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Introduction to IP Legal Iteration
Andrew Roy, who owns and operates IP Legal Iteration, is both a legal research professional and a lawyer. This unique skill set has allowed him to develop an efficient, practical, and complex understanding of what types of information people need. He has read and digested numerous texts on intellectual property, technology law, and civil litigation and has identified what concepts and areas need discussion. IP Legal Iteration will cover topics from a practical standpoint. It is not meant as a purely academic resource or news service, but as a helpful resource both to legal practitioners and to innovators or business professionals. IP Legal Iteration makes difficult and complex legal information easy to understand. As the complexity of legal information continues to grow, it is important to facilitate understanding of these difficult concepts. For this reason, this resource is user friendly and easy to use. The concepts in IP Legal Iteration range from the very detailed for experienced legal practitioners to introductory concepts for those who are non-specialized. It will include note ups of important case law, legislation, and procedure manuals. It will dive deep into complicated concepts. It will discuss new legal developments. In short: IP Legal Iteration is an essential tool for all those who practice or conduct business in intellectual property, technology law, and civil litigation. IP Legal Iteration covers Canadian law, but will discuss US and EU law when they impact, in some way, Canadian laws, companies, consumers, or cases. The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship. If you need legal advice, please reach out to our firm.
What's a trade-mark?
A trade-mark protects a "mark." Not all marks are a trademark and not all trade-marks are registerable under the Trade-marks Act, nor protected under the common law doctrine of passing off. A right in a trade-mark is only acquired through adoption or use and is only maintained through use. Unlike a patent, which protects products and processes, a trademark relates to the distinctiveness of its marketing. Trademark seeks to indicate the source of a product, so that consumers know what they are buying and from whom. The Trade-marks Act, which is a federal statue and applies throughout Canada, provides a definition of a trademark: (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others, (b) a certification mark, (c) a distinguishing guise, or (d) a proposed trade mark. Let's focus on the first definition as it is the most common one. A trademark must be a mark and it must be used to distinguish one's wares from those of another. While Canadian case law has provided a comprehensive discussion of "mark" and "distinguishing," we will provide a more concise explanation. A "mark" must be something that is represented visually. It can be associated both with products and with services. A trade-mark is some type of visual mark that a person uses in a public situation to identify his goods that he makes for sale in such a market (or services performed by him). The owner of the marks must use the trademark for distinguishing his wares or services from those of others, or, if the owner is not using the trademark to distinguish his wares, that marks does and in fact actually distinguish his wares. We can apply this legalistic definition to a common situation. The Nike Swoosh is a registered trademark. It's a visual mark, located on all Nike products, and it distinguishes a Nike shoe from that of another brand (say, Adidas). In this situation, it does not matter whether Nike developed the Swoosh specifically to distinguish it from other brands. The mere fact that it so clearly does distinguish itself from other brands is enough to classify the Swoosh as a trademark. When a consumer goes to a sports store, he sees the Swoosh on a pair of shoes. He does not need to independently verify the manufacturer or the quality of the shoe. He knows, based solely on that mark, that Nike manufactures the shoe. For Nike, that Swoosh is often enough to have a consumer purchase their product. One can imagine the value associated with that simple design! Are you a business owner or content creator that may have a trade-mark, but has not registered it yet? Contact us today, and we can help you protect it! Are you a business owner or content creator that has either a registered or unregistered trade-mark, and another individual or corporation is using your trade-mark without your consent? Contact us today, and we will help fight for you! The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship. © 2022 Andrew Roy
Passing Off a Trade-mark
This is the second article in the trade-mark series. Check out the first article in the series: What's a Trade-mark? "Passing off" is considered a "tort" in intellectual property and in litigation. It helps protect the proprietary right in a trade-mark. Passing off is both a common law action and a statutory action, which means it protects both unregistered and registered trademarks. A registered trademark has access to both the common law and the statutory right of action, but an unregistered trademark only has access to common law protections. The common law right of passing off is codified in section 7 of the Trade-marks Act. A reproduction of section 7 is below: 7 No person shall (a) make a false or misleading statement tending to discredit the business, goods or services of a competitor; (b) direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services or business and the goods, services or business of another; (c) pass off other goods or services as and for those ordered or requested; or (d) make use, in association with goods or services, of any description that is false in a material respect and likely to mislead the public as to (i) the character, quality, quantity or composition, (ii) the geographical origin, or (iii) the mode of the manufacture, production or performance of the goods or services. 