Eloise Somera is a 3L JD Candidate at Osgoode Hall Law School.

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Alessia Monastero is an Associate Lawyer at Bhole IP Law and a Deputy Editor for the IPilogue.

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On April 19, 2021, Canada’s Minister of Finance Chrystia Freeland . In a recent interview with Elle AyoubZadeh – the founder of , – we talked about all things fashion, trademarks, and women empowerment.

Elle always knew she was a purpose-driven person. While she started her career at a global investment management firm on Bay Street, Elle left her corporate lifestyle to start what would be her first entrepreneurial venture, a concept store that combined luxury retail products with wine and skin care. In all of her roles, one thing that stood out to Elle (and likely, to a number of women), was the unreasonable and unattainable standards set by the fashion industry. As a result, Elle married her passion to redefine the story of women with her passion for well-crafted products, especially shoes, to create the Zvelle brand. Thus, the phrase “Walk How You Want”, , was born.

What goes into a brand name? Elle told us that she wanted something unique and distinctive. Luckily for her, Zvelle fit these criteria. “This brand was bigger than me and so, I did not want to just use my name”. Elle knew that if she was to build a company as successful as Zvelle is today, she had to consider certain brand elements early on in her business. When considering brand names, she and her lawyer came across an existing retailer which could have potentially caused confusion between the two companies. When they came across this roadblock, Elle was at the stage of her business where rethinking her brand name was a viable alternative. This challenge ultimately led to the creation of the Zvelle brand.

Elle noted, however, that when it comes to intellectual property protection, the fashion industry can be a difficult space. “It is rare to be the first creator of a piece and its design. Fashion brands get their inspiration from one another, whether they are aware of it or not.”

As a result, Elle focuses on ensuring that each of her handbags and pairs of shoes has the “Zvelle touch”, consisting of high-quality materials and impeccable crafting. By ensuring that each Zvelle product is special and unique to the brand, Elle is confident that competitors will always have difficulty copying her designs and convincing consumers of authenticity.

Photo Credits: .

During our chat, Elle left us with three valuable lessons.

First, Elle’s journey to create Zvelle consisted of many life-changing moves. Elle reminded us that where you start is not necessarily where you will end up. To all the new and experienced lawyers alike, this is a great reminder to continue learning and exploring our interests in the legal field.

Second, to those interested in entering the fashion industry and starting a brand, Elle emphasizes the importance of being realistic and coming up with a feasible legal plan. Like Elle’s approach with Zvelle, it is important for entrepreneurs to prioritize their brand’s survival and reputation while planning a realistic intellectual property strategy. To Elle, a brand is not just what you wear, or the physical products created. What others say about your company is often one of the most influential aspects of building a reputable brand. The Zvelle brand, for example, empowers women and encourages women to move through the world in their own way.

Finally, Elle encourages intellectual property law students and lawyers to not only be experts in their field to assist clients, but to also develop an entrepreneurial mindset to better understand a client’s business model.

After speaking to Elle and learning about her business, we can confidently say that the Zvelle brand fully encompasses and encourages consumers to walk how they want. With a brand so aligned to its fundamental values, it is no wonder that Elle continues to grow and build out the Zvelle community far beyond the world of shoes.

The post Learning to Walk How You Want with Elle AyoubZadeh appeared first on IPOsgoode.

Though Sangeetha has built a practice in intellectual property, she did not come into law school with the sole intention of becoming an IP lawyer. “I have a science background, but didn’t know much about the practice of law, or even intellectual property, before starting law school. I took all the foundational courses in first year to keep my options open, and was an RA for an Osgoode professor during my first year summer. I took a copyright course in second year with Professor Carys Craig, and that piqued my interest in IP and lead to courses in patents and trademarks. Those were the courses I enjoyed the most in law school. Also, during my second year summer, I worked at Parkdale Community Legal Services, which provided my first exposure to litigation. We had the opportunity to examine witnesses and make submissions at oral hearings. My litigation experience at Parkdale changed my legal path. I ended up articling at Dimock Stratton LLP, a boutique law firm that specialized in intellectual property litigation, and this experience launched my career in IP. I loved the work that I did during my articles and I really liked the people who were mentoring and teaching me.”

Sangeetha has appeared as counsel before the Supreme Court of Canada, the Federal Court, the Ontario Court, the Trademarks Opposition Board, and the Competition Tribunal, and also has an active prosecution and opposition practice focused on global trademark portfolios. Even with years of experience, an intellectual property practice comes with its challenges: “IP is such a fun area of law. The hard part on the advisory and litigation front is that nothing is ever certain: you can give odds or a likelihood that a case will go in a certain direction but you never really know how the evidence will come out or how a Judge will decide. On the protection front, there is a view that IP protection will garner automatic commercial success but it doesn’t work that way. Sometimes IP is a sword, other times, it is a shield, and sometimes it is broader than a sword and shield. A good IP team can help businesses decide how to creatively protect and enforce key business assets.

Sangeetha also notes how the practice of IP law has evolved: “The practice of IP law has become increasingly global. Although laws are largely jurisdictional based, a more global approach is taken by clients both with litigation and prosecution matters. Canada may not be the key market for most clients, but we always play a role. In the future, I see IP law becoming even more collaborative with international players. Even with more international collaborations, any skilled practitioner has to know their own jurisdictional landscape and how to creatively and quickly adjust to challenges, and maximize the pros and cons of your jurisdiction within the global strategy.”

Though Sangeetha has already had nothing short of an exceptionally successful career in intellectual property, she defines success in the role of an IP lawyer and litigator as someone who has a continuous desire to learn and is supported by a great team. “Especially when it comes to patents, when you learn about a technology, you need to understand it as well as the inventor. It always comes down to hard work and learning about the client’s business to best advise them on their IP strategy. The most important thing that you bring as a lawyer is critical thinking, which is a learned skill.

