Over the past Fall 2021 semester, I have been privileged to participate in the Intellectual Property Law & Technology Intensive Program (IP Intensive) at Osgoode and complete a ten-week internship at the Canadian Broadcasting Corporation/Radio-Canada (CBC). My supervisor, Dan Ciraco, Director & Senior Legal Counsel, along with my weekly mentors at CBC always made me feel like a valued member of their teams. I can confidently say that this internship is one of the highlights of my law school experience.

At the start of each week at CBC, I met with a new lawyer mentor either from the Business Law or Media Law Groups. We would go over the work I had done until that point and gauge my interest in the files they had been working on. It goes without saying that I began my internship with a strong interest in IP law. However, Dan outlined the importance of keeping an open mind to different types of work that relate to IP law throughout my internship and in my legal career in general. With this in mind, I welcomed all of the work assigned to me by my mentors. And, in the process of completing my tasks, I gained knowledge in legal areas that I had not previously considered, such as procurement, defamation, namely responsible communication, and litigation, including legal holds. Furthermore, a lot of these tasks required me to draft case summaries in relation to these topics, which allowed me to strengthen my legal research and writing skills.

A task in particular that stood out was the drafting of a response to a copyright infringement claim. While drafting this letter, I met with internal stakeholders at CBC and in turn got an exclusive look into the scope of the legal team’s responsibility over the entire organization. Similarly, when working on a procurement-related topic, the findings of which I later presented to the Business Law Group at one of their monthly meetings, I learned just how challenging it is to balance CBC’s interests with suppliers’ interests when coming to an agreement on goods and services.

As for the Media Law Group, a major highlight for me was participating in the vetting process of different news stories to be published by CBC. It was interesting to see how the lawyers interacted with journalists; particularly, how they explained complex legal topics and raised legal risks in comprehensive ways. In relation to this process, in my own research, it was also interesting to learn about defamation claims and the different arguments that are available to CBC when defending against them.

In my work for both the Business Law and Media Law Groups, I was also exposed to various IP-related issues that allowed me to see a lot of what I had learned from previous IP courses be applied in practice. For instance, I got to see the process behind integrating brands and their products in CBC programming. I also got to see the reality of how often CBC faces potential copyright infringement claims and in turn, the defences they prepare in response to them, such as fair dealing.

Overall, my internship experience at CBC was extremely rewarding. Each one of my tasks was meaningful and my mentors always made a point of ensuring that I saw how they contributed to the bigger picture of the legal team. I was challenged to step outside of my comfort zone and take full ownership over my tasks. Most importantly, despite this internship being virtual for another year in a row, the weekly team check-ins never made me feel like I had missed out on the full internship experience. I am extremely grateful to CBC and the IP Intensive for helping me kick-start my legal career. Not only was I able to contribute to real life legal challenges, but I was also taught the basics of communicating with legal professionals, managing competing deadlines, and supporting the client’s interests. I strongly urge my peers at Osgoode to apply to the IP Intensive to get a change of pace from the regular academic semester and to take advantage of a unique and fulfilling experience either at CBC or at another one of the equally amazing placements offered.

The post Hot Off the Press: A Look into my Fall Internship at CBC (IP Intensive Reflection) appeared first on IPOsgoode.

What does the colour red, an in-store family diner, and Zeddy the teddy bear remind you of? For me, it is Zellers – the discount department store that will always be a fond memory of my childhood. Today, it is at the centre of a lawsuit initiated by the Hudson's Bay Company (“HBC”).

On October 5, at the Federal Court of Canada against a Quebec family for trademark infringement, depreciation of goodwill, and passing off.

The Zellers Trademark: Then and Now

Zellers has been around since the 1930s, but in 1978, it was acquired by HBC. In 2013, the chain of Zellers stores officially closed. However, by the Canadian Intellectual Property Office on September 24, 2020 for failure to renew. This registration covered, among other services at Zellers, the overall “operation of department stores”. However, HBC retains other registered marks, such as the , , and the .

Earlier this year, on April 26, a for its design mark, identical to that of HBC’s expired mark, for services including “Computerized on-line ordering and trading featuring general merchandise and general consumer goods”.

Shortly thereafter, on June 30, for its design mark covering “Retail department store services, [and] On-line retail department store services”. This recent registration may have to do with in one of its stores located in Burlington, Ontario.

HBC’s Claim of Trademark Infringement

HBC presumably relies on its remaining registered marks to argue that Zellers Inc. is contravening : “No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto”.

