Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

What do a company in the business of mining and selling construction equipment, and an athletic-wear and sporting accessories brand, have in common? Apparently, the cat has been let out of the bag on this one. On January 10th, 2023, the Federal Court of Appeal released one of its first trademark of the year in .The Federal Court of Appeal held in favour of the construction machinery and equipment company over Puma’s use of the trademark PROCAT in association with footwear and headgear.

Puma first applied for the trademark PROCAT in 2012 for its sub-brand of youth sporting accessories. Caterpillar shortly opposed the application, asserting that, inter alia, the PROCAT mark was confusing with Caterpillar’s own CAT & Triangle Design [shown below]. Caterpillar’s CAT & Triangle Design was also registered in association with footwear and headgear. Specifically, the design was related to a line of work and sport footwear that the company had been operating in Canada since 1994. When the matter was brought before the , the hearing officer held that there was no reasonable likelihood of confusion between the marks. The officer explained that Caterpillar had failed to show that they possessed sufficient control over the character or quality of the goods sold in association with the CAT & Triangle Design through its licensees.

On , Caterpillar submitted new evidence in order to demonstrate requisite control and that it had accrued benefit from its licensees’ use of its marks. The court found the new evidence  to be material. Moving on to the likelihood of confusion analysis, the court agreed with the hearing officer that the two marks were indeed similar in appearance and sound due to the word “CAT.” But the court also found Puma’s prefix “pro” to be suggestive or laudatory of the company’s goods. Therefore, the prefix was not enough to distinguish it from Caterpillar’s CAT. Puma had also submitted 13 other trademarks to evidence that the “CAT” element had little distinctiveness in the marketplace and should therefore be subject to a smaller ambit of protection. When elements appear over and over again in trade, is generally acceptable in order to allow for fair competition. However, the court in this case found Puma’s evidence to be insufficient in demonstrating the state of the register. The Federal Court therefore overturned the decision of the hearing officer and found that there indeed would be a reasonable likelihood of confusion between the two CATs. 

Unfortunately for the sporting brand, the court of appeal did not have much to say by way of correction either. In appealing the decision to the , Puma argued that the FC judge had erred in her findings. In Puma’s view, the FC judge had failed to consider each of the marks as a whole, and contended that it would be impossible for a consumer that was not “” to be confused as to the source of the two companies’ respectively marked goods. The sporting brand also tried to rely on its other cat-nominative trademarks, such as its better-known “jumping cat” design, as evidence of brand recognition, though this was still insufficient to sway the courts. 

The Federal Court of Appeal was therefore unable to find any palpable or overriding error in the FC judge’s decision. For Puma, its with regards to its use of PROCAT in association with footwear and headgear beyond a trivial level proved detrimentally determinative. Ultimately, Puma’s evidence and arguments were not enough to go up against Caterpillar’s prior registration and surprisingly long-standing presence in the Canadian market.

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Alice Xie is an IPilogue Writer and a 1L JD Candidate at Western University’s Faculty of Law.

Tech giant Apple has recently filed a against the United States Patent and Trademark Office (“USPTO”) and Director Kathi Vidal over the Office’s refusal to register Apple’s “SMART KEYBOARD” trademark based on genericness. A quick search on the USPTO’s trademark database shows that Apple first filed the trademark registration for SMART KEYBOARD back in as an iPad Pro accessory. The USPTO in 2018, and the Trademark Trial and Appeal Board (“TTAP”) upheld this decision in 2021. Apple is now appealing in the US District Court for the Eastern District of Virginia.

A string of refusals

After Apple amended their “SMART KEYBOARD” application multiple times, the USPTO’s final decision was a because it was a generic term for technologically advanced keyboards for mobile digital devices. The “generic” ground in trademark law refers to a that fails to carry out the proper function of a trademark to distinguish one product or service from another. Generics cannot have trademark protection.