As a student or junior lawyer interested in pursuing a career in intellectual property, Sangeetha encourages individuals to continue to learn about the area. “If you think you’re interested in IP, talk to IP practitioners, take IP courses, utilize the incredible IP Osgoode resources, join committees, give me a call! It’s important to learn as much as you can and have a desire to work hard. When I meet a candidate, I want to know why they want to work in IP and perhaps more importantly, who they are, their beliefs, and the challenges they have faced in their lives. At the end of the day, your legal practice is just one facet of your life, albeit a large one, and therefore you want to work with the best team possible.”

Written by Alessia Monastero, Intellectual Property and Branding Lawyer and IPilogue Senior Editor.

The post So You Want to be an IP Litigator? Interview with Sangeetha Punniyamoorthy of DLA Piper appeared first on IPOsgoode.

The hundredth meridian is the longitudinal line that roughly separates the semi-arid, rural regions of Western Canada from the humid, more urban regions of the Central and Atlantic provinces. But for many, the term was first brought to life by the beloved Canadian rock band, The Tragically Hip.Ìę

About the Lawsuit
On February 9, 2021, over the Toronto-based brewery’s “100th Meridian Amber Lager”. The band released its hit single “At the Hundredth Meridian” in 1992, which currently has nearly on its official music video alone. The Tragically Hip claims that Mill Street Brewery has engaged in a course of conduct to “ride on the coat tails of one of the most beloved bands in Canadian music history by marketing its beer with reference to The Tragically Hip and one of its many quintessentially Canadian chart-topping tracks”.

The Problem
A concern with Mill Street Brewery’s “100th Meridian” branded beer is the effect and implied association that the band’s fans may have with the product. In naming the beer after one of The Tragically Hip’s most popular tracks, fans may incorrectly assume a connection or association between the two. Indeed, a certain sense of injustice seems to come with the idea of Mill Street Brewery selling beers to consumers in a way that hints at a (non-existent) partnership. As such, The Tragically Hip is alleging that Mill Street Brewery has “directed public attention to its good [...] in such a way as to cause or be likely to cause confusion in Canada,” and has made “representations to the public that are false or misleading”.Ìę

This claim is made in tandem with various passing off, trademark infringement, and copyright infringement allegations. Notably, The Tragically Hip has claimed that . In 2015, Gord Downie, The Tragically Hip’s late lead singer, was diagnosed with terminal brain cancer, spurring one last national tour across Canada the following year. On August 20, 2016, the day of the final show of the “Man Machine Poem” farewell tour, Mill Street Brewery published a photograph on its Instagram page of its 100th Meridian branded lager among four of The Tragically Hip’s album covers, which were clearly visible. The Statement of Claim outlines numerous such instances of Mill Street Brewery’s promotion of its “100th Meridian” branded beer that may lead consumers to infer a connection, collaboration, and association with the band.Ìę ÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌęÌę

According to the Statement of Claim, Mill Street Brewery’s purported justification for its “100th meridian” branded beer is that , and does not refer to The Tragically Hip’s song, reputation, and goodwill. After all, the hundredth meridian (in the geographical sense) existed long before The Tragically Hip popularized its name. However, there does seem to be a disconnect between Mill Street Brewery’s claims and the driving force that backs their marketing efforts. One may certainly argue that, at least in the minds of the public conscience, the “100th meridian” would not bear the meaning it does at all if not for its notoriety as part of The Tragically Hip’s hit single.Ìę

Additionally, The Tragically Hip has claimed that if the use of “100th meridian” was indeed solely a reference to the place of origin, the in 2015 would be invalid and should be expunged, as they are either clearly descriptive or deceptively misdescriptive of the place of origin of the goods, given that the goods do not originate from solely west of 100°W.Ìę

Paying Homage or Infringement?Ìę
Mill Street Brewery may also try to contend that the marketing of the lager with reference to The Tragically Hip on social media was intended as an homage to the band’s legacy, and that the right to use of the band’s brand in doing so should be liberated. There is, however, a fine line when it comes to using intellectual property under the guise of “paying homage”. For instance, in 2015, , alleging that the song had copied numerous aspects of Gaye’s 1977 song “Got to Give It Up”. In that case, both Williams and Thicke testified to have drawn “inspiration” from works like that of Gaye’s. The final jury-verdict, however,Ìęsuggests that creating music “reminiscent” of an era, or that pays homage to the musical greats of the past, . In the present case, The Tragically Hip may argue that they alone should be able to autonomously manage their own brand, image, and associations.Ìę

What’s Next?
The Tragically Hip has requested an order compelling the defendant to remove all posts referencing the band, an order compelling the defendant to publicly deny any association between their product and The Tragically Hip, and various claims for damages, including $500,000 in punitive, aggravated, and exemplary damages.ÌęClearly, taking this dispute to court will not be a painless maneuver for Mill Street Brewery, especially considering the amount of press the lawsuit has already received. Professor Pina D’Agostino, founder and director of IP Osgoode at Osgoode Hall Law School, shared with that she expects Mill Street Brewery will want to settle.

What might this lawsuit mean for breweries and bands in the future? If ruled or settled in its favour, The Tragically Hip would set a precedent with respect to the consequences that unassociated parties may face in branding their products in a way that benefits off of the reputation of another without permission. More broadly, this lawsuit should serve as a reminder to brand owners to thoroughly assess and develop products and marketing strategies that comply with others’ intellectual property rights, and if there is a grey area, to strategically assess whether consumers may misconstrue a branding tactic as something that it is not. With proper collaborations and partnerships in place, there is in creating mutually beneficial products.Ìę

Written by Emily Xiang, Osgoode JD candidate and IPilogue Contributing Editor, and Alessia Monastero, Intellectual Property and Branding Lawyer and IPilogue Senior Editor.

The post Of Bands and Breweries: The Hip Sues Mill Street Over “100th Meridian” Beer appeared first on IPOsgoode.