The Supreme Court of Canada (“SCC”) in provided four factors to consider in a s. 22 claim: (1) use of the registered mark; (2) proof of goodwill; (3) the likely connection of linkage made by consumers between the claimant’s goodwill and the defendants’ use; and (4) the likelihood of depreciation. In Veuve Clicquot, the claimant’s s. 22 claim had been rejected at trial, and the SCC agreed. Veuve Clicquot did not establish that the respondents had used sufficiently similar marks to lead consumers to make a mental association between the two marks that would likely depreciate the value of the goodwill attaching to the Veuve Clicquot mark.

In HBC’s case, the department store marks are yet to be examined; so s. 22 is inapplicable to them. Whether the remaining niche marks have enough of a reputation to satisfy the Veuve Clicquot Ponsardin criteria remains to be seen.

HBC’s passing off allegation must rely on : “No person shall direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services or business and the goods, services or business of another”. In ., the SCC outlined the three elements that must be established by a plaintiff to succeed under s. 7(b): (1) the existence of goodwill; (2) deception of the public due to a misrepresentation; and (3) actual or potential damage to the plaintiff.

In HBC’s case, if it were to base the existence of goodwill on its Zellers pop-up alone, its argument under the first prong of the Kirkbi test would be weak. However, goodwill may continue even where a business has ceased to operate (see at para. 59). HBC’s remaining registered Zellers marks may also have continuing goodwill. If so, consumers would likely infer that any products purchased from Zellers Inc. are sold by HBC’s Zellers.

In , the damage suffered by the plaintiff from the defendant’s use of an identical name was the loss of control of its trade name in Canada. HBC could similarly argue that would cause damage to HBC in its loss of control over the Zellers brand and the loss of future customers.

Stay Tuned

Although we are only in the early stages of HBC’s lawsuit, we may be in for a trip down memory lane!

The post Zealous Advocacy for the Zellers Trademark: A Look into HBC’s Pending Lawsuit appeared first on IPOsgoode.

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.

We were given a hypothetical inventor’s disclosure, which this year involved a collision avoidance helmet. The disclosure provided information on why the invention was created, what features it included, and drawings of the invention. Although the disclosure provided a lot of information, it was challenging at first to sort through all the details and determine what was relevant for the invention. There was also the added challenge of the inventor not being a real person who we could call ask to explain certain aspects in more detail or discuss why a certain feature was included. We’ve since learned that the real world of patent drafting requires a lot more client interaction to make sure everyone is on the same page.

Fortunately, our two excellent coaches, and from Bereskin & Parr LLP, helped us along the way. They made the competition much more approachable, helping us know where to start, and giving us the “dos” and “don’ts” of patent drafting. They helped us figure out a roadmap, starting with a prior art search and then focusing on claim drafting. To conduct our prior art search, we pulled out all the key features of the invention and used these as keywords to find the relevant prior art. Although we were confident that we had a workable list of related keywords for our prior art search, we were surprised to find a lot of prior art that shared our invention’s features. In fact, one prior art reference had almost all of the features of our invention. This prior art reference consisted of an augmented reality motorcycle helmet with comparable audio and visual systems, capabilities of contacting emergency responders in a collision, and even the option to add full or partial brake control to prevent a collision. Consequently, this really limited our claim drafting strategy as we had to keep the patent requirements of novelty and obviousness in mind.

In drafting our claims, we decided on three independent and seven dependent claims. The independent claims consisted of an apparatus, method, and system claim. Admittedly, our first attempt at claim drafting was very naive. We used terms such as ‘helmet’ and ‘camera’, which we later learned were restricting as they didn’t account for the non-helmet and non-video features of our invention, respectively. We also made the mistake of claiming features that other inventors could easily work around. As such, in our first few meetings with Paul and Denver, we focused on refining our claims to make them broader. We also focused on identifying the point of our invention. That said, during our next few attempts, we wanted to root the claims in what we believed was the most novel and non-obvious feature of our invention: the ability to accelerate and decelerate in the event of an impending collision. Or, as we fancily called it, ‘positive and negative acceleration’.

We decided to include this feature in our independent claims. For example, in our method claim, we drafted a step-by-step approach wherein the cameras and sensors of the wearable headpiece (the broader term for helmet that we decided on) would detect a threat object and subsequently engage breaks or the electronic power assist to provide positive or negative acceleration in the event of an impending collision. In our system claim, we drafted a circuitry wherein a control signal would be transferred from the receiver to the transmitter by the processor – all of which were embedded within the wearable headpiece – to do the same. As for our dependent claims, we included less important features of our invention which served to invalidate a subsequent invention should it successfully go through the independent claims without infringing. Overall, our independent claims varied in scope and content in order to strike a balance between honouring our inventor’s vision and gaining as wide protection as possible.