In 2021, the TTAP reviewed and upheld the refusal, prompting Apple to put forth a narrow identification description of the mark and argued that the “SMART KEYBOARD” is an “accessory for a handheld mobile digital device, namely a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard.” The TTAP . After evaluating relevant evidence, the TTAP concluded that prospective purchasers understanding the term SMART KEYBOARD to refer to a genus of goods, namely technologically advanced keyboards for mobile digital devices. SMART KEYBOARD is thus generic and cannot become a trademark.

Apple is not giving up

Apple then turns to a US district court to appeal the USPTO and TTAP’s decisions. Apple makes a number of arguments to advance the distinctiveness of the mark. Apple, citing USPTO’s past approvals, points out that the Office has granted registrations to hundreds of trademarks that consist of “smart” with another word in the technology space. The successful registrations include Apple’s own marks like SMART COVER, SMART CASE, SMART CONNECTOR, and SMART FOLIO. Apple also highlights that competitors and the press use “wireless keyboard case” or “Bluetooth keyboard stand” in order to describe tablet cases with keyboards. Apple argues that this is a sign that they, along with consumers, associate the phrase “smart keyboard” specifically with Apple. Additionally, Apple argues that its use of SMART KEYBOARD has been substantially exclusive since the product’s release seven years ago, which exceeds the five-year period that courts typically consider to be a sufficient demonstration of acquired distinctiveness. Apple asks the district court to require USPTO to approve its SMART KEYBOARD mark registration.

Future implications

A ruling against Apple would uphold the bar for genericness in trademarks and, in particular, for marks that combine the term “smart” with a generic product. On the other hand, if the Court rules in Apple’s favour, the decision can inform the flexibility of a trademark in being considered generic or distinctive. As technology rapidly develops, the common understanding of the term “smart” may have changed from when smart technology first emerged. It is important to highlight current or recent evidence when trademark owners in the technology space are registering marks that are susceptible to refusal based on genericness.

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Emily Xiang is an IPilogue Writer, the President of the Intellectual Property Society of Osgoode (IPSO), and a 2L JD candidate at Osgoode Hall Law School.

So far, intellectual property law has protected some pretty wild things – biological , football turfs, even methods for building the . But, is it possible to protect an experience? In June 2019, major amendments to Canada’s (RSC 1985 c T-13) came into force, including the protection of non-traditional trademarks consisting, in whole or in part, of sounds, holograms, moving images, scents, tastes, colours, three-dimensional shapes, modes of packaging goods, textures, and positioning of signs. This legislative addition is critical when assessing how businesses and marketers may potentially protect multisensory experiences (MSEs). However, certain barriers arise in applying traditional intellectual property principles to such sui generis subject matters. Let’s take a look at some examples.

Sonic Seasoning: Combining Music with Flavour

refers to the multisensory phenomenon that occurs when the sounds that one hears have a psychological effect on one’s taste perception. Since this discovery, in the food and beverage industry have sought to carve out a unique space in the marketplace for food and sound pairings, making the combination itself the centrepiece for more extensive marketing campaigns invoking a particular “atmosphere” or “experience.” For instance, in 2020, published an audio content series that illustrated six of their cheeses using specifically curated sounds. Beer companies like have also embarked on projects to provide consumers with “” drinking experiences through packaging design, music, taste, and photography.[1]

While the amendments to the Trademarks Act now protect and separately, brand owners should be aware that applications for such marks require that the taste or sound meet the prescribed standards of distinctiveness and non-functionality. On distinctiveness, evidence would need to be submitted to demonstrate that the brand’s reputation of the mark in question is sufficient to trump another primary meaning that a member of the public might attribute to the taste or sound. The non-functionality standard may also cause issues for applicants seeking trademark protection for tastes since the primary purpose of foods and beverages is to provide or impart flavour.

that mark owners seeking trademark protection for MSEs should instead apply for “” protection, a “distinguishing guise” or “a mode of wrapping or packaging wares.” While the applicant would still need to show distinctiveness and non-functionality, trade dress protection seems to most adequately address the overall “concept” or “feel” of a product, so long as the features are source-identifying.