Alibaba's Tmall Luxury Pavilion is an invite-only e-commerce platform for luxury brands. Though consumers have comfortably shifted to online shopping, many luxury brands have been hesitant to venture into e-commerce, concerned about selling their products alongside brands whose image and quality of goods are not of the same caliber. Though Alibaba's Tmall Luxury Pavilion where “luxury brands can deliver the same kind of exclusivity and custom-tailored shopping experience online as they offer in their brick-and-mortar stores,” Gucci waited three years since Tmall launched in 2017 to finally join the platform.

Kering, the French Luxury group that owns the Gucci brand, has also announced plans to against Alibaba. In the lawsuit, which has been ongoing for five years, Kering sued Alibaba for alleged counterfeiting. In an agreement between Kering and Alibaba in 2017, the two companies agreed to to protect Kering’s brands (which also includes Saint Laurent, Bottega Veneta, Balenciaga, Alexander McQueen), and utilize Alibaba technology to help regulate and remove counterfeited products from the platform. A notes that the companies have “come to a groundbreaking agreement to cooperate in their efforts to protect intellectual property and take joint enforcement actions online and offline against infringers in order to provide the best consumer experience and a trusted environment.”

Alibaba has faced various allegations in the past that its online shopping sites do not proactively prevent the sale of copyright-infringing products, which has been a significant concern for luxury and everyday brands across various e-commerce platforms. In October 2020, priced over $100 in order to address counterfeiting issues. The seller will now be required to send the sneaker to an independent third-party authentication facility for a comprehensive inspection before shipping. After verification, eBay will use expedited shipping to send the sneakers to the buyer. Forbes from Jordan Sweetnam, the SVP and General Manager of eBay in North America: “eBay operates the world's most diverse sneaker marketplace—with the widest selection and best prices—and by removing any uncertainty with the buying process, our community can buy and sell with total confidence.”

The Consumers Council of Canada , highlighting the concerns faced by brand owners and consumers alike with respect to the counterfeiting and pirating of consumer goods and services. Strikingly, the report notes that law enforcement agencies have reported an increasing concern that distributors of counterfeit goods are associated with organized crime and terrorist groups.ÌęÌęÌęÌęÌę

A notes that "in 2018, Gucci chief executive Marco Bizzari said during BoF’s China Summit that he was reluctant to partner with China’s e-commerce platforms due to concerns regarding counterfeits." Though counterfeit products continue to remain a pressing concern for branded goods, innovation, and consumer health and safety, with the COVID-19 outbreak pushing retailers to move online, it is unsurprising that Kering's Gucci brand has moved in the direction of partnering with Tmall.

Alessia Monastero is an Intellectual Property and Branding Lawyer and IPilogue Senior Editor.

The post Gucci Joins Tmall e-tailer, Kering drops lawsuit against Alibaba for Counterfeiting appeared first on IPOsgoode.

Top 10 Most Read Blogs of 2020

COPYRIGHT LAW

CUSMA Implementation

On July 1, 2020, the (CUSMA) officially came into force, replacing the North American Free Trade Agreement (NAFTA). Signed in 2018, the desired effect of CUSMA is to preserve existing trade relations between the three North American countries, and to introduce modernized provisions that address 21st-century trade issues. In particular, the builds upon the legal framework of standards in North America for the protection and enforcement of IP rights.Ìę

Regarding copyright and related rights, Canada is increasing the duration of its term for general copyright protection from 50 to 70 years following the life of the author. Canada will have a two-and-a-half-year transition period to realize this new measure. Additionally, the term of protection for performances and sound recordings will also increase from 70 to 75 years plus life. CUSMA will also increase protection for Rights Management Information (RMI), also known as digital watermarks. While Canada already imposes criminal remedies for altering or removing Technological Protection Measures (TPMs, or digital locks), the Agreement creates new criminal remedies for circumventing RMI. Organizations will have to be mindful when implementing these new provisions to ensure that their practices align with CUSMA’s new obligations.

Canadian Copyright Case Law

91ŃÇÉ« v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91ŃÇÉ« (“91ŃÇɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91ŃÇÉ« by the Copyright Board are not mandatory, but dismissed 91ŃÇɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91ŃÇÉ« for non-payment of tariffs, arguing that they are mandatory and enforceable against anyone who infringes upon a copyright owner’s exclusive rights. Following this decision, both parties filed for leave to appeal the FCA decision to the Supreme Court of Canada.

Tariffs
The FCA held that the tariffs set by the Copyright Board are not mandatory. Because 91ŃÇÉ« opted out of the tariffs in 2010, they are not enforceable against 91ŃÇÉ«. On this issue, the FCA stated, “Acts of infringement do not turn infringers into licensees so as to make them liable for the payment of royalties. Infringers are subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee.”

Fair Dealing
91ŃÇÉ« argued that it was not accountable for any tariffs associated with the reproduction of materials because they met their “” and therefore constituted fair dealing pursuant to section 29 of . On this issue, the FCA found that the Federal Court made no palpable error in its analysis, concluding that even though copying followed the guidelines, this did not necessarily make it a fair dealing.

Continuing into 2021
On October 15, 2020, the Supreme Court of Canada granted leave to appeal. This eagerly anticipated decision will affect many of Canada’s educational institutions who opted out of paying tariffs and have also followed the Fair Dealing Guidelines discussed in this decision. Further, a Supreme Court decision in 91ŃÇɫ’s favour will surely cause businesses who rely on similar tariffs to rethink their business model.

Wiseau Studio, LLC et al. v. Harper et al., 2020 ONSC 2504

On April 23, 2020, Justice Paul Schabas’ released his decision in the case of . Filmmaker Tommy Wiseau brought a claim against the defendants, alleging that their documentary, Room Full of Spoons, about Wiseau’s film, The Room, breached his copyright. In his reasons, Justice Schabas provides artists in Canada with an authoritative statement defining documentaries an allowable purpose under the Copyright Act’s fair dealing provisions, “to the extent that a documentary uses copyrighted material for the purposes of criticism, review or news reporting.”

The decision affirms fair dealing as a user’s right, as opposed to a defense to the copyright infringement alleged by the plaintiff, solidifying the balancing of rights and freedoms as a core purpose of the Canadian Copyright Act. In addressing the Copyright Act’s fair dealing provisions, the Court offers useful guidance to documentary filmmakers wishing to stay on-side with section 29 through an analysis of the factors outlined in . A more in-depth discussion can be found . As well, Justice Schabas’ reasons address the Copyright Act’s moral rights provisions, fundamentally finding that criticism or negative tones alone will not trigger a breach of an author’s right to the integrity of a work.

Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada 2020 FCA 100 & CMRRA-SODRAC Inc. v. Apple Canada Inc., 2020 FCA 101

On June 5, 2020, the Federal Court of Appeal released two decisions (2020 FCA 100 and 2020 FCA 101) which ruled on the applicability of the “making available right” (“MAR”) under s. s.2.4(1.1) of the Copyright Act. The FCA found that songwriters are not entitled to royalties when music is first posted online, but only after it has been downloaded. This decision overturns a 2017 ruling from the Copyright Board, which found that composers and songwriters are entitled to two royalties: first when it is made available under a streaming platform such as Apple Music or Spotify, and second when the song is downloaded or streamed.

By way of background, The Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) administers the right to “communicate” musical works on behalf of copyright owners. It filed with the Copyright Board proposed tariffs for certain years for the communication to the public by telecommunication of works in its repertoire through online music services including Apple Music and Spotify. These tariffs are available when a musical work is “communicated.”

After SOCAN had filed its proposed tariffs, the Copyright Act was amended to include the MAR Provision, which reads as follows:

For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.

This raised the question of whether the mere making available of a work on a server for the purpose of later streaming or download by the public was a “communication” for which a tariff was payable. In 2017, the Copyright Board concluded on the basis of expert witnesses that the double royalty scheme is available.

Stratas J, writing for the FCA, overturned this conclusion and stated that the Copyright Board "skewed its analysis in favour of one particular result" and relied on "leaps of reasoning" that are incompatible with the precedent set out in the Supreme Court of Canada’s (SCC) 2012 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada decision. In that decision, the SCC concluded that transmission over the Internet of a musical work that results in a download of that work is not a communication.

PATENT LAWÌę

The Impact of COVID-19 Legislation on the Patent Act and Patentee Rights

(“An Act respecting certain measures in response to COVID-19”) received Royal Assent on March 25, 2020.Ìę Included in this bill was the addition of section 19.4 to the which significantly changed the rights of patent owners this year. For instance, while section 19.4 allowed the to authorize the government’s use of previously patented inventions to respond to a public health emergency, the Commissioner’s new powers permitted authorization to be granted to other entities as well. In addition, there was no requirement for applicants (be they the government or otherwise) to inform the patentee in advance of applying for authorization to use its patent. This meant that patentees received no notice if an applicant applied to use its intellectual property. Instead, patentees only received notice if the Commissioner granted authorization to the applicant following their submission. Moreover, section 19.4 precluded patentees to an express right of appeal of the Commissioner’s authorization. Instead, patentees were left to rely on section 19.4(8) of the Act and had to apply to the Federal Court to prevent the government (or any applicant) from “making, constructing, using or selling the patented invention in a manner that [was] inconsistent with the authorization.”

While patentees seemingly received little benefit from the Patent Act's amendments mentioned above, the legislative changes offered some positive developments for patent owners. For example, pursuant to s.19.4(5), holders of the patent are compensated for government use, “taking into account the economic value of ‘the authorization and the extent to which they make, construct, use and sell the patented invention.’” Additionally, as of September 30, 2020, the Commissioner can no longer award the government with any authorizations, which effectively serves as an imposed limit on the Commissioner’s powers. While COVID-19 may arguably be captured by other provisions of the Patent Act (cf. s. 19 or s. 21), s. 19.4 clarifies the boundaries of government uses of patents for public health emergencies.Ìę

CIPO Issues New Guidance Document After Federal Court Rejects Problem-Solution Approach to Claim Construction

Following the 2020 Federal Court decision in , CIPO released a new to clarify patentable subject matter under the Patent Act. The court, and CIPO, endorsed the purposive construction approach to constructing claims set out in 2000 by the SCC in and . The new guidelines cover the framework to be followed by patent examiners while identifying certain elements of patent claims as essential. CIPO’s earlier pointed at undertaking claim analysis, which involved identifying the “proposed problem to the disclosed solution.” The Federal Court in Choueifaty clarified this problem-solution test as incorrect for claim construction.

The Federal Court held that a correct approach looks at the entirety of the specification and presumes an element as essential unless demonstrated to the contrary. Purposive construction attempts to give effect to the intentions of the applicant in determining the scope of the claimed monopoly.

This is particularly important for computer-implemented inventions. CIPO, in the , clarified that an algorithm that improves the functioning of the computer would constitute a single invention and is patentable subject-matter. However, the mere use of a computer to execute an algorithm remains nonpatentable subject-matter under subsection 27(8) of the . This update has brought much needed clarity to the subject matter eligibility issues in computer-related patents.

TRADEMARK LAW

Claims to Official Marks not a Complete Defence to an Infringement ClaimÌę

In February 2020, the Federal Court of Appeal upheld the Federal Court’s decision in , finding that public authorities cannot rely on relating to official marks as a complete defence against an infringement claim. At its most basic level, official marks allow public authorities to , even those that may not otherwise be registered as regular trademarks. Quality Program Services Inc. (QPS) brought a Federal Court claim against the Ministry of Energy (MOE) for infringing their “EMPOWER ME” trademark related to energy awareness, conservation, and efficiency services. The MOE had launched a website with the mark “emPOWERme” to educate Ontario residents about the province’s electricity system. In response to QPS’s claim, the MOE sought protection and public recognition of its mark as an official mark pursuant to which states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for
 any badge, crest, emblem or mark
adopted and used by any public authority, in Canada as an official mark for goods or services.”

