February 6, 2010
With the clock ticking towards the start of the Vancouver Olympic Winter 2010 Games next Friday, some athletes have already arrived in the City and moved into the Olympic Athletes’ Village. Amongst these are members of the Australian Olympic Team, who have already found themselves in some in hot water with the International Olympic Committee (“IOC’). According to a recent story, team members have hung a 50-metre flag, depicting a boxing kangaroo, on the side of one of the housing complexes in the Olympic Village.
The IOC had apparently ordered the flag removed as the boxing kangaroo image is a registered trademark of the Australian Olympic Committee. The IOC Rules control display of registered trademarks.
The Australian Olympic Team had suggested that they may not take the flag down without a fight, as the boxing kangaroo is apparently known as the national personification of Australia.
The IOC has now apparently agreed to let the Australian Olympic Team continue to fly the flag. In the future, the Australian Olympic Committee will need to register the flag with the IOC if the flag is to be used at Olympics.
Posted by Karen Monteith | Filed Under Uncategorized | No Comments »
February 5, 2010
The Canadian Intellectual Property Office has initiated two short consultations (January 29 to February 28, 2010) for proposed Practice Notices regarding section 12(1)(b) of the Trade-marks Act. Section 12(1)(b) provides that “a trademark is registrable if it is not, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares 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”. The two proposed Practice Notices address the application of 12(1)(b) to professional designations and to abbreviations, acronyms and initials.
If research discloses that an applied for trademark consists of a professional designation, the examiner will apply a first impression test to determine whether a consumer would assume the goods and services are produced by a professional with a designation similar to the applied-for trademark and if so, the trademark will be unregistrable, being clearly descriptive of the persons employed in the production of the wares and services. The addition of an abbreviation, acronym or initial to the professional designation will not make the trademark registrable.
A trademark that consists of or contains an abbreviation, acronym or initial will be considered unregistrable if considered as a whole and if as a matter of first impression the abbreviation, acronym or initial is clearly descriptive or deceptively misdescriptive of the wares and services. Moreover, the addition of an abbreviation, acronym or initial to a clearly descriptive word or phrase will not render it registrable as a trademark.
The changes arise in light of a recent Federal Court decision, College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Nature Medicine College of Canada, that considered some 39 trademark applications and registrations containing abbreviations, acronyms and initials and allegedly confusing with certain professional designations.
The Plaintiff, a provincial body set up under British Columbia’s Health Professions Act to regulate the practice of traditional Chinese medicine and acupuncture, granted and controlled the use of various titles, including Doctor of Traditional Chinese Medicine (Dr. TCM) and Registered Acupuncturist (R. Ac.). The Defendant was set up as a non-profit company under federal legislation and created educational programs and examinations in the field of traditional Chinese medicine which were offered by private schools. The Defendant also proceeded to apply for and register trademarks for the various educational programs and licence graduates of the programs to use the trademarks. The trademarks the Defendant registered included D.C.T.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE), REGISTERED D.P.C.M., D.P.C.M. (DOCTORATE IN PHILOSOPHY IN CHINESE MEDICINE), R. AC (REGISTERED ACUPUNCTURISTS). There were a total of some 39 marks, some registered, some only applied for, although 24 of the marks were not ruled on by the Court because they were not set out in the Statement of Claim.
Extensive evidence was lead regarding the regulation of traditional Chinese medicine and, more importantly, the licences granted by the Defendant, the Defendant’s assertion that the Plaintiff was infringing its trademarks and the confusion arising in respect of the use of the trademarks by the Defendant’s licencees.
The Court agreed that the matter could proceed by summary trial and accepted the Plaintiff’s argument that the marks were contrary to section 12(1)(b) of the Act, being clearly descriptive or deceptively misdescriptive at the time they were applied for. The Court noted that terms such as Dr. TCM and D.T.C.M. had been used in Yellow Page advertisements since 1995 to refer to a doctor of traditional Chinese medicine and trademarks such as REGISTERED D.P.C.M. were so similar that they remained descriptive, particularly when REGISTERED had been disclaimed.