7(b) refers to the "classic" conception of passing off. Passing off occurs when a person directs public attention to his goods in such as way as to cause confusion between his goods and another goods. For example, I cannot start a business selling shoes with a logo that bears a striking similarity to the Nike Swoosh because it would certainly lead a consumer to think that my shoes were manufactured by Nike. 7(d) is a statutory enactment of the "extended form" of passing off. It protects against misrepresentations as to the innate qualities of the wares or services. An example of this would be that certain wines or spirits can be only labeled as such (Bordeaux, Scotch Whiskey) if they originated from a specific geographical origin. I cannot market my brand of wine as "Bordeaux wine" if it's manufactured in Calgary. The common law passing off action has three general elements: the existence of goodwill or proof of reputation, a deception of the public due to the misrepresentation, and damage to the Plaintiff. The reputation or goodwill must occur within a trade-mark that the public understands as belonging to the business. As a result, the business must have operated long enough in that market, so that it has established some goodwill or reputation. If a start-up develops some type of trade-mark and has not yet developed a reputation within the industry, there may be no goodwill or reputation for that trademark. On the other hand, the Nike Swoosh clearly has goodwill or reputation in its market. The misrepresentation is a factual question and one must establish that the defendant led the public to believe it had some connection to the plaintiff's goods or services. This factual analysis looks at the market or trade and the type of competition within that market or trade. Intention is not necessary for this element. The threshold for damages is the plaintiff must establish a likelihood or probability of incurring damage through lost profits or damage to the value of the trade-mark. One does not need to establish actual financial loss. Passing off is a valuable right of action for both unregistered and registered trademarks, and it must be considered when dealing with trade-mark litigation. Do you have questions about your unregistered trademark? Has another business used your trade-mark or trade-name without your permission? Contact us today, and we will protect your rights. Andrew Roy Legal offers free 30 minute Zoom consultations. Book with us today. The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship. © 2022 Andrew Roy
Registration of a Trademark
This is the third article in the trademark series. Check out the other article in the series: What is a trade-mark? and Passing off a trade-mark Imagine you are a new designer clothing company, and you or your marketing team have created a logo for your clothing line. It is a brand-new logo that your team has invested tens of thousands of dollars into creating. It has taken months to create and has required extensive research and planning. You want to place the logo on your storefront and on your goods. However, you don’t want your competitor to steal your logo. You want to protect the inherent rights in your property. You have heard about registering your logo as a trademark. What is a registerable trademark? What’s the registration process like? Registering your trademark is the best way to protect the intangible rights inherent in the property (the logo), so you can freely distinguish your goods from a competitor without having to worry about your competitor profiting off your hard work. Section 2 For a trademark to be registered, it must be considered a registerable trademark under the Trademarks Act RSC 1985, c T-13. The Trademarks Act is a federal statute created to govern and protect trademarks. The first step in understanding whether your logo is a registerable trademark is to review the definition of a trademark in the Trademarks Act. Section 2 defines a trademark as a (a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or (b) a certification mark; (marque de commerce) Section 2 further states that a “sign includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”. Your logo must either be used to distinguish your clothing line or is proposed to be used to distinguish your clothing line. Your logo must be such that is has the quality of distinctiveness whereby an ordinary Canadian consumer who is looking at the logo can distinguish your product from another product in Canada. Let’s assume that your logo is a design element that you are proposing to use in order to distinguish your clothes from other clothing designers in Canada. Is this enough to make your logo a registerable trademark? Section 12 It is not enough that your logo meets the definition of a trademark in Section 2 of the Trademarks Act. Your logo must also meet the requirements in section 12 of the Trademarks Act. This section is often considered the “lynchpin” of the statutory scheme as to what constitutes a registrable trademark. Sections 12(1) and (2) can be confusing as they are written in the negative. Section 12(1) states that a trademark that comes within the statutory definition of a trademark is registrable provided it is not: (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; (c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used; (d) confusing with a registered trademark; (e) a sign or combination of signs whose adoption is prohibited by section 9 or 10; (f) a denomination the adoption of which is