However, the Federal Court was not persuaded that s. 9 provided the MOE complete immunity from an infringement claim. Instead, it was recognized that the infringement rights of a trademark holder, such as QPS under , could not be ignored simply because a public authority has been given public notice of its adoption and use of an official mark, especially when that mark follows a registered trademark which could cause confusion between the two marks, as was the case here. The Federal Court of Appeal further that “a public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril.” As a result of this case, we get more clarity and limitations to the confusing and all-encompassing world of official marks. While it is clear that official marks following an existing trademark do not automatically strike down an infringement claim, the official mark and the preceding trademark must be similar in some way to set off a trademark confusion analysis.

Lack of Use is Insufficient for Opposing a Trademark Application

In , the Federal Court affirmed the Registrar’s decision to reject Pentastar Transport Ltd’s opposition to Fiat Chrysler Automobiles (FCA) US’s trademark application for Pentastar. Pentastar Transport Ltd owns a registered mark Pentastar for its oil and gas services, whereas FCA US applied to register Pentastar for its vehicle engines. Pentastar’s ground of opposition is that FCA US did not possess a genuine intention to use Pentastar for its engines, which contravened s. 30(e) of the old Trade-Marks Act. As summarizedÌę, “opposition proceedings involve a two stage inquiry. First, the opponent bears an evidential burden to establish that the facts alleged to support the issue exist. If established, then the applicant bears a legal burden to show that its application does not contravene the provisions of the Act as alleged.” The Court upheld the Registrar’s factual finding that Pentastar did not adduce sufficient evidence as the factual ground of its opposition. The Court also agreed with the Registrar that “use” and “intended to use” were not synonymous. In this case, this ruling entails that even though FCA US had not started using Pentastar as a trademark on its engines, it did not follow that FCA US had no intention to use it in the future. In fact, there was circumstantial evidence (as summarizedÌę) indicating that FCA US indeed harbored the intention to use Pentastar as a mark for its engines.

United States Supreme Court Developments

In April 2020, the United States Supreme Court decided the case . The Court determined that even an innocent trademark infringer could lose its profits and that wilful infringement is not a pre-condition to a profits award. The Court came to this determination by interpreting which does not mention the condition of wilful infringement. Fossil was liable for $6.7 million in profits to Romag, for using counterfeit Romag fasteners in its manufacturing of leather goods.

In June 2020, the Court in held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Booking.com sought to register a mark with the USPTO but was denied because “Booking.com” was not a generic name to consumers. Therefore, the term was not held to be generic. The USPTO analyzed the terms “Booking” and “.com” separately. This decision suggests that domain names may need to be marketed to consumers as such to be trademarked.

Trademark Law and Sports in 2020

With all its troubles, 2020 has also been an eventful year for trademark lawyers in sports. In February, a Maryland-based nonprofit Game PlanÌęÌęagainst Lebron James and his commercial associates, including Nike, ESPN, and Take-Two Interactive. Game Plan claims that Lebron and his associates had encroached upon its trademark rights by unauthorized use of the registered slogan “I am more than an athlete” to make profits. In April 2020, Michael JordanÌęÌęin China that had dragged on for eight years. China’s highest court ruled in favor of Jordan against a Chinese company which had been marketing its sports products under the brand name Qiaodan - a Chinese transliteration of Jordan - since the 1980s.

In September, soccer superstar Leo Messi’s legal teamÌęÌęEurope’s highest court that Messi should be granted the exclusive right to the brand name Messi. Other similar names, such as “Massi,” should be disallowed for commercial purposes to avoid confusing the consumers. Lastly, although the Washington Football Team (formerly, Washington Redskins) changed its name in 2020, it now runs intoÌę. As it turns out, many alternative team names have already been registered by a trademark squatter Martin McCaulay. Washington fans may need to wish for the new year that their team will receive a new name that neither infracts trademark law nor carries racist connotations.

Fashion Trends Followed by Brand Owners throughout the PandemicÌę

As it is said, every crisis brings new opportunities. While some members of the general public may have doctor-recommended masks in the early months of the pandemic, they have become a trend for upcoming years. As a result of this trend, big luxury brands tapped into this unchartered territory just after theÌęÌę in July. Luxury fashion companies are now monetizing their brand value through thisÌęÌęi.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands likeÌęÌęhave already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,ÌęÌęfor its uniquely styledÌęToile Monogram print for itsÌęFace Shield, filed forÌę“protective face shields; protective masks; protective chin shields; [and] protective gloves” (class 9), and “face masks for medical use; Surgical masks; protective face shields for medical use; protective chin shields for medical use; [and] gloves for medical use” (class 10).ÌęÌę

On the other hand, , Nike, andÌęÌęmasks also lead the charts of most searched and purchased masks.ÌęSmall and high street brands are attempting to claim proprietary rights in these trademark classes because of the long-term monetary potential. The new fashion ornament brings in value, and the brand owners wish to benefit from damages in infringement and counterfeits cases. Counterfeits are also escalating on e-commerce portals, such asÌę. A Chinese company has filed a trademark infringement suit for its brandÌęÌęin the Illinois state. Furthermore, on December 14, 2020 theÌęÌęannounced an initiative to accept expediated examination requests for trademark applications for COVID-19 related goods and services, which include sanitary masks and other things. In view of this, we can predict anÌęÌęfrom such luxury and burgeoning fashion brands.ÌęÌę

Bricks and Mortar Presence No Longer Necessary to Establish Use of a Trademark

In the past, the Federal Court of Canada has been unclear as to the fate of travel-related services that do not have a physical presence in Canada, but seek to maintain their Canadian trademark registration through regular use. However, following the Federal Court of Appeal’s decision in , that fate has been clarified in favour of travel-related services. Since 2014, Miller Thompson has tried to expunge Hilton’s WALDORF ASTORIA trademark given that it did not offer physical WALDORF ASTORIA hotel-related services in Canada. As such, Miller Thomson commenced proceedings under s.45 of the Trademarks Act, which would require Hilton to show use of its WALDORF ASTORIA trademark during the three years prior to the proceedings, known as the Relevant Period.

