Signs of Things to Come: Canada and Non-Traditional Trademarks

Transcription

1 Signs of Things to Come: Canada and Non-Traditional Trademarks Hung Nguyen November 15, 2015

2 Traditional Registrable Marks Words McDonald s, Apple, Microsoft, Pepsi 2-D Design Marks

3 Non-Traditional Registrable Marks 3-D Marks Fanciful 3-D objects not subject of trade Canadian Registration No. TMA K & Star Design Paul Start trading as Stark Productions Services: Film Production 3-D objects attached to wares Canadian Registration No. TMA Heart in Cat Design Build-A-Bear Retail Management, Inc. Goods and Services: plush toys and retail services A distinguishing guise Canadian Registration No TMA IPOD classic design - Apple Inc. Goods: portable and handheld mobile digital electronic devices

4 Non-Traditional Registrable Marks Colour Marks Applied to a whole object Canadian Registration No. TMA Purple Hand Design Safeskin Corporation The colour purple applied to the whole of the visible surface of the particular object shown in the drawing. Goods: Protective gloves for industrial use and medical and surgical uses Applied to a particular position on an object Canadian Registration No. TMA Orange Cap Design Elmer s Investments LLC The colour orange applied to the whole visible surface of the particular cap of the bottle shown in the drawing. Goods: Contact cement; glues and adhesives for household, construction and industry use

5 Non-Traditional Marks Not Registrable A hologram Canadian App. No (ABANDONED ) The trade-mark consists of a hologram reflecting all colours, or any colour, of the light spectrum A formal drawing, the purpose of which is to depict the background design of the hologram, is attached hereto. Owner: Smithkline Beecham Inc. Goods: Mouthwashes, dental floss, toothbrushes A colour, not applied to a whole object or position on an object Anomaly? Pink Design Non-Visual Trademarks A sound A scent A texture Canadian Registration No. TMA Pink Design Milacron LLC The colour pink as applied to the whole of the particular industrial fluids and liquids used in the metalwork industry Goods: Liquid additives and concentrates for use in metalworking fluids; industrial cleaning compositions

6 What is a Trademark? Old Understanding: A trademark IS one of the following things New Understanding: A trademark DOES something in the marketplace (distinguishing one s goods and services from those of another).

7 Old Understanding of Trademarks Trade- Related Aspects of Intellectual Property Rights ( TRIPs, World Trade Organization), Article 15 Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs Members may require, as a condition of registration, that signs be visually perceptible.

8 Trademarks: Canada vs. the USA USA, Lanham Act, 15 USC 1127 any word, name, symbol or device, or any combinations thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act].

9 Trademarks: Canada vs. the USA Canada, Trade-marks Act, s. 2 trade-mark means (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods 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.

10 Canada and the USA have similar statutory definitions of a trademark. Neither explicitly includes nor excludes nontraditional marks. However, until 2012, the Trademarks Offices in these two jurisdictions treated nontraditional marks very differently.

11 Non-Traditional Trademarks: Qualitex Co. USA Used Green-Gold colour to distinguish its pads sold for use in dry cleaning presses. Filed an application for registration of the greengold colour in association with these goods on December 26, 1989 (App. No. 74/013732)

12 Non-Traditional Trademarks: USA Qualitex Co. v Jacobson Products Co., (1995) 514 US 159 (SCOTUS) Qualitex added trademark infringement claim to its unfair competition lawsuit against a competitor who sold similarly coloured dry cleaning pads. Qualitex successful at first instance, but decision on trademark infringement issue was reversed by the Court of Appeals for the Ninth Circuit: colour alone cannot be registered as a trademark. Qualitex appealed the decision to the Supreme Court.

13 Non-Traditional Trademarks: USA Supreme Court found in favour of Qualitex. The definition of trademark in the Lanham Act should be interpreted in a broad sense. Although sometimes colour is functional, sometimes it is not no bar to registration due to functionality doctrine US Congress had amended Lanham Act in 1988 to purposefully leave definition broad and unspecific.

14 Non-Traditional Trademarks: Canada Pre-2012: Canadian Trademarks Office took very restrictive view to non-traditional trademarks.

15 Non-Traditional Trademarks: Canada Michel Mike Germain Owned a registration for the trademark PLAYBOY in association with various hair products, including hairpieces (toupees). No Playboy label was affixed to hairpiece; hairpiece was verbally described as a Playboy hairpiece.

16 Non-Traditional Trademarks: Canada Playboy Enterprises Inc v Germain (1987), 16 CPR (3d) 517 (FCTD) Playboy Enterprises Inc, the magazine company, sought to expunge registration based on non-use. Federal Court: A mark must be something which can be represented visually.

17 Effects of Playboy Decision Non-Visual Marks Playboy decision had a significant effect on the practices of the Canadian Trademarks Office. Office took position that a trademark must be something represented visually. Excluded all sound marks from registration. Also excluded other non-visual marks such as scents and tastes.

18 Obstacles to Other Non-Traditional Marks Motion marks and holograms are visual ; thus meet the Playboy test However, they do not meet requirements of Act and Regulations re: drawings First, section 30(h) of Act requires that applications for design marks include an accurate representation of the trademark Motion marks and holograms not registrable because the trademark in its entirety could not be represented by static drawings and a description.

19 Obstacles to Other Non-Traditional Marks Second, Rule 24 of Regulations requires that a separate application be filed for each trademark Motion marks and holograms not registrable because their applications were for multiplicity of marks and not a single mark.