prohibited by section 10.1; (g) in whole or in part a protected geographical indication identifying a wine, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; (h) in whole or in part a protected geographical indication identifying a spirit, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication; (h.1) in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food — belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication — not originating in a territory indicated by the geographical indication; and (i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympics Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act. In addition, section 12(2) states that a “trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.” Sections 12(1)(a) and (b) are considered only relative bars to registration as, under certain fact situations, they can overcome the restrictions inherent in these subsections. As such, section 12(3) of the Trademarks Act states that even if a trademark is not registrable because of subsections 12(1)(a) and (b), it can still be “registrable if it is distinctive at the filing date of an application for its registration, determined without taking into account subsection 34(1), having regard to all the circumstances of the case including the length of time during which is has been used.” A trademark that has been used and has become distinctive at the date of filing may still qualify as a registerable trademark even if it meets the definition in either 12(a) or 12(b). On the other hand, the remainder of sub-sections in 12(1) are absolute bars to registration, which means even if they are distinctive as of the date of filing, they still cannot be a registerable trademark. Let’s assume that your design logo does not include a name, it is not descriptive, it does not include a non-English or French word, it is not confused with another registered trademark (more on that below), it is not one of the prohibitive marks in section 9 or 10, it is not related to a plant variety, is does not indicate a protected geographical location for wine or spirits, it does not relate to the Olympic and Paralympics Marks Act, and that it features are not dictated primarily by a utilitarian function (a future blog post will look more closely at each of these classifications). We have now confirmed that your logo is in respect to a good (designer clothing), that you are purposing to place it on your clothing as to distinguish it from other designer clothes, and that you are going to sell your clothing line in Canada. We have also confirmed the logo is distinctive and Section 12 does not prevent its registration. Section 30 One you have passed sections 2 and 12, your next step would be to prepare an application in conformance with section 30. Section 30(1) simply re-states that “a person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.” Section 30(2) provides the actual content that is required for the application to the Registrar: (a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used; (b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used; (c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and (d) any prescribed information or statement. Let’s assume that you have prepared each of these documents in section 30(2) and are ready to file said documents with the Registrar (a future blog post will go into more detail on the content of each of these documents). Can your logo now be registered as a trademark? Section 16 Section 16(1) states that “an applicant who has filed an application in according with subsection 30(2) for the registration of a registrable trademark is entitled, subject to section 38, to secure its registration in respect of the goods or services specified in the application unless at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with (a) a trademark that had been previously used in Canada or made known in Canada by any other person; (b) a trademark in respect of which an application for registration had been previously filed in Canada by any other person; or (c) a trade name that had been previously used in Canada by any other person.” We have come back to this issue of a confusing trademark. Section 12 states that a trademark cannot be considered confusing with an already registered trademark, and now section 16 further requires that the trademark cannot be considered confusing with a trademark that is “already used or made know in Canada.” While you may have all the documents ready for filing under section 30, you are still required to ensure that your logo is not considered confusing with another registered or known trademark. This step requires that you preform targeted trademark research in your specific industry (a future blog post will go over how to conduct this research). However, let’s assume for now that you have completed all the research and are certain that your trademark is not confusing. Registration At this point, you can file your trademark application with the Registrar to register your logo as a trademark. Once the application is processed, the Registrar will advertise the application for purposes of opposition. If no opposition is filed to the application within the statutory time limit, the applied-for trademark will then be allowed for registration (a future blog post will look at opposition more closely). Once your logo is registered, then your logo is now considered a registered trademark! You can now be rest assured that the hard work, money, and time you spent in developing your logo is protected by the Trademarks Act. Contact us Andrew Roy Legal understands that the registration process for a trademark can be daunting. We are here to make it simple. Andrew Roy Legal helps businesses of all sizes on every stage of the trademark process. Call us today at 587.896.2769 or book a free, no obligation zoom consultation The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship. © 2022 Andrew Roy