Trademarking the “Consumer In-Store Experience”

Auditory cues can pair with other sensory tools to market products and services. Research into has shown that such factors as lighting, flooring, music, decor, and even fragrance play a role in driving consumer experience and behaviour. In his book In Pursuit of Silence: Listening for Meaning in a World of Noise, George Prochnik discusses the soundscapes developed by Abercrombie & Fitch, in which “loud music and spotlit darkness [are used to] introduce a state of celebratory arousal. Indeed, if you walk around your local branch of Abercrombie & Fitch, you may feel that there would be something downright frigid in considering your purchase too closely.” are increasingly used by to conjure particular consumer experiences, whether it be in retail stores, car showrooms, sports stadiums, airports, banks, or apartment buildings. For instance, infuses the air of its luxurious line of “Park Hyatt” hotels with a signature fragrance in the hopes of creating an association in the minds of its customers between the scent and the level of luxury at the Park Hyatt.

In 2013, successfully applied for intellectual property protection of the design and layout of its signature retail store. The USPTO granted the tech giant an arguably broad trademark that covered various features of the space, including clear glass storefront surrounded by a paneled facade, rectangular recessed lighting units covering the ceiling, and rectangular tables arranged in lines covering the floor space. Such details can make up one’s entire ‘’ of an Apple store, thereby qualifying for MSE trademark protection. 

Conclusion

As the scope of intellectual property law continues to expand, questions arise as to how existing IP regimes can potentially respond to increasingly amorphous and novel subject matter. The inclusion of non-traditional marks in Canadian trademark legislation represents an opportunity for mark owners to protect subtle elements of their brands. It is an area of the law we should keep a close eye on in years to come.

[1] Mark Edward Blankenship Jr., “With Eyes to See and Ears to Beer: Navigating Multisensory Intellectual Property Rights in The Craft Beer Industry”, (2021) 21:4 Wake For Intellect Prop Law J 397.

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Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

Happy spooky season! From “Evil Midweek Cutie” to “Juice Demon”, the Internet has been buzzing with featuring hilarious knock-off Halloween costumes. But why do many retailers resort to using these creative names? Consumers can clearly identify the source material for these costumes (i.e., Wednesday Addams and Beetlejuice). Is changing the name from sufficient to escape liability?

Copyright Creeping into Costumes

In general, any clothing, including costumes, is not protected by copyright laws. In Canada, under section 64(2) of the , it is not an infringement of copyright to reproduce the design of a “useful article”, so long as more than 50 copies are made. The Act defines a “useful article” as having a utilitarian function, which encompasses most clothing.

There are notable exceptions. For one, section 64(3)(a) states that copyright may persist in graphic or photographic representations that are applied to useful articles. In other words, one cannot avoid copyright infringement by merely reproducing a copyrighted work on a shirt or other “useful article.” While this may not apply to most costumes, this can prevent retailers from replicating images of Disney princesses and other copyrighted characters onto their clothing. Another exception, section 64(3)(b), states that copyright infringement may still be found when reproducing an article that contains “a trademark or a representation thereof or a label.” This explains why retailers cannot use logos like the Star Wars logo on their unlicensed costumes.

Courts have interpreted the scope of section 64(2) and it’s U.S. counterpart, , to exclude jewellery and masks. In (c.o.b. SpareParts), the Federal Court of Appeal suggested that original jewellery designs may be subject to copyright protection as the mere fact that they are worn does not make it ipso facto a “useful article.” In a way, purely ornamental jewellery may be analogous to works of art. However, the case was settled before a trial of the issues. Nonetheless, the notes that those in the jewellery industry may be granted industrial design registrations, offering a different kind of intellectual property protection. This is contrary to the U.S. where original jewellery designs are automatically protected under copyright law as . Fortunately for trick-or-treaters, most jewellery designs are not to be registered with the U.S. Copyright Office. Wearing—or selling—a string of pearls to complete a Great Gatsby themed costume will not land anyone in a lawsuit.

