Team Clancy wishes all a good Easter and long weekend. Our offices as well as the CIPO office will be closed on Friday, April 19, 2019 and Monday, April 22, 2019.
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
Article by Nathalie Siah.
Amazon has launched a new initiative, Project Zero, attempting to limit brand counterfeiting on its platform. The name stems from Amazon’s goal to drive the sale of counterfeits clear to zero.
Currently, the anti-counterfeit measures in place rely on user feedback. Project Zero introduces several tools including automatic protections, self-service counterfeit removal, and product serialization which apply a unique code on every unit found in Amazon’s warehouse.
Automatic protection is powered by Amazon’s machine learning, and is able to scan online listings and remove potential counterfeits. Brand owners must provide key data points, such as a list of their trademarks, for scanning to be efficient.
The self-service tool, on the other hand, allows brand owners to remove infringing products without waiting for an Amazon review.
Finally, product serialization, gives brand owners a unique code for each unit in Amazon’s warehouses to ensure authenticity at a cost of between $0.01 to $0.05 per unit, based on volume.
Project Zero is currently an invite-only program. In order to enroll in Project Zero, a brand owner must have a registered trademark, enroll in Amazon’s Brand Registry and join the waitlist.
Canada is acceding to 3 international treaties in an effort to modernize our trademark regime.
The Madrid Protocol will help Canadian businesses file foreign trademark applications with a single application. See our blog on Madrid here.
The Singapore Treaty standardizes procedures for filing applications and makes those procedures more consistent internationally. It also recognizes non-traditional marks such as scents, holograms and colour.
The Nice Agreement standardizes the classification of goods and services across member countries.
The Trademarks Act and Regulations have also been amended and these changes will come into force on June 17, 2019. Among the key amendments are:
CIPO is also modernizing its online platform to improve e-filing. The plan is to have file histories online so that they can be searched electronically by 2022.
If you would like further information on the upcoming changes, please contact us.
The Madrid System will be implemented in Canada on June 17, 2019. This system allows for the international registration of marks in more than 120 countries with one single procedure, one fee, one currency and in one language.
How do you file a Madrid application?
Advantages of the Madrid System
Disadvantages of the Madrid System
If a Madrid filing is of interest, please contact Paula Clancy.
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.
Clancy PC is very pleased to announce that founder and managing attorney, Paula Clancy, has been certified by the Law Society of Ontario as a Specialist in IP (Trademarks) as of February 2019. Certified Specialist designation is awarded to professionals who are recognized and experienced in his or her field of law and have met high standards.
To learn more about the Certified Specialist Program, visit the Law Society of Ontario's website.
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: