9QVtZp-LAW206_Slides_Week5.pdf

Trademark Rights MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY The Face of the Corporation Trademarks distinguish different traders in the market. Consumers distinguish different sources for goods and services through their trademarks. A brand, and all the goodwill associated with it,...

Trademark Rights MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY The Face of the Corporation Trademarks distinguish different traders in the market. Consumers distinguish different sources for goods and services through their trademarks. A brand, and all the goodwill associated with it, is very valuable. Dishonest traders try to pass off their goods as those from the stronger brand. Trademark law sets out to protect ownership rights in strong marks. Source: http://thebrandingexperts.ca/uncategorized/5574/ Trademark Rights at Common Law Making your mark known. Enforcement at common law through a “passing off” action Common law provides the exclusive right to use your marks in association with the same or similar goods and services in the geographic area in which consumers recognize your mark as indicating you as the source. Expensive to prove in court that consumers recognize your brand in the particular geographic area. Trademark Rights by Registration Register marks in use or for proposed use with the Canadian Intellectual Property Office. Registration provides: Presumption of validity Ease to sue for infringement Difficulty to have your rights challenged. Canada wide protection for registered marks. Lawyer would usually advise to register marks rather than rely on common law protection (approx. $1500 - $2000). Exclusivity Right Section 19 of the Trademarks Act: “…the registration of a trade-mark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those goods or services.” Term of Protection Unlike other forms of IP, there’s no real limit to trademark protection. Trademark needs to continue being used and recognized to maintain protection at law. o I.e. recognized as an indication of source of goods or services. Registration does need to be renewed every 15 years currently, and every 10 years after new Trademarks Act comes into force in 2019. What is a Trademark? Part 1 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY What is a Trademark? “…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,…” -Trade-marks Act, Section 2(a) What can be a Trademark? Words Designs Slogans Letters Numerals Colours Figurative element 3D shapes Holograms Moving Image Mode of packaging goods Sound/Scent/Taste Texture “Use” of a Trademark What generally constitutes “use”? Goods: goods themselves, packaging or other marking at the point of sale to consumer. Services: communication of the mark along with the services or in advertising them. International brands can also establish rights in Canada, through making their mark known in Canada, even if their goods or services aren’t actually sold here Distinctiveness “…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,…” “…distinctive, in relation to a trade-mark, means a trade-mark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or is adapted so to distinguish them;…” - Trade-marks Act, Section 2 Distinctiveness “…38 (1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar. ….. (d) that the trade-mark is not distinctive.” 18 (1) The registration of a trade-mark is invalid if ….. (b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;…” Inherent and Acquired Distinctiveness Inherent distinctiveness Coined words Words with a meaning unassociated with the goods or services Unique designs, etc. Acquired distinctiveness Become known and recognized as distinctive through use. Generification Indiscriminate generic use of a trademark loses its trademark rights. o No longer distinctive of a particular source, but become so widely used that they generally describe a type of good/service. Kleenex Hoover Band-Aid Speedo Aspirin Velcro Nylon Mattel, Inc. v. 3894207 Canada Inc., 1 SCR 772 “…an iconic figure of pop culture” What is a Trademark? Part 2 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY What is a Trademark? (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.” -Trade-marks Act, Section 2(a) What is a Certification Mark? “Certification mark means a mark that is used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard with respect to: (a) the character or quality of the goods or services, (b) the working conditions under which the goods have been produced or the services performed, (c) the class of persons by whom the goods have been produced or the services performed, or (d) the area within which the goods have been produced or the services performed, from goods or services that are not of that defined standard;” - Section 2, Trade-marks Act What is a Certification Mark? Canadian Standards Association Geographic Indications “…an indication that identifies a wine or spirit, or an agricultural product or food of a category set out in the schedule, as originating in the territory of a WTO Member, or a region or locality of that territory, if a quality, reputation or other characteristic of the wine or spirit or the agricultural product or food is essentially attributable to its geographical origin;” - Section 2, Trade-marks Act Geographic Indications Geographic Indications recognized in Canada provided and updated on the CIPO website http://www.ic.gc.ca/cipo/listgiws.nsf/gimenu-eng?readForm Asiago Prosciutto Prosecco Cognac Scotch Whiskey Champagne Geographic Indications You’re prohibited from using a geographic indication unless your product actually originates from the region and produced in accordance with the standards governing production in that region. “No person shall adopt in connection with a business, as a trade-mark or otherwise, (a)a protected geographical indication identifying an agricultural product or food of a category set out in the schedule in respect of an agricultural product or food belonging to the same category that does not originate in the territory indicated by the protected geographical indication;” - Article 11, Section 15, Subsection 1, Trade-marks Act Official Prohibited Marks “No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the Royal Arms, Crest or Standard; or of any member of the royal family, or of the governor general; Any crest or flag of any government in Canada, municipal, provincial, federal, etc.; The emblem of the red cross and red crescent; Any flag or crest of any country recognized by relevant IP treaties and conventions;… - Article 9, Subsection 1, Trade-marks Act Official Prohibited Marks Any scandalous, obscene or immoral word or device; Any matter that may falsely suggest a connection with any living individual; The portrait or signature of any individual who is living or has died within the preceding thirty years; The words “United Nations” or the official seal or emblem of the United Nations; Any badge, crest, emblem or mark a) adopted or used by the armed forces, b) of any university, or c) adopted and used by any public authority, in Canada as an official mark for goods or services, in respect of which public notice of its adoption and use has been given; …” - Article 9, Subsection 1, Trade-marks Act Official Prohibited Marks Public authorities, like crown corporations and universities just have to advertise their use of marks and are automatically granted exclusive rights across Canada, without specifying particular goods or services. 0905175 AMS & DESIGN ADVERTISED 0923679 SMITH SCHOOL OF BUSINESS LOGO ADVERTISED 0919178 QUEEN’S LOGO (Black & White) ADVERTISED Official Prohibited Marks 0908274 BIG LIFE ADVERTISED 1, 2, 3, 4, 5,... 0896587 BIG LIFE REGISTERED 14, 21, 25, 32 “Big Life first appeared on CBC Newsworld in April 1996 with a one-hour program about abstinence and female chastity. The show was cut to a half-hour in 1997 and ended in 1999.” S. 10 Prohibited Marks “…Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services, no person shall adopt it as a trademark in association with such goods or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.” - Section 10, Trade-marks Act S. 10 Prohibited Marks Scotch Whisky Assn. v. Glenora Distillers International Ltd. Glenora Distillery applies to register “GLEN BRETON” in association with single malt whisky Scotch Whisky Assn opposes the application, claiming that “Glen” has become recognized as designating a product originating in Scotland. “WE TOOK OUR SECRETS STRAIGHT FROM THE OLD COUNTRY. THAT MIGHT EXPLAIN THE BATTLE OF THE GLEN.” Trademark Infringement (and Passing Off) MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Infringement of the Exclusivity Right Trademark infringement is essentially infringing on the owners exclusivity right: “Rights conferred by registration 19 ….. the registration of a trade-mark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those goods or services.” Infringement of the Exclusivity Right Infringement 20 (1) The right of the owner of a registered trade-mark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who (a) sells, distributes or advertises any goods or services in association with a confusing trade-mark or trade-name; (b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trade-mark or trade-name, for the purpose of their sale or distribution; Infringement of the Exclusivity Right (c) sells, offers for sale or distributes any label or packaging, in any form, bearing a trade-mark or trade-name, if (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name; or (d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trade-mark or trade-name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name. Infringement by Consumer Confusion (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the goods, services or business; (d) the nature of the trade, and (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. Test for consumer confusion applied in the context of the ordinary hurried purchaser, and considering all the surrounding circumstances. Passing Off Infringement for registered marks, “passing off” for unregistered. Basic right to be free from consumer confusion is the same. To succeed in an action of passing-off, the claimant needs to establish in court: Passing Off 1. The Existence of Goodwill, (involves proving that the mark is distinctive, and the basis upon which consumers recognise and purchase their goods, and that that distinctive mark has good will associated with it - which simply put means consumers return because of their positive recognition of the mark.) 2. Deception of the Public due to a misrepresentation, (which is essentially the same test as that of consumer confusion set out in Section 6 of the Trademarks Act), and 3. Actual or Potential Damage to the plaintiff. (this might include loss of business or loss of control over their reputation, image or goodwill).