While we experienced great relief upon submitting our patent application and a sense of joy after conquering the tediousness of claim drafting, we went to the virtual regional rounds ready for questioning; sure enough, we were challenged on the narrowness of some aspects of our claims. All this to say, this experience taught us that the claim drafting process is never-ending, but that’s okay. Different people will have different approaches and viewpoints and there is no one perfect claim. We tried, and we are extremely proud of our growth in just a few months. Not to mention, we did this all virtually for the first time ever.

We encourage anyone interested in patent prosecution to try out for next year’s team. It’s a challenging but extremely rewarding experience!

Written by Maddie Lynch and Eloise Somera.��

Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

Eloise is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post 2021 USPTO National Patent Application Drafting Competition 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.��

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

91��ɫ v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91��ɫ (“91��ɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91��ɫ by the Copyright Board are not mandatory, but dismissed 91��ɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91��ɫ 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 91��ɫ opted out of the tariffs in 2010, they are not enforceable against 91��ɫ. 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
91��ɫ 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 91��ɫ’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 LAW��

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.�� 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.��

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 Claim��

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 summarized��, “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 summarized��) 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 Plan����against 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 Jordan����in 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 team����Europe’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 into��. 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 Pandemic��

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 the���� in July. Luxury fashion companies are now monetizing their brand value through this����i.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands like����have already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,����for its uniquely styled��Toile Monogram print for its��Face Shield, filed for��“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).����

On the other hand, , Nike, and����masks also lead the charts of most searched and purchased masks.��Small 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 as��. A Chinese company has filed a trademark infringement suit for its brand����in the Illinois state. Furthermore, on December 14, 2020 the����announced 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 an����from such luxury and burgeoning fashion brands.����

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 a����that 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 is��the 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:��Meghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,��Saumia Ganeshamoorthy

Patents:��Dan Choi, Gurbir Sidhu,��Khristoff Browning, Jin Xu,��Madelaine Lynch

Trademarks:��Adele Zhang, Aishwerya Kansal,��Jingcai Ying, Eloise Somera, Lauren Chan

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

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On November 9, 2020, the hosted its annual Fashion Law Panel (virtually, of course). The panelists consisted of a range of industry experts, including the founder of the OFLS and recent graduate of Osgoode, At this panel, attendees gained insight on what fashion law entails, how to get involved with it, and where it is predicted to go in the future.

Often, the OFLS is asked what fashion law is. It is quite difficult to provide a succinct answer to this question because, as of boutique branding law firm Froese Law explained, the practice of fashion law is relatively new, especially in Canada. It is also a niche area of law. But because it is a growing field of law, based on the types of work that the panelists shared, it seems to include a lot. Legal work related to fashion can involve litigating trademark infringement, advising foreign fashion houses how to enter the Canadian market, guiding small brands in growing their business, and, recently, regulating the use of brands by influencers on social media. As such, fashion law does not fit into a single neat box. Instead, it involves legal issues within the fashion industry that find their solutions through the intersection with other related legal fields, such as entertainment, business, ecommerce, technology, privacy, and intellectual property.

In order to actually work in fashion law, the panelists cautioned attendees to be as marketable as possible and to be open to all opportunities. In other words, law students with an interest in fashion law should not limit themselves to this field too quickly. Especially given how new and niche fashion law is, as information technology and intellectual property lawyer stated, it is important to first understand all aspects of the subject. This means learning about trademarks, copyright, counterfeiting, business, and other areas that impact fashion. By taking this broad approach, one can really understand whether fashion law may be their calling. However, there are immediate ways to stay up-to-date with the fashion industry and get involved. For example, Alessia runs an Instagram account that provides daily updates on the latest in fashion, business, and law. Similarly, Osgoode students can reach out to the OFLS to become a general member and get involved in any club events.

As for where fashion law is set to go in the future, all of the panelists made reference to fashion and the web. As Hashim pointed out, as brands have begun to limit their brick and mortar presence (no thanks to the pandemic) and shifted to online stores, the biggest question becomes how to create that in-person experience, online? Perhaps we will see a rise in the use of artificial intelligence by brands to help visualize what styles will look like on different people, Hashim suggested. But in doing so, how do these brands ensure the privacy of their online buyers? Similarly, how can brands protect against the infringement of their designs by fast fashion online stores and ensure that buyers come back? Well, as social media influencer marketing increases, Canadian and American attorney and founder of the Fashion Law Boutique Bogdan Enica pointed towards one option used more frequently by brands, which involves filing .

When it comes to this ongoing trend where fashion, technology, and the law come together, we are already starting to see brands digitize their collections. For instance, the Telfar brand which prides itself on inclusivