his first amendment rights under the U.S. Constitution were violated. Indeed, he has launched a supplementary brand: Fuct is free speech. Free speech is Fuct™.
In 2017, the US Supreme Court unanimously invalidated a related provision of federal law on the basis that it violated the Free Speech Clause of the First Amendment. See Matal v. Tam. In that case, an Asian American rock band had been refused registration of their mark THE SLANTS on the basis that it was a disparaging mark that was offensive to Asians. The Lanham Act’s anti-disparagement provision was deemed by the U.S. Supreme Court to be unconstitutional, and the band was permitted to register THE SLANTS.
The Supreme Court is due for a decision this summer, but till then, we hope the result isn’t “FUCT”.
For more information on what can (and cannot!) be trademarked, please contact us.
The phrase “Google™ it” is not only apt for answering our questions, sending our e-mails and playing our music, but it may also change our shopping experience as well as the future of digital shopping.
A Canadian application for the trademark GOOGLE SHOPPING™ was filed earlier this year. Not surprisingly, the Google Shopping platform is now available in Canada.
Google Shopping is not new – it was originally launched under the name “Froogle” back in 2002. Unfortunately, this fun take on the word “frugal” didn’t last (perhaps because “frugal” and “shopping” don’t mix well?)
Nevertheless, this revamped iteration includes functionality that helps consumers conduct real-time price comparisons, as well as permitting vendors to vie for advertising space and Google AdWords. The platform also features Google’s robust search functionality and web crawler that are used to index product data. The application integrates with the Google Pixel™ phone to allow users to shop online using augmented reality.
With Google’s plans for an enhanced on-line shopping experience, we are curious to see what’s “in store” for us.
For more information on branding and the registration of trademarks, please contact us.
In the recent case of Hilton Worldwide Holdings LLP v Miller Thomson 2018 FC 895, the Federal Court of Canada affirmed that the provision of “hotel services” does not require a physical presence in Canada for the purposes of demonstrating “use” of a trademark.
In Hilton Worldwide, the mark of issue was WALDORF-ASTORIA. The Court overturned the Registrar’s decision to expunge the mark in association with “hotel services” where the owner did not have a “bricks-and-mortar” location in Canada.
Instead, the owner had an interactive website which offered worldwide registration, discounts to customers who pre-paid for rooms as well as loyalty programs. The Federal Court found that services such as registration and loyalty programs did constitute providing “hotel services” in Canada.
This case follows the recent Dollar General case maintaining its broad interpretation of “use” with services.
For more information on the Canadian trademark registration process please contact us.
Photo by Crew on Unsplash
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