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.
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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.
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Wednesday, January 13th, 2010
Further to an earlier post, the Canadian Intellectual Property Office (“CIPO”) has announced a change in practice with respect to the granting of extensions of time in examination. This new Practice Notice will come into effect on March 11, 2010.
Currently, responses to examiner’s reports are due within six months of the date of issuance of the report. Under the changed practice, CIPO will grant an applicant one extension of time up to a maximum of six months to respond to the examiner’s report, “if the request is justified”.
Once 12 months from the date of the examiner’s initial report has expired, CIPO will require the applicant to demonstrate exceptional circumstances to justify why it is not possible to respond to all objections raised or requests made in the examiner’s report.
CIPO has provided a list of examples of what could constitute an exceptional circumstance to justify a further extension of time, as follows:
- recent change in trade-mark agent for the applicant
- circumstance beyond the control of the person concerned (e.g. illness, death, bankruptcy or other serious or unforeseen circumstances)
- recent assignment of the trade-mark
- certified copy of the corresponding foreign registration (for applications including a claim of registration and use abroad) is not available as the foreign application has not issued to registration
- if a cited co-pending and confusing application is the subject of an opposition proceeding initiated by the applicant or if the application is going to be abandoned with the next two months
- if the cited registered mark is subject to a summary expungement proceeding (under Section 45 of the Trade-marks Act) initiated by the applicant
- if the applicant is negotiating for the consent from the holder of a cited official mark
It appears from the text of the practice notice that this list is illustrative and not exhaustive.
While this streamlining should result in faster prosecution of trade-mark applications, the shortened time frames will mean that applicants and their agents must act quickly to prepare full responses to examiner’s reports.
However, the practice notice perhaps raises more issues than it answers. For example:
- When seeking the first six month request, CIPO indicates it will be granted where “the request is justified” – yet it is not clear what will constitute a justifiable request under this new regime.
- CIPO has not indicated what time frame it considers as “recent” (with respect to a change in agent or an assignment of mark).
- Section 45 proceedings are often initiated by agents (on behalf of applicants) rather than the applicant itself, in order to shield the identity of the agent’s client. However, it remains unclear if CIPO will grant a further extension on the above criteria if the Section 45 proceeding does not list the applicant as the requesting party.
- It is not clear if CIPO will require “proof” of negotiations between an applicant and the holder of an official mark for consent to the registration of the mark.
- There seems to be an element of subjectivity raised by the wording “could amount to an exceptional circumstance”.
As well, examiner’s reports are still paper-based and delivered by postal mail. If streamlining is indeed the goal, streamlining the method of delivery of examiner’s report to include email would aid in the process.
Time will tell if this new practice will result in more effective prosecution of applications or if this “streamlining” will cause more problems than it is intended to remedy.
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