The IP Year 2007 In Review: Trade-marks (Part 2)

This second part of The IP Year 2007 in Review covers the year's developments in trade-marks. See parts 1 and 3 on patents and copyrights respectively.

TABLE OF CONTENTS

TOPIC

PROFESSIONAL

TRADE-MARKS

TRADE-MARKS OFFICE REQUIRES EVIDENCE OF ADOPTION AND USE OF AN OFFICIAL MARK

Natanya Garcia & Roger Kuypers

SPEEDING UP OPPOSITIONS

Elizabeth Gouthro

DISCLAIMERS NO LONGER REQUIRED

Natanya Garcia & Roger Kuypers

PREPARING FOR THE VANCOUVER OLYMPICS: TAKING AIM AT AMBUSH MARKETING

Elizabeth Gouthro

PIRACY & COUNTERFEITS IN CANADA

Jason Kee & Peter Armstrong

NO USE FOR YOU! BMW FAILS TO ESTABLISH USE WITH M MARKS

Jean-Philippe Mikus

PROTECTION OF FAMOUS MARKS AGAINST DILUTION BY BLURRING: MYTH OR REALITY?

Sebastien Roy

POLICING TRADE-MARKS ON THE INTERNET

May Cheng and Leanne Shaughnessy

DESCRIPTIVE TRADE-MARKS AS DOMAIN NAMES

Peter Armstrong

CASE OF OLYMPIC PORTIONS

Natanya Garcia & Roger Kuypers

KEY CANADIAN DEVELOPMENTS IN TRADE-MARKS

There were a number of noteworthy 2007 Federal Court cases involving trade-marks. Following the Supreme Court of Canada in the Mattel and Veuve Clicquot decisions in 2006, the Federal Court of Appeal had the opportunity to consider trade-mark dilution and "famous" trade-marks in view of these Supreme Court pronouncements. With the Winter Olympics coming to Vancouver in 2010, there has been the introduction of new legislation for the protection of Olympics related marks. There have also been indications Canada will be participating in a multilateral agreement against counterfeiting and piracy. Finally, there have been some important practice notices issued by CIPO dealing with official marks, disclaimers and opposition proceedings.

IMPORTANT PRACTICE NOTICES & AMENDMENTS

Trade-marks Office Now Requires Evidence Of Adoption And Use Of An Official Mark It will now be more onerous for public authorities to obtain their "Official Marks" under the Trade-marks Act.46 Not only are public authorities now required to file evidence sufficient to establish that they are entitled to public authority status, but they are now also required to file evidence of actual use and adoption of the mark in Canada.

In August, the Registrar of Trade-marks (the "Registrar") issued a Practice Notice regarding the publication of Official Marks and the notice of public authority status.47 An "Official Mark" is any badge, crest, emblem or mark adopted and used by any public authority and designation as such prevents third parties from using or registering the Official Mark, or a confusingly similar mark, for any goods or services. As such, these marks have greater scope of protection than traditional trade-marks. Further, an Official Mark is not subject to examination in the same manner as a regular trade-mark.

According to the recent Practice Notice, the Registrar now requires entities to submit evidence of public authority status before allowing an Official Mark. A three-part test is set out to establish public authority status: (1) the entity must be a public authority in Canada; (2) the appropriate government must exercise a significant degree of control over the entity's activities; and (3) the entity's activities must benefit the public. The test for "government control" requires that the government be enabled directly or through its nominees to exercise a degree of ongoing influence in the public entity's governance and decision. The fact that an entity is statutory and that its objects and powers may be amended by Legislature or that the entity is a non-profit corporation, is not sufficient evidence of "government control". For the "public benefit" test, the Registrar considers the entity's objects, duties and powers, including the distribution of its assets. The entity must show it does something of public benefit, regardless of whether or not there is a corresponding public duty to do so.

Speeding Up Oppositions Prosecution of a trade-mark opposition before the Canadian Trade-marks Opposition Board ("TMOB") can be an extremely long and drawn out process. Since CIPO's Practice Notice issued on October 1, 2007, trade-mark opposition in Canada may just be a little faster.48 Oppositions for marks advertised before October 1, 2007, will now be treated differently than those advertised after that date.

The Practice Notice shortens the traditional periods for extensions of time at the various stages of the opposition. It also limits the number of extensions that will be granted. Substantive reasons necessitating an extension must now be provided to the TMOB at the time of the request, even if the consent of the other party has been obtained. Endless numbers of extensions of time will not be granted.

What does this mean in practice? If you are serious about opposing a trade-mark owned by another party, be ready to put the time into preparing the evidence so that extensions of time are not necessary. If you think settlement is a viable option, actively engage in settlement negotiations (or provide instructions to counsel to do so) so that extensions of time are either not necessary or will be granted on the grounds that substantive reasons have been provided. Either way, it's in everyone's best interest to speed up the opposition process.

Disclaimers No Longer Required In August, the Registrar also issued a Practice Notice regarding disclaimers under the Trade-marks Act. Generally, a trade-mark is not registrable if it is clearly descriptive (whether in depiction, writing or sound) of the wares or services sought to be registered. Previously, if a trade-mark had been filed containing both descriptive and non-descriptive words, as long as the mark is distinctive as a whole, the applicant would have to disclaim the right to the exclusive use of the descriptive words. Under the new practice, the Registrar has eliminated this requirement and while voluntary disclaimers will still be accepted, an applicant for a trade-mark is no longer required to enter disclaimers.

This change will hopefully result in applications moving faster through the examination process as examiners will no longer be issuing office actions when the disclaimer requirement is the only issue.

Preparing For The Vancouver Olympics: Taking Aim At "Ambush Marketing" The Olympic and Paralympic Act49...