Revisiting Section 30 of the Trademarks Act
If you enjoy this content, please consider signing up as a member. Creating a member account will ensure you will: have new content delivered directly to your inbox; have exclusive access to member only content; have access to our online booking tool. Imagine you are a technology company that has been in business for 5 years. You registered a trademark in 2018 and have just read Registration of a Trademark, where we talk about how section 30 is necessary to have your logo or trademark registered. You notice that the section 30 when you registered your first trademark looked quite different than the one cited in that article. You remember that there was some specific requirement in section 30 because your trademark was not being used in Canada. What happened? Did the section change? Legislative History of the change to Section 30 If you registered your trademark prior to June 19, 2019, you would have seen a different section 30. The Economic Action Plan 2014 Act, No. 1 (S.C. 2014, c.20) changed many parts of the the Trademarks Act, including section 30. The Economic Action Plan 2014 was assented to on June 19, 2014, but the provisions modifying s. 30 of the Trademarks Act came in force on June 17, 2019. Section 368 of the Economic Action Plan Act stated that the provisions related to the Trademarks Act, other than section 367, would come into force on a date prescribed by an Order in Council. On October 29, 2018, Order in Council SI/2018-100 fixed that date to be June 17, 2019. Section 30 Pre-June 17, 2019 The Pre-June 17, 2019 section 30 of the Trademarks Act stated that 30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing (a) a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used; (b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application; (c) in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which the applicant or named predecessors in title have made it known in Canada in association with each of the general classes of goods or services described in the application; (d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant’s named predecessor in title on which the applicant bases the applicant’s right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant’s named predecessor in title, if any, in association with each of the general classes of goods or services described in the application; (e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada; (f) in the case of a certification mark, particulars of the defined standard that the use of the mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used; (g) the address of the applicant’s principal office or place of business in Canada, if any, and if the applicant has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself; (h) unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed; and (i) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the goods or services described in the application. General Requirements Under these provisions, all trademark application required a statement, in ordinary commercial terms, of the specific wares or services in association with which the mark has been used or is proposed to be used. For a situation where the trademark was being used, the wares or services must be grouped into general categories. The application also required the name and the address of the applicant’s principal office, or place of business in Canada. If the applicant lived abroad, then it also required the address of the applicant’s principal office or place of business abroad, as well as the name and address of a person or firm to whom any notice in respect of the application or registration may be sent (in Canada). Unless the trademark was for a tradename, it also required a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed. Specific Requirements Section 30 also had specific requirements based on different categories. For an application based on use in Canada, the applicant must have provided a date from which the applicant, or any predecessors in title, had used the trademark in association with each of the wares or services described in the application. For an application where the trademark was not used but was made known in Canada, the applicant must have provided the name of the country of the Union in which the trademark had been used by the applicant or any predecessors in title. In the case of an application where the trademark was subject to registration in another Country in the Union, the applicant must have provided particulars of the foreign application or registration. In the case of a proposed trademark, the application must have contained a statement that the applicant, by itself or through a license, intended to use the trademark in Canada. For a certification mark, the applicant must have provided the Registrar with the particulars of the defined standards that the applicant intended to indicate by the mark, as well as a statement that the applicant is not engaged in the manufacture, sale, leasing, or hiring of wares or the performance of services such as those specified to be used in association with the certification mark. The applicant must have also furnished a certified copy of the registration certified by the office in which it was made. Let's return to your previous trademark registered in 2018. As your trademark was only for proposed use (i.e. not actually in use yet), then that version of section 30 specifically stated that you were required to submit a statement that the applicant, by itself or through a license, intended to use the trademark in Canada. Section 30 Post-June 17, 2019 The current Section 30 of