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You Know The Olympics Are Over When…

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The Canadian Intellectual Property Office (CIPO) sent out a reminder today, advising that pursuant to the Olympic and Paralympic Marks Act (OPMA), marks and expressions listed on Schedules 2 and 3 of that Act will expire on December 31, 2010.   As a result, commencing on January 1, 2011, CIPO will no longer raise an objection pursuant to Section 12(1)(i) of the Trade-marks Act on the basis that an applied for mark consists of or so nearly resembles as to be mistaken for a mark or expresssion found in either of those Schedules. 

As regular readers of this blog will recall, the Canadian government enacted this legislation well in advance of the 2010 Vancouver Olympic Winter Games (Vancouver Games), to provide the organizers of the Vancouver Games (VANOC) with another very useful tool in their fight against unauthorized use of numerous trademarks and symbols that are associated with the Olympics generally and more specifically those associated with the Vancouver Games.  Schedule 1 to the OPMA, which sets out various Olympic marks that are not specific to any particular Olympic Games, will remain in force.  Schedules 2 and 3 set out various marks and expressions that are specific to the Vancouver Games and as those games are now part of history, the need to protect those marks and expressions is no longer justifiable.

It was Schedule 3 in particular that raised the ire of some pundits, since it specified that a combination of words from Part 1 with words from Part 2 of that Schedule – including seemingly innocuous combinations of words such as “21st” or “Tenth”, with words such as “Winter” or “Whistler” – could be used as evidence in support of a finding that a person was promoting their business, goods or services in a manner likely to mislead the public into believing that there was an approval, authorization or endorsement by, or a business association with, the Canadian Olympic Committee (COC) or the Canadian Paralympic Committee (CPC).  This, coupled with the ability of VANOC or the COC/CPC to obtain an interlocutory injunction without having to prove that they would suffer irreparable harm, made the effect of these provisions very far reaching.

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Neil Melliship is a Partner and co-chair of the Intellectual Property and Information Technology practice groups at the Vancouver-based Canadian law firm of Clark Wilson LLP. Neil is a lawyer and a registered Canadian Trademark Agent, who actively speaks and writes on trademark and other IP issues including those relating to the Internet, domain name disputes and e-commerce. Neil is consistently rated as a Leading Trademark Practitioner—Individuals: Prosecution and Strategy, by the World Trademark Review (WTR) 1000. Neil is also listed in the Canadian Legal Lexpert Directory as Rated Repeatedly Recommended in the area of Intellectual Property. He has also been repeatedly named by Best Lawyers in Canada in the categories of Intellectual Property Law, Technology Law and Information Technology Law.