20 Example: Hologram Application Sony Ericsson Mobile Communications AB, application for Hologram DESIGN (1,404,448)

21 Example: Hologram Application Sony Ericsson Mobile Communications AB, application for Hologram DESIGN (1,404,448) Application abandoned in 2014

22 Canada: Change in Approach (March 2012) Metro-Goldwyn Mayer Lion Corp. ( MGM ) applied to register its iconic Roaring Lion sound as a trademark in MGM s application was initially refused, on the basis that a mark must be something which can be represented visually The application remained in examination, facing a provisional refusal, for almost 20 years.

23 Metro-Goldwyn-Mayer Lion Corp v. Canada (Attorney General), [2012] FCJ No 882 Registrar of Trademarks issued a final refusal of the mark in years after the filing date and MGM appealed the decision to the Federal Court. 2 years later, Federal Court granted a consent motion setting aside the refusal and directing the Office to approve the application for advertisement. Office had finally changed its position.

24 Practice Notice: Trademark Consisting of a Sound In response to the MGM decision, Canadian TMO issued a practice notice setting out requirements for an application for a trademark consisting of a sound. Sound application should: 1. State that application is for the registration of a sound mark; 2. Contain a drawing that graphically represents the sound; 3. Contain a description of the sound; and 4. Contain an electronic recording of the sound.

25 Example: Sound Application

26 Example: Sound Application Cover Letter attached the following sonogram:

27 Example: Sound Application Canadian Reg No TMA872,937 Mac Start Up Chime The mark consists of a sound mark consisting of a slightly flat (by approximately 30 cents) g flat/ sharp major chord Owner: Apple Inc.

28 Legislative Amendments 2014 brought extensive amendments to Canadian trademark law to codify these changes, but not yet in force. These amendments revised the definition of a trademark, and added the definition of a sign.

29 Legislative Amendments Amendments repeal the definition of distinguishing guise. 3D trade-marks and packaging designs will be treated just like regular trade-marks Trademark Examiners will be able to ask for evidence of distinctiveness for ALL marks Current non-functionality requirement for distinguishing guises will apply to all marks

30 Legislative Amendments The Canadian Government has also indicated its plans to amend the Trademark Regulations to accommodate nontraditional trademarks. These changes will probably come into force in late 2017 or early Proposed Amendments to the Trade-marks Regulations 2014 Discussion Document, October 2014

31 Legislative Amendments Proposed Regulations will have requirements specific to nontraditional trade-marks.

32 Why did Canadian Practice Change? International Pressure May be the cause of these changes. Canadian Government s legislative changes were expressly made in order to allow Canada to accede to various international agreements (Singapore, Nice, Madrid).

33 Trans-Pacific Partnership ( TPP ) Major trade agreement between 12 Pacific Rim countries, including Japan, Australia, Canada, the USA, Vietnam and Brunei, negotiated over the last 7 years. Agreement contains provisions which lower trade barriers like tariffs, and establishes an investorstate dispute resolution mechanism In particular, the Agreement promotes harmonization of many aspects of Intellectual Property for Contracting Parties

34 Trans-Pacific Partnership ( TPP ) Each party is required to accede to certain agreements, including Madrid Protocol and Singapore Treaty (Article ) Provisions also include Article 18.18:

35 Trans-Pacific Partnership ( TPP ) The Parties signed a tentative deal on October 5, The full text of the Agreement was released November 5, The Agreement must be ratified by the parliaments and governments of all 12 countries to come into effect.

36 The Way Forward: Limitations? Non-Traditional Trademarks will still be required to comply with laws regarding registrability, distinctiveness and nonfunctionality. Amendments to Canadian Trademarks Act allow an Examiner to request evidence of distinctiveness particularly in cases of nontraditional trade-marks:

37 The Way Forward: Limitations? Doctrine of Functionality: Canada Kirkbi AG sells LEGO products in Canada. A competitor began selling MEGA BLOKS, which could be connected to LEGO products. Kirkbi asserted that the shape of its blocks was a trade-mark in the form of a protectable trade indicia.

38 The Way Forward: Limitations? Kirkbi sued the owner of Mega Bloks, and was unsuccessful at trial and on appeal to the Federal Court of Appeal. Kirkbi appealed to the Supreme Court arguing, among other things, that the doctrine of functionality did not apply to unregistered trademarks.

39 Kirkbi AG v Ritvik Holdings Inc, [2005] 3 SCR 302 Doctrine of Functionality: This doctrine recognizes that trade-marks law is not intended to prevent the competitive use of utilitarian features of products, but that it fulfills a sourcedistinguishing function. This doctrine of functionality goes to the essence of what is a trade-mark. Kirkbi lost the appeal the Doctrine of Functionality was a fundamental feature of Canadian trademark law, not restricted to registered marks. Shows that while businesses can protect distinguishing features, they cannot use trademark law to monopolize the sale of a particular product.

40 The Way Forward: Limitations? Doctrine of Functionality: USA Harley Davidson Exhaust Sound: The mark consists of the exhaust sound of the applicant s motorcycles (US Serial No. 74/485223) Opposed by nine competitors: Kawasaki Motors Corp v H-D Michigan Inc, 43 USPQ 2d 1521 (TTAB 1997); Honda Giken ogyo Kabushiki Kaisha v H-D Michigan Inc, 43 USPTQ 2d 1526 (TTAB 1997). Harley-Davidson abandoned its application in face of substantial opposition; issue of functionality was never decided.

41 Non-Traditional Marks in Canada Currently, registration is now possible for sound marks in Canada, which enables businesses to protect a wider range of distinguishing features of their goods or services. Like legal services Canadian Reg No TMA874,778 Fight Bell The sound mark consists of a fight bell rung twice. Services: Legal Services Owner: Baker Newby LLP

42 Questions?