the Trademark Acts reads different than the previous section 30. It states that 30 (1) A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services. Contents of application (2) The application shall contain (a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used; (b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used; (c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and (d) any prescribed information or statement. Nice Classification (3) The goods or services referred to in paragraph (2)(a) are to be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification. Disagreement (4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal. Section 30(1) does not provide the same distinction on the face of the section as did the previous section 30. There is no explicit distinction between the application for trademarks that have been used in Canada, is made know, are proposed to be use, or that are subject to another country in the Union. Instead, 30(1) states that a person may file a trademark application for any trademark if they are using it, propose to use it, and are entitled to use it in Canada, and subsection 30(2) provides the requirements of that application. Paragraph 30(2)(a) restates the old subsection (30)(a), expect that it removes the word “specific” (more on that below). Subsection 30(2)(b) discusses the certification mark which 30(1)(f) used to cover, but it also adds “proposed to be used." Subsection 2(c) covers what type of representation you are required to submit with the application. The new subsection only refers to a prescribed representation, but it does not explicitly require a drawing of the trademark. Subsection 30(2)(d) also requires another prescribed information or statement be submitted. Unlike the previous section 30, the new version tries to streamline the section. It does not make any specific requirements based on the type of use of trademark (i.e. use vs. proposed use); instead, it points to the "prescribed requirements" and "prescribed information or statement." “Prescribed” in the legal world almost always means that one needs to check the regulations passed with that piece of legislation (a future blog post will look more closely at the specific requirements of the regulations under the Trademarks Act). Oftentimes, a legislative drafter will use the term "prescribed" to provide the administrative bodies (like the Registrar) with greater flexibility to modify the technical requirements without having to change the actual piece of legislation. At the same time, this approach makes the process more complex for the registrant because now one is required to know how to reference any regulatory information to "fill in the gaps." Subsection 30(3) explicitly adds the requirement that the classes must be grouped according to the Nice Classification. The specification of Nice Classifications in section 30 simply made explicit what was implicit previously. Subsection 30(4) states that any questions regarding which goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal. This inclusion of not allowing an appeal the Registrar’s decisions is done to provide finality to the decision, but one could expect an enterprising lawyer to challenge this provision at some point in the future. Tow Services International, Inc & Montobacco Ltd Even though the new section 30 of the Trademarks Act came into force on June 17, 2019, the transitional provisions create a situation where some trademarks are still subject to the old section 30 rather than the new one. Like all legislative clauses, they are subject to the interpretation of the court (a future blog post will tackle the case law behind these transitional sections). For now, the vast majority of case law occurring after June 17, 2019 exclusively deals with the old section 30. We still do not have a good idea on how or whether the courts will distinguish and differentiate the old section with the new. In Tow Services International, Inc. v. Trademark Factory 2021 FC 550, 2021 CF 550, the Federal Court essentially read in a specificity clause that was removed in the new subsection 30(1). The court found that this specificity requirement was still retained in section 30 because of section 29 of the new Trademark Regulation, SOR/2018-277: “absent further legislative or regulatory amendment to remove the requirement altogether, the need for specificity in the statement of goods or services remains applicable throughout the life of a trademark registration. [. . . ] In other words, the extension application must comply with old Paragraph 30(a) of the Trademarks Act or the new Section 29 of the Trademarks Regulations.” As discussed above, this case seems to confirm that the new section 30 "leans" more heavily on the regulations than the previous one. In Montobacco Ltd. v. Marley Green LLC 2021 COMC 87, 2021 TMOB 87, the trade-mark opposition board sidestepped the issue in its entirety, relying on the transitional clauses mentioned above. In this case, the opponent opposed a trademark on grounds that included the old sections 30(a), 30(e), 30(g), and 30(i). The court stated that “all references in this decision are to the Act as amended, with the exception of references to the grounds of opposition.” In other words, the board recognizes the new Act, but due to the transitional clauses, it doesn't have to worry about the new section 30! Even though we are now 3 years from when the new section 30 came into force, the judicial treatment of this section remains sparse. Have any questions about trademarks? Andrew Roy Legal helps businesses of all sizes on every stage of the trademark process. Call us today at 587.896.2769 or book a free, no obligation zoom consultation The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship. © 2022 Andrew Roy