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.
Paula Clancy, Marion Bailey (Gowlings LLP) and Shelley Jones (National Inventor’s Hall of Fame) took INTA’s Unreal Challenge and presented on behalf of INTA on the issues surrounding counterfeiting. For more on the Unreal campaign please visit their website.
Clancy PC is celebrating Canada’s 152nd birthday. Our office as well as the Canadian Trademarks Office will be closed on July 1, 2019.
We are pleased to announce that Paula Clancy will be a lecturer at McGill's Summer IP program (Understanding Trademarks), offered in partnership with the Intellectual Property Institute of Canada (IPIC).
Attendees can look forward to learning about trademark procurement, proceedings, portfolio management, as well as advanced topics such as opposition and cancellation proceedings.
Spots are still open. If interested, sign up here.
The team at Clancy PC has been preparing since its announcement and is ready to welcome the new legislation into Canada. Key changes include:
For more information on Canada's changes in legislation, contact us.
Significant changes to trademark law in Canada will be implemented on June 17, 2019. Paula Clancy will speak to the United Kingdom's Chartered Institute of Trade Mark Attorneys (CITMA) to highlight key changes to Canadian Trademark laws. This seminar will provide a commentary on the impacts (both positive and negative) of these changes.
Picture by Hugo Sousa on Unsplash
Article by Nathalie Siah.
The Toronto Maple Leafs have opposed Snoop Dogg’s trademark for his new cannabis brand “Leafs by Snoop,” in both Canada and the US.
The Maple Leafs have taken issue with the cannabis brand “Leafs by Snoop” on the basis that it infringes on its signature marks that have been in use for decades.
Specifically, the Leafs have objected to the incorrect spelling of “leafs” (rather than “leaves”) arguing that this creates a direct association with the Toronto hockey team.
We will continue to monitor this case to see how Snoop fares in this trademark battle.
Images: Leafs By Snoop, Toronto Maple Leafs
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.
We have been advised by our Brazilian colleagues that the Brazilian Patent and Trademarks Office will be closed for an extended period between June 5 and June 10, 2019 as they conduct a data migration. Please ensure that we have instructions in advance for any matters with a deadline that falls between this time period.