Perhaps more relevant to Halloween costumes, in the U.S., to fall outside of the “useful article” classification, as they are not considered to serve a utilitarian function. Therefore, they may be protected by copyright. Although Canada lacks an equivalent case, Pyrrha Designs Inc suggests a flexible interpretation for “useful article”. Even though masks may receive copyright protection in the U.S., they must still meet a threshold for originality. For example, the U.S. District Court for the Eastern District of Pennsylvania that the Michael Myers mask from John Carpenter’s classic Halloween (1978) lacked the requisite originality for copyright protection; the mask was just a mold of actor William Shatner’s head!

More recently, on September 27, the U.S. District Court for the Eastern District of New 91��ɫ that the parodical and satirical use of Fun World’s copyrighted “Ghost Face” mask was permitted under the fair use doctrine. American professional basketball player Terry Rozier, nicknamed “Scary Terry”, had launched a line of merchandise that included a cartoon image of him wearing the “Ghost Face” mask, as popularized by the Scream film franchise. While the decision does not support retailers wishing to sell their own Scream-inspired mask, with the court even stating that Fun World’s copyright registration gives rise to a presumption of validity, it does demonstrate that there are ways to legally use copyrighted works in one’s own design without seeking permission. Interestingly, the court noted that Rozier produced evidence which called into question whether Fun World’s mask possessed the requisite originality, given that a third-party created and marketed a similar “Wailer” mask several months before the “Ghost Face” mask was registered. Though not resolved in this case, the validity of Fun World’s copyright hangs in the balance. 

Outside of masks and jewellery, a 2017 U.S. Supreme Court case, held that aesthetic elements of useful articles could be copyrightable only if they can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article. The decision was applied in the costume context, in the 2019 case . Here, it was held that although a full-body banana suit is a “useful article”, the sculpted banana design itself may be copyrighted. It appears in the U.S., copyrighting Halloween costumes is not as bananas as one may think!

Scary Issues with Licensing and Trademarks

Although costumes are generally not afforded copyright protection, trademark laws still prevent retailers from selling and marketing unlicensed versions of costumes using the names which they are based on. protect brands’ corporate image via a sign or combination of signs used to distinguish their goods or services from those of others. This can include words, designs, three-dimensional shapes, textures, etc.

To avoid trademark infringement, retailers will avoid using trademarked names (like and ) and opt to sell their unlicensed costumes under parodied titles that give rise to the comical memes on our social media feeds.

Even so, rights-holders have initiated lawsuits against copycat designs with changed names that do not infringe trademarked words. For example, Fashion Nova is routinely sued for copying iconic fashion designs, even being . The central argument lies in trademark law—that the clothing has acquired the such that it is strongly associated with the brand or designer and copycats would create a high amongst consumers. Although it is unclear how strong these claims are, there remains a risk of being sued and facing litigation costs for copying a well-known design, especially given the decision in Silvertop Associates.

DIY Tricks?

Luckily for at-home costume designers, making your own costume, even of a licensed character, is unlikely to provide grounds for copyright violations. In Canada, provides that an individual does not infringe copyright by reproducing an otherwise copyright-protected work if the individual only uses the reproduction for their own private purposes. Although the U.S. lacks an analogous statutory provision, it is that using copyrighted materials for personal, non-commercial purposes is permissible.

While the last-minute, homemade Supermans and Catwomans can breathe a sigh of relief, issues may still arise if one were to sell their homemade creations on a site like Etsy. Doing so would prevent the maker from claiming a private purpose.

Overall, DIY costume-makers and even commercial costume retailers are very likely safe from liability. Still, it may be better to err on the side of caution and ensure that any costumes created do not infringe copyright (as limited as copyright protection may be) or are sold under trademarked names. Ghosts and skeletons might be scary, but there’s nothing more terrifying than an intellectual property infringement suit!

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Tiffany Wang is an IPilogue Writer, IP Innovation Clinic Fellow, Intellectual Property Journal Editor, and a 2L JD Candidate at Osgoode Hall Law School.

In the midsummer of 2020, the Supreme Court of the United States rendered an unusual decision in its first . The case, , signals broader protections for trademarks vis-à-vis .