But, on September 9, 2020, the Court of Appeal upheld the Federal Court’s decision that Hilton had demonstrated use of their WALDORF ASTORIA trademark during the Relevant Period. Among other evidence presented by Hilton, during the Relevant Period, Canadians could see the WALDORF ASTORIA trademark when visiting their website and could book reservations in several ways, including directly on the site. As well, Canadians generated $50 million in revenue for Hilton as a result of their stays at WALDORF ASTORIA hotels outside of Canada. Thus, the Court of Appeal summed up the as follows: “so long as consumers, purchasers, or members of the public in Canada receive a material benefit from the activity at issue, it is a service.” This means that online reservations and payment services for later stays outside of Canada are included under the meaning of “hotel services.” Furthermore, a brick and mortar hotel is no longer absolutely necessary to establish use. In fact, in the Court of Appeal’s conclusion, it stated that “the requirements for ‘use’ under section 45 of the Act must adapt to accord with 21st century commercial practices.” For other trademark owners facing the same issue as Hilton, the Federal Court of Appeal provided guidance on how to make a , including website metrics showing that Canadians access their services online and subsequently purchase services as a consequence of their mark being displayed.

Trademark Modernization Act of 2020 Passed

On December 21, 2020, Congress passed the . This bill was enacted to amend the 1946 Trademark Act and authorized third parties "." The bill also introduced aÌęÌęthat would allow any party to petition for the expungement of a registered trademark that is not commercially active. The goal of these amendments was to reduce the number of “” that were on the register despite not being in use, allowing a more productive, competitive commercial trademark market. These amendments are also speculated to affect the longevity of trademark registrations as trademarks become increasingly vulnerable to cancellation. The Trademark Modernization Act of 2020 will certainly continue to generate more discussion and result in changing practices in Canada.

Giuseppina (Pina) D’Agostino isÌęthe Founder & Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from IPilogue Editors:

Copyright:ÌęMeghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,ÌęSaumia Ganeshamoorthy

Patents:ÌęDan Choi, Gurbir Sidhu,ÌęKhristoff Browning, Jin Xu,ÌęMadelaine Lynch

Trademarks:ÌęAdele Zhang, Aishwerya Kansal,ÌęJingcai Ying, Eloise Somera, Lauren Chan

Bonnie Hassanzadeh, Nikita Munjal, Sebastian Beck-Watt, and Alessia Monastero

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Live-Stream Shopping: The Basics

At its most basic level, “live shopping” can be anything from a live-streamed fashion show to celebrities reviewing sponsored products on their social media platforms, with the goal to encourage viewers to purchase the same item in real time.Ìę Though numerous retailers have successfully implemented live shopping tactics into their business models, few have a fully developed “live shopping platform” or sophisticated point of sale mechanisms to support their live shopping models.

A key differentiating factor between live shopping platforms and more traditional e-commerce models is the highly interactive nature of live commerce content. Think of a Facebook or Instagram live video where your favourite influencer is showcasing their newest purchase or promoting a product. Now turn that into an entire platform with a fully developed sale system, where hundreds of “shoppers” are shopping for you, showcasing how the items are styled and fit, and responding to questions you may have about the product, all live. Furthermore, live-streaming shopping platforms provide the authenticity that buyers crave. With purchases being promoted and made in real time without video editing or Photoshopping, buyers can feel more comfortable making a purchase given that that they are seeing exactly what they will get.

Many technology start-ups have invested in research and development to establish a business model that brings live shopping as a platform directly to consumers. For instance, Toronto start-up, , is a first-mover in this area. Their shoppers “attend exclusive shopping events, sample sales and warehouse deals, and livestream [their] best finds”. With ShopThing’s point of sale platform, purchasing the deal of your dreams is a simple “swipe up”.

For the buyer, live shopping is fairly simple. For the streamer, the seller, and the platform, however, various legal considerations may arise.

The Streamers, the Sellers, and the Platform: Who are they?

Aside from the purchasers, there are three major parties that may be involved in a live-stream shopping transaction: the platform, the seller, and the streamer. When looking at the relationship between the streamer and the platform, the streamers are likely required to , as well as to potentially sign an exclusivity agreement. Depending on the arrangement, the streamer may become engaged with the platform as an employee or independent contractor. When looking at the role of the seller, it is often dependent on the type of platform. With the , sellers on live-streaming platforms can often be considered a “business operator on the platform”, and the platform an “e-commerce platform operator”. The relationship between the seller and the streamer can be slightly more nuanced, with the seller potentially being a streamer and promoting their own products, or the seller engaging an independent streamer to sell their products in which joint liability may arise under certain conditions.

Relevant Legal Frameworks in Canada

Though live-stream shopping is a novel form of commerce, it is easy to see where legal issues may arise. Canada’s current advertising, marketing, e-commerce, privacy, data protection, and intellectual property laws provide a relevant legal framework for how to address the legal considerations of live commerce. However, as the market for live-shopping continues to grow within Canada, it will be interesting to see how the current regime may be adapted or interpreted for issues arising in relation to live commerce.

Advertising, Marketing, and E-Commerce Laws

The federal statute regulating advertising and marketing in Canada is theÌę. The Competition Act applies to both business and consumer advertising and marketing, with the Commissioner of Competition being the primary authority for enforcing the legislation. The Commissioner heads the Competition Bureau, and investigates both criminal and civil matters under the Act.

In Ontario, the administration and enforcement of consumer protection laws is the Ministry of Consumer Services, acting through the Minister of Consumer Services and the Director under the Consumer Protection Act. ÌęGenerally, consumer protection statutes include provisions relating to unfair practices, such as deceptive or unconscionable representations, including false advertising, cancellation or cooling-off periods for goods and services sold, unsolicited goods, and gift cards. In the circumstances of live commerce, unfair practices and deceptive representations may be of increased relevance. Additionally, the further outlines implications of selling online, specifically setting considerations of commercial transactions conducted on the Internet, electronic banking and payment systems, trade in digitized goods and services, and business-to-business exchange of data.

In addition to legislation, (ASC) is the advertising industry's self-regulatory body, maintaining the Canadian Code of Advertising Standards. Through filing a complaint with the ASC, consumers can report advertisers who violate the ASC Code.

Many live-streaming platforms have gained success through providing a live commerce platform exclusively for designer sales.Ìę However, the Competition Act sets out volume tests to that express or implied savings claims can be substantiated against the “ordinary” or “regular” price. Therefore, it is essential to obtain adequate testing when making comparative claims with respect to pricing. This may be more difficult for live-streaming platforms, given that streamers may not be aware of the products, sales, and original prices of the products until they have already gone live. Ìę

Privacy and Data Protection Laws

The (PIPEDA) applies to businesses and addresses the collection, use or disclosure of personal information in the course of commercial activities. PIPEDA establishes that the personal information collected by businesses must be collected for identifiable purposes and with consent, as well as used and disclosed for the limited purposes for which it was collected. With multiple players involved in the business process of live commerce platforms, and increasing development of the technology driving the sales interface of these platforms, greater care must be taken to ensure that the requirements established by PIPEDA are met.

Intellectual Property Laws

Various forms of intellectual property laws may be relevant with live-streaming platforms, including trademark, copyright, patents, and trade secrets. Whenever you are sharing your business and ideas on the Internet, there are measures that may be taken to protect your own intellectual property. However, in the case of live-streaming commerce, it is especially important that steps are taken by the live-streaming platform and its relevant players to minimize the risk of infringing on the intellectual property rights of others.

Before sharing content or materials on your live-streaming platform, it may be :

• Whether you have the right to use or copy the materials, such as images of products, on your platform
• If the material you are sharing is trademark or copyright protected, ensuring you have obtained permission for use
• Whether you have engaged in any Internet-related agreements with web developers (or the like) that outline prohibited use of content.

What’s Next for Live Commerce in Canada?

These are just a few of the potential legal considerations that may be relevant with the rise of live commerce in Canada. Issues relating to contracting online, browsewrap and clickwrap contracts, multi-jurisdictional sales, and other matters, can develop as this new means of shopping continues to gain traction in North America. Though live-streaming shopping is a newer concept, it is possible for the seller, the streamer and the platform to still find their places under existing regimes. However, it is likely that questions and concerns with respect to the various implications that this new form of shopping can have on e-commerce, intellectual property, and consumer protection laws, both domestically and globally, will continue to surface as live commerce becomes more mainstream.

Written by Alessia Monastero, IPilogue Senior Editor and Osgoode JD alumni.

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The majority of technology and e-commerce platforms have been investing in research and development in the fashion tech space for a numbers of years. In 2017, Amazon began developing a fashion design-specific AI initiative, which creates garment designs that can then be physically manufactured by humans. In developing this initiative, the question of became a predominate concern.

This past year, the United States Patent and Trademark Office (USPTO) and other trademark offices around the world, began to assess the considerations in naming a . DABUS, which is short for “Device for the Autonomous Bootstrapping of Unified Sentience”, is an AI system that was listed as the inventor in this patent application. The USPTO issued a decision refusing to award the patent on the basis that American patent law requires that an inventor be a natural person – a requirement that is not met by AI. The that interpreting patent inventors to encompass machines would “contradict the plain reading of the patent statutes that refer to persons and individuals”.

With tech giants like Amazon growing and expanding their reach in the fashion industry, it is not surprising that initiatives such as have come to fruition. Though the USPTO rejected DABUS as an inventor, questions still remain as to whether AI as an inventor may be accepted in other jurisdictions, specifically in Canada. And if so, how will AI designers impact the current traditional landscape of how human designers and natural persons currently create and disseminate their designs with retailers and in the fashion industry more broadly?

With the current pandemic encouraging retailers to grow their online presence, it will be interesting to see how the global fashion landscape recovers, pivots, and hopefully innovates, from the opportunities that may now be more readily available in its intersection with technology.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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Canada Emergency Response Benefit

With events and in-person performances cancelled, musicians have redirected their efforts to share their music online. Various musicians have moved forward in accepting paid live streaming performance spots. However, questions arose as to whether accepting these paid events might disqualify them from the Canada Emergency Response Benefit.

In April, Prime Minister Justin Trudeau expanded the reach of CERB to include support for people who are still working but earning $1,000 or less per month. However, much of a musician’s income is driven by unexpected opportunities and royalty cheques and it can be challenging to predict average monthly earnings regardless of economic circumstances. A statement provided by the Minister of Canadian Heritage, the Honourable Steven Guilbeault, offered some clarity regarding royalties for artistic works, noting that there is no cap on royalty payments for works produced by artists before March 1, 2020. However, copyright protected works produced after that period would apply to the CERB guidelines.

COVID-19 Emergency Support Fund for Cultural, Heritage and Sport Organizations

On April 17, the Government of Canada’s temporary relief measures to support the culture, heritage and sport sectors as they manage the impacts of COVID-19. A total of up to $500 million has been set aside to protect jobs and support business continuity for organisations that have been negatively impacted. This emergency support fund is designed to complement the other federal government measures in response to COVID-19, including the CERB, the Canada Emergency Wage Subsidy, the Business Credit Availability Program, and the Canada Emergency Commercial Rent Assistance program.

In his initial announcement, Minister Guilbeault noted a number of entertainment industries that may be able to benefit, including non-profits, national sports organizations, television production houses, publishers, music associations, and media organizations. Guilbeault further stated that Heritage Canada intends to consult with the entertainment and sports industries, and that his department is already working with the Canada Council for the Arts, which has conducted its own consultations.

As of May 8, it was announced that partner organizations will be contacted so that funds from this emergency support fund can begin to flow to cultural and sport organizations. As per the Government of Canada’s , the distribution of funding will include:

• Up to $326.8 million to be administered by Canadian Heritage and divided among select departmental programs and Portfolio agencies as well as key delivery organizations. Specifically:
  • $198.3 million will be provided to the beneficiaries of arts and culture funding via existing programs as well as other organizations with demonstrated needs;
  • $72 million will be provided to the sport sector; and
  • $53 million will be provided to the heritage sector via the emergency component of the Museums Assistance Program.
• $55 million to be distributed by the Canada Council for the Arts.
• $3.5 million will be provided for COVID-related projects under the Digital Citizen Initiative.
• $115.8 million to support the Canadian audiovisual sector, to be distributed by the Canada Media Fund ($88.8 million) and Telefilm Canada ($27 million).

The use of the remaining funds will be assessed based on needs.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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Right here in Canada, fashion companies big and small have done their part to contribute to bettering the circumstances surrounding the pandemic. Canada Goose has used its facilities in Toronto and Winnipeg to produce . Meanwhile, Toronto designers and began creating non-medical grade masks in response to the pandemic. In the midst of what has proven to be an exceptionally challenging time for many communities globally, the fashion industry has stepped up to provide resources where possible.

However, as homemade and factory-made masks have become a growing means of supporting the public and healthcare workers in times when resources may be scarce, health authorities have cautioned that there are foundational requirements that must be met in order for any mask to be as effective as N95 respirators, surgical masks, or other personal protection equipment (PPE).

America’s Center for Disease Control (the CDC) and the Food and Drug Administration (the FDA) have released informing the public that there is a significant difference between “surgical” and “non-surgical masks”, and accordingly, the labeling of these products must reflect this difference.Ìę The regulation of surgical masks by the FDA generally includes standards relating to the use of specific medical-grade textiles and coating technologies that aid in filtration to ensure that the masks block minuscule airborne particles. Other regulatory guidelines also include the manufacturing and storage of the masks in an environment that meets the legally defined “quality system requirements”. Similarly, in Canada, various PPE, such as masks and respirators, are as medical devices by Health Canada. However, meeting the regulatory standards within Canada, the United States, or other regulatory bodies around the world can prove to be difficult for small and independent fashion designers.

Given the rapid progression of COVID-19, Health Canada has worked towards streamlining the approval process for medical devices. On March 18, 2020, the Minister of Health, pursuant to subsection 30.1(1) of the , made an setting out that device licensing provisions of the do not apply to necessary devices if certain procedures are followed. Similarly, as indicated in a , the FDA stated that given the circumstances surrounding the COVID-19 Public Health Emergency, it will “not object to the marketing and distribution of” certain face masks without the “usually-required prior-clearance”. These temporary regulatory changes and relaxed standards may better assist American and Canadian fashion brands in producing PPE. Regardless, fashion companies must properly assess and consider whether the products they are producing meet their government’s current regulatory measures.Ìę Though brands such as New 91ŃÇɫ’s Christian Siriano have that they intend to make masks that meet FDA standards as soon as they can acquire approved materials, meeting these standards may not be a feasible option for some designers. In these cases, proper product labeling as outlined by regulatory bodies must be followed.

The FDA has that companies may produce non-surgical masks if the product labeling respects the following requirements: it may be used when FDA cleared masks are unavailable; it recommends against use in a surgical setting or where significant exposure to liquid bodily or other hazardous fluids may be expected; it makes no claims of antimicrobial or antiviral protection; it makes no claims of infection prevention or reduction; it makes no claims regarding flammability; the labeling contains a list of the body contacting materials; and the mask is not labeled as a “surgical mask”; rather it may be labeled as a “face mask”.

Health Canada has also advised the public and healthcare professionals on various important considerations for the use of homemade masks to protect against the transmission of COVID-19. Specifically, Health Canada has : “Homemade masks are not medical devices, and consequently, are not regulated like medical masks and respirators. Their use poses a number of limitations, [including] they have not been tested to recognized standards, they may not provide complete protection against virus-sized particles, the edges are not designed to form a seal around the nose and mouth, the fabrics are not the same as used in surgical masks or respirators, [and] they can be difficult to breathe through and can prevent you from getting the required amount of oxygen needed by your body”.

As fashion companies continue to reallocate resources in order to make essential products throughout the current global health pandemic, it remains crucial that independent designers and global fashion companies alike understand the various regulatory considerations and distinctions between surgical and non-surgical masks.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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The claimant, Response Clothing, designs and markets various pieces of clothing. The defendant, Edinburgh Woollen, is a major clothing retailer with about 400 stores in the UK. Between December 2009 and 2012, Response Clothing provided Edinburgh Woollen with various women’s tops made of a jacquard fabric. This jacquard material consists of wave-like designs that are woven into the fabric. When Response Clothing increased the price of the tops sold to the defendant in 2012, Edinburgh Woollen decided to change suppliers. The defendant provided the new supplier a sample of Response Clothing’s top and has changed suppliers various times throughout the last five years while maintaining the same wave-like jacquard design. As a result, Response Clothing claims that copyright subsists in its fabric’s design, either as a graphic work or as a work of artistic craftsmanship as per section 4 of the (the CPDA). Given the nature of Response Clothing’s relationship with Edinburgh Woollen between 2009 to 2012, Response Clothing further claims that it is the owner of that copyright and that all other supplier designs of the wave-like jacquard design are both primary and secondary acts of infringement.Ìę Ìę

Though the Court concluded that the definition of a graphic work could not be extended to include a fabric design, it was established that the creation of the wave-like jacquard design qualified as a work of artistic craftsmanship. The Court concluded that the wave-like design required skillful workmanship and produced aesthetic appeal. Additionally, at paragraph 64 of the decision, the Court provided the following guidance with respect to the definition of artistic craftsmanship in the UK:

[
] (i) it is possible for an author to make a work of artistic craftsmanship using a machine, (ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and (iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed.

Having concluded that copyright existed in the wave-like fabric design, the Court determined that the garments sold by Edinburgh after 2012 copied a substantial part of Response Clothing’s design, amounting to secondary infringement contrary to section 23 of the CPDA.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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