Paula Clancy has been elected to serve on the Intellectual Property Institute of Canada’s Council for the 2018-2019 term. The appointment was made at the IPIC AGM in Vancouver last week. Paula is honoured to be given this opportunity and looks forward to serving IPIC and furthering its strategic goals.
Paula Clancy is attending WIPO’s Committee on Development of Intellectual Property (CDIP) meeting in Geneva. She was invited to participate on behalf of IPIC.
E-commerce leader Amazon.com is expanding its brand registry program to include measures aimed at combating the sale of counterfeit goods on its website. The expanded anti-counterfeiting program will allow rights holders to register their logos and intellectual property with Amazon, with the aim of expediting the removal of any listings and seller accounts that are flagged as counterfeit.
Registrants enrolled in the program (who must have a registered trademark in order to participate) have the ability to manage their intellectual property on Amazon’s marketplace via access to the ‘Report a Violation’ tool and the ‘Brand Support’ tool. An Amazon user account is required.
The ‘Report a Violation’ tool allows registrants to search the site using a range of identifiers (such as ASIN, key search words, brand name, jpeg image, and brand logo) to search for copyright or trademark infringement listings and report a particular listing, up to a maximum of 300 listings. With the ‘Brand Support’ tool, registrants are able to report any inauthentic product concerns, including actual inauthentic product being sold, misleading product descriptions, and the like. This tool also gives registrants access to a case log to track submissions and the status of open cases.
Amazon’s program is currently undergoing a beta registration process with top selling brands and is expected to launch worldwide in the coming weeks on a self-service registration basis through Amazon’s website.
For further information, please contact Paula Clancy.
The Canada 150 logo is being made available for use by any organization/company that applies for a license from Heritage Canada.
As a licensee, the license holder is authorized to use the Canada 150 logo for either commercial or non-commercial purposes, the former of which is defined as either: (a) the reproduction of the logo on wares offered for sale or distribution, or (b) the display of the logo in association with a company’s corporate look.
In filing a request, interested brand owners must prepare mock-up images or illustrations of the product(s) on which the Canada 150 logo will be used, using the following versions of the Canada 150 logo:
This week the Supreme Court of Canada heard an appeal by Google against a 2015 decision of the Supreme Court of British Columbia requiring Google to remove hundreds of links and to modify search results in order to block traffic to websites carrying infringing products. Click here to see a webcast of the SCC hearing.
Google was not a party to the original dispute between B.C.-based Equustek Solutions Inc., and its former distributor, yet the BC court found that it had territorial competence over Google, as well as an inherent jurisdiction to issue an injunction against it in order to preserve the “rule of law”. At issue before the Supreme Court of Canada is whether local or national courts may compel non-party technology companies located outside of Canada, to take positive action. Some argue that the court order effectively shifts to Google responsibility that should arguably fall on the shoulders of law enforcement agencies. Google argues that it has done nothing wrong, and yet it is being forced to bear the costs and responsibility for searching and taking down the defendant’s websites.
Moreover, Google may now need to alter its worldwide search results in order to comply with the BC court order. The implications are significant: will this open the door to other, more authoritarian jurisdictions, effectively imposing restrictions on technology companies? Could foreign courts impose limitations on Internet content? How will companies be able to quantify and/or limit this potentially unlimited risk? We will continue to track this case for further updates.
NHL Expansion Team in Trademark Trouble – USPTO Issues Preliminary Refusal Against “VEGAS GOLDEN KNIGHTS” Application
Not even a major franchise system like the NHL is immune from trademark troubles: the USPTO has issued a preliminary refusal against the NHL expansion team’s trademark application for VEGAS GOLDEN KNIGHTS (Ser. No. 87/147,239).
The NHL had announced the name of its newest expansion team a mere two weeks prior to the USPTO refusal. The USPTO’s objection is based on potential confusion with a prior registration in the name of the College of Saint Rose in New York, which also has a team called the GOLDEN KNIGHTS. According to the USPTO: “The evidence suggests the services of both the applicant and registrant are similar in nature; consumers of sports entertainment services enjoy both professional and collegiate-level sports, and sometimes even prefer the latter over the former. The registrant’s services are presumed to include all sports played at the collegiate level, including hockey. Therefore, the services of the applicant and registrant are considered related for the purposes of the likelihood of confusion analysis.”
The NHL has indicated that it intends to argue against the citation and that it is not presently considering re-branding for its new franchise team. The NHL team has until June 2017 to respond to the USPTO’s objections.
Interestingly, Clarkson University (which is also located in New York State), has a Division I hockey team nicknamed the GOLDEN KNIGHTS. According to news reports, Clarkson entered into a peaceful co-existence agreement with the Las Vegas NHL team earlier this year.
We will continue to monitor this story.
After stumbling near the finish line, Canada and the EU were finally able to sign the Comprehensive Economic and Trade Agreement (CETA) on October 30, 2016. Bill C-30 (the CETA Implementation Act) was tabled the following day, on October 31, 2016.
CETA brings significant changes to Canada’s trademark and patent laws. On the trademark front, the most significant change is the recognition of geographic indications that extend beyond wines and spirits, to cover agricultural products and foods.
Once these changes are in effect, the use and registration of words that are protected as a geographic indicator (GI) will be prohibited. A common example would be Parmigiano Reggiano. There are certain exceptions that will permit the continued use of words like “Feta” and “Asiago”, if they were used for an extended 10 year period.
For further information, please contact Paula Clancy.
The simple and prudent answer is ‘no’. A trademark is not registrable if it is clearly descriptive, or deceptively misdescriptive of the place of origin of the goods associated with the mark.
The Canadian Trademarks Office recently issued a new practice notice clarifying its practice with respect to marks that describe a place of origin. This practice notice was issued in response to the Federal Court of Appeal decision in MC Imports Inc. v. AFOD Ltd. [2016 FCA 60].
For further information, please contact Paula Clancy