In addition, both of the earlier decisions stated that in order for prior use of a mark in Canada to be grounds for successfully expunging a registration, such prior use must have occurred in the same geographic area where the applicant used its mark; otherwise there could have been no likelihood of confusion at the time the application was filed.   In coming to the latter conclusion, both Courts appear, at least with respect to an action for expungement of a registration, to have imported into the test for likelihood of confusion, the test for common law passing off.   Given this, the decision of the Supreme Court of Canada on this issue will be eagerly awaited by practitioners.

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.

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.

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.

As noted in an earlier post, section 3 of the Act prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, any mark that resembles an Olympic or Paralympic mark.  Schedules 1 and 2 of the Act list the Olympic and Paralympic trademarks that are protected under the Act.

The additional marks added to Schedule 2 under the amendment include marks such as the Olympic mascots’ names (Miga, Mukmuk, Quatchi, and Sumi) and design marks representing pictograms for individual sports.  These marks have apparently been in use for some time but were either not in use or not known at the time the Act was originally brought into force and therefore not included in the original Schedule 2.

As noted before, the main purpose of the Act is to prevent ambush marketing.  Nonetheless, as we have reported in an earlier post regarding Lululemon’s recent clothing launch, businesses are finding creative ways to stay onside the letter of the law set out in the Act.

The bulletin summarizes that, in the US,  specific legislation prevents non-licensed use of the word OLYMPIC unless: (1) there was use with the same goods and services prior to September 21, 1950, or (2) it is obvious that the word refers to the Olympic geographic area named prior to February 6, 1998 and the word relates to goods or services that are marketed in the Olympic area and are not substantially marketed outside of that region.

In Canada, though VANOC has different enforcement tools at its disposal to prevent unauthorized persons from marketing their wares and services in association with the 2010 Olympic and Paralympic Winter Games, the results may be largely the same.   For example, the Olympic and Paralympic Marks Act (which we discussed in a previous post) prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that resembles an Olympic or Paralympic mark.  Lists of prohibited marks (including, of course, OLYMPIC) are set out in Schedules 1 and 2 of the Act.

The Act also prohibits anyone from promoting or otherwise directing public attention to a business in such manner as to lead the public into believing that there is a connection with the Canadian Olympic Committee or Canadian Paralympic Committee.   Perhaps most notably, this Act permits VANOC to obtain an interim injunction against alleged infringers without proof of irreparable harm, which is a significant and unprecedented advantage.

As regular readers know, s. 45 of the Trade-marks Act provides a mechanism by which an interested party can seek to summarily expunge a registered trade-mark for three years of non-use.  CIPO sought public input on a proposed changes to s. 45 practice earlier this year, and last week introduced its new practice notice, which is slated to come into effect on September 14, 2009.

Like the recent changes to Opposition proceedings, the changes to s. 45 practice appear aimed at streamlining the process.  Most notably, the planned changes limit the extensions of time available for the submission of evidence.  The current standard is an extension of three months with additional extensions available on consent or if exceptional circumstances are shown.  The new standard provides for one extension of four months, and establishes that grants of additional extensions will be rare: neither the the consent of the parties to additional extensions, nor the parties’ engagement in settlement discussions  will be seen by the Office as sufficient reason to provide additional time.

Similar changes are being implemented respecting the filing of written argument.  Under the current regime, the parties are initially provided two  months to file argument, with a three month extension of time available on request.  Under the new regime, the parties will be given four months to file their arguments, with no extensions of time being made available.

The last significant adjustment relates to hearings.  In particular, participants under the new regime will not be able postpone hearings on consent or for reasons relating to the participants’ engagement in settlement discussions.  While hearings may still be rescheduled if one or more of the parties who had sought to be heard is unavailable on the prescribed date, the practice notice indicates that such rescheduling will likely only be permitted on a single occasion.

Also notable is one point of practice that is not changing:  under the new regime it will remain possible for parties to seek the termination of the proceedings by filing a written request with the Registrar.  As under current practice, it is up to the discretion of the Registrar whether to accede to such a request.

Since June 17, the Office has been providing six month periods to respond to Examiner objections, as opposed to the four month window previously provided.  In addition, the Office is no longer issuing ‘doubtful case’ or ‘courtesy letters’ – those letters that were sent to trade-mark applicants identifying co-pending applications for allegedly confusing marks having a later entitlement date.

This latter change reinforces the importance of both having watch services in place, and regularly reviewing the Trade-marks Journal for the advertisement of marks of interest.

As such, the decision from the Court of Appeal will stand: Glenora Distillers will be permitted to register its application for GLEN BRETON.

CIPO is now engaged in a new consultation – this one concerning three separate issues.  The first concerns deadlines for responding to Examiner reports.  CIPO is proposing to extend the deadline for responding to such reports from four to six months.

The second concerns deadlines for responding to CIPO’s requests for outstanding information concerning transfers.  Here, CIPO is proposing doing away with such deadlines altogether, though of course the transfer will not be effected it CIPO’s records until all required materials have been provided.

Finally, the third proposed change concerns “doubtful case” or “courtesy letters” – the letters CIPO sends to alert trade-mark applicants about co-pending applications to register allegedly confusing marks having a later entitlement date.  CIPO is proposing to discontinue the issue of such letters.

The consultation period ends June 11, 2009.