By Sukey Omran

Bill C-86 has introduced bad faith as a new ground of opposition.  In other words, an opponent may now oppose a trademark application on the basis that it was filed in bad faith.
 
Prior to the amendments to the Trademarks Act, Section 30 (i) required an applicant to declare that it was satisfied of its entitlement to use the trademark in Canada. This provision was sometimes used to attack applications filed in bad faith since it was argued that an applicant could not be satisfied that it was entitled to use the mark in Canada if it was filed in bad faith. 
 
The following are examples of where bad faith may be found:

1. Where an application has been filed by a licensee/distributor without the authorizatio of the trademark owner; 
2. Where one joint venture party files an application that was intended to be owned by the joint venture; 
3. Where an applicant files multiple applications for well-known marks for unrelated goods and services (i.e. trademark squatting); and
4. Where there has been a violation of another statute or regulatory regime, such as a copyright infringement.

We know you have nothing but the best intentions in mind, but where in doubt, feel free to contact us so we can help you avoid any allegation of bad faith!

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 Alina Cartan

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.
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To learn more about WTR 1000, click here.
To view the official rankings, click here.
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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.
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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.

By Alina Cartan 

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.


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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.

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.

Three new types of cannabis products have been officially legalized in Canada: Edibles, extracts, and topical lotions.

The gold rush for filing cannabis-related trademarks is well underway. Cannabis companies are actively securing whatever trademarks they can in anticipation of the lucrative new market.

There are, however, tight restrictions in place regarding packaging, how the trademarks can be used, and how the products may be advertised.

To learn more about these and any other restrictions, contact us.

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.

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 hello@clancypc.com.

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.
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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.
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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”. 
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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. 
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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. 
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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.
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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.

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.
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For more information on the Canadian trademark registration process please contact Paula Clancy.