Friday, January 15th, 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.
« Hide it
Posted in Case Law, Legislation, Protection & Enforcement | No Comments »
Thursday, January 14th, 2010
Another marketing campaign has attracted criticism from the Vancouver Organizing Committe for the 2010 Olympic and Paralympic Games (VANOC). A story today reports that Scotiabank’s new “Show Your Colours” campaign, launched yesterday in Vancouver, has drawn VANOC’s ire. The bank’s campaign, appealing to Canadians’ sense of patriotism, asks Canadians to upload photos “that show Canada’s unique spirit”. The launch included an appearance by former womens’ hockey Olympian Cassie Campbell, who signed autographs and shared photos.
According to the story, VANOC “has serious concerns of the public being misled into believing there is an association between the 2010 Winter Games and [Scotiabank's] campaign”, though it is unclear as to the specific issues upon which VANOC’s concerns are based.
As evidenced by VANOC’s previous complaints about Lululemon’s winter marketing campaign, VANOC clearly remains concerned about ambush marketing, and is focused on protecting its sponsors. The Royal Bank of Canada, one of Scotiabank’s competitors, is an official sponsor of the 2010 Games.
The story indicates that Scotiabank officials and VANOC are in communication “to arrive at a mutually agreeable solution”.
« Hide it
Posted in Famous Marks, Protection & Enforcement | No Comments »
Wednesday, January 13th, 2010
The Canadian Intellectual Property Office (CIPO) recently launched a new consultation on possible Canadian accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Singapore Treaty on the Law of Trademarks (the Singapore Treaty).
This is not the first time CIPO has looked at the issue of Canada acceding to the Madrid Protocol. Five years ago a similar consultation took place. In response to a request for input, CIPO received feedback from the Intellectual Property Institute of Canada and from the International Trademark Association, though no further action was taken by CIPO at that time.
According to CIPO’s backgrounder to the current consultation, the intervening five years have seen important trading partners such as the United States join both the Madrid Protocol and the Singapore Treaty. As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices.
As many readers will be aware, the Madrid Protocol permits an applicant from a member country to file an application in its home country to register a trademark and to simultaneously file an international trademark application, under which the applicant designates other member countries in which the Applicant wishes to protect its mark. Registrability of marks covered by Madrid Protocol applications is still subject to the national laws of each member country that an international application is filed in.
The Singapore Treaty amends and expands on the Trademark Law Treaty of 1994 and aims to simplify and standardize many formalities and procedures relating to the administration of trademarks. It also covers new forms of marks, such as holograms, sound marks and smell marks. As with the Madrid Protocol, the Singapore Treaty does not affect substantive national trademark laws, such as the grounds on which applications for registration may be refused.
CIPO’s backgrounder seems to be slanted towards approval of both the Madrid Protocol and the Singapore Treaty, on the basis that they are necessary to align Canada’s trademark laws and procedures with “modern business practices”. Whether the benefits of these two treaties would outweigh the potential negative consequences and whether such benefits would accrue more to foreign applicants than to Canadian trademark owners, remains to be seen. While there are notable exceptions, Canadian brand owners tend not to file internationally as much as those from many other developed countries, such as the U.S. and the EU, and depending on various factors, the potential cost savings of filing under the Madrid Protocol generally arise only if an international application designates more than three member countries at the same time.
CIPO has asked for comments on its consultation to be submitted by March 15, 2010.
« Hide it
Posted in Foreign Protection, Legislation, Registration | No Comments »