In . The USPTO’s both denied the registration, underscoring that consumers will perceive

Writing for the 8-1 Supreme Court, Justice Ruth Bader Ginsburg affirmed the . Justice Ginsburg underscored that Booking.com is a distinctive business and that the public will not misunderstand the brand. Having acquired sufficient distinctiveness in the marketplace, “Booking.com” moves away from the generic category as a descriptive mark. The distinctiveness of a trademark is measured on the . In the case at hand,

This case finds a fine equilibrium between two factors: enhancing trademark protection and valuing consumer perception. Stronger trademark protection enhances Booking.com’s brand image and goodwill. Granting trademark registration to Booking.com simultaneously enhances the significance of consumer voices. Consumers are able to distinguish the services provided by Booking.com from those of other lodging competitors. 

Practitioners may worry that this case opens the floodgates to trademark litigation. The Supreme Court blurred the . Additionally, Permitting the registration of “generic.com” domain names may lead to .

In an increasingly digital arena, defying clear trademark doctrine may inevitably deplete the USPTO’s authority to prevent an influx of generic marks from entering the marketplace and diluting the value of more distinctive trademarks. The majority underscores that consumers perceive that . Even if the majority reasonably valued consumer data, did the majority err in granting too much weight to public input?

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Eight Mile Style, the company copyright-holder of “Lose Yourself” an action on copyright infringement against the National Party for copying an original musical work protected by copyright. In response, the National Party agreed that “Eminem Esque” borrows certain chords from the composition “Lose Yourself”. The National Party admitted that such borrowing might have resulted in the similarities between the two musical compositions. However, according to the National Party, such borrowing is not tantamount to copyright infringement. The court that to resolve the dispute; one must first distinguish between “illegitimate copying and permissible borrowing”. Such distinction is crucial for upholding , which is to provide a just reward for the creator and to encourage creative process.

IP Osgoode's Prof. emphasizes that is an . Musicians often experiment with previously known chords and tunes to develop original compositions, a process that often results in the emergence of whole new genres of . For example, such genres as jazz and blues represent the result of cross-fertilization of Western European and African traditions. Expansive copyright protection may if it penalizes borrowing in the . In this case, any musician aspiring to create a composition will second-guess herself in fear of a potential lawsuit for copyright infringement. Limited copyright protection may not only strip the copyright holder of her reward but also result in the situation when the creators will borrow from already known compositions without adding any creative value. Such an outcome is problematic for creators, users, the and public at large. The reason is that over a period of time such borrowing can produce a creative desert when all songs in the music charts sound alike. Copyright law is thus charged with striking a between the competing interests of the stakeholders.

In the Eight Mile Style case, the court agreed that musicians could be inspired by previous musical compositions and even use similar chords and melodies as building blocks for their own works. However, the unique compilation of these blocks in the musical work provides for distinctiveness and originality of the composition. Accordingly, to establish copyright infringement, the claimant must show either that . The analysis is therefore as the court looks beyond how many elements (chord-by-chord) of the original composition were replicated. The court accordingly ruled that “Lose Yourself” and “Eminem Esque” are “” and the latter “” in a way that makes the tracks “”. Such an alteration of original musical work constitutes infringement when “”.

The court ruled that the National Party used (including copying and reproduction) the song “Lose Yourself” without any authorization in its advertising campaigns. These actions constitute infringement under the . The court assessed the damages according to the user principle i.e., “”. In assessing damages, the court examined a number of factors such as, for example, the conditions under which the licenses for “Lose Yourself” have been previously granted by the Eight Mile Style and the territorial coverage of the broadcasting for Eminem Esque. After examining these factors, the court concluded that the license fee award against the National Party constitutes NZ $ 600 000. The court also noted that the National Party included Eminem Esque in its political campaign after obtaining professional advice from the third parties. The second hearing will determine whether the third parties will carry on the ultimate liability. Now we can only speculate whether the third parties will pay damages and at what amount. Yet it is clear that in assessing the third parties’ liability for professional advice, the court has to analyse the nature of relationship between the third parties and the National Party, to what extent the National Party relied on the given professional advice.

Ksenia Polonskaya is an IPilogue Editor and a PhD Candidate at Queen's University, Faculty of Law.

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