Moreover, the Court was not convinced that the acronyms served to distinguish any of the trademarks because there was also a descriptive phrase dominating the trademarks. The Court concluded that an everyday user, faced with the acronyms and descriptive phrases, would conclude that doctors and acupuncturists delivering services in association with the trademarks were regulated as a professionals. Thus, the marks were not registrable. The Court then went on to find that the marks were contrary to section 10 of the Act (which prohibits adoption as a trade-mark of a mark that has by ordinary commercial usage become recognized as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services), as well as 7(d) of the Act (which prohibits a person from using a description in association with wares or services that is false in a material respect or likely to mislead the public).
Thus, the Defendant’s attempt to circumvent a provincial regulatory body by registering and licensing trademarks that appeared to be professional designations was not acceptable as a matter of trademark law. To ensure that the Trade-marks Office does not approve similar marks in the future, CIPO is seeking to clarify in the proposed Practice Notices just when professional designations and acronyms will be contrary to section 12(1)(b).
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Posted by Larry Munn | Filed Under Case Law, Protection & Enforcement, Registration | No Comments »
January 15, 2010
In a decision that could significantly impact rights-holders in the media and entertainment industries, the Federal Court has suggested that book titles are, prima facie, not properly registrable as trademarks in Canada.
In Drolet v. Stiftung Gralsbotchaft (2009 FC 17) the court was tasked with considering a range of copyright and trademark issues. The litigants were all involved in the Grail Message movement—a religious movement centred around a series of writings prepared in Germany in the 1920s and 1930s. The plaintiff sought to expunge the defendant’s Canadian trademark registrations pertaining to the title of a book central to the movement for reasons relating to descriptiveness.
First applying the conventional analysis proscribed under s. 12(1)(b) of the Trade-marks Act (the “Act”) to determine if the mark was “clearly descriptive”, the court concluded the mark did not meet this test, as the title did not convey to a consumer a clear indication of the book’s contents or subject matter. However, writing for the court Mr. Justice de Montigny went on to assert:
I am nevertheless of the opinion that the title of a literary work is inherently descriptive not because it conveys information on the content of the work but because it is the only way to identify the work in question. Thus the title cannot be dissociated from the work itself. Indeed, how could a publishing house identify a book it publishes other than by its title?
Additionally, though the court noted that the definition of wares as set out in the Act includes reference to “printed publications”, it was not persuaded that this was evidence of Parliament’s intention that books (and by extension, their titles) were registrable under the Act. The court observed that even if the reference to “printed publications” did include books, the other tests for registrability of a mark under the Act had still to be applied, and a book title would not be registrable for reasons of descriptiveness.
Finally, the court turned to the Canadian Copyright Act to support its conclusions, noting the rights afforded under that legislation are provided for a limited period. Once that period expires, the court noted, Parliament’s intent was for the work to become part of the public domain. The court argued (unconvincingly, in this writer’s opinion) that if a book title was registrable under the Trade-marks Act, this would have the effect of defeating Parliament’s intent in the Copyright Act.
The potential impact of this decision is significant: prior to it, Canada was one of only a handful of countries that permitted the registration of book titles as trademarks. More broadly, the court’s logic in this case would also seem to apply to movie titles and other non-serialized, copyright-protected works. Yet, despite the decision’s import, only a few other commentators have discussed this aspect of the case.
It remains to be seen if subsequent courts will follow the lead of the Federal Court in Drolet. Though it aligns Canadian law with that of other countries on this point, certain aspects of the decision appear at odds with the Act—particularly that which finds a book title’s “inherently descriptive” nature is sufficient to cross the “clearly descriptive” threshold set out in the Act relating to registrability.
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Posted by Jeffrey Vicq | Filed Under Case Law, Legislation, Protection & Enforcement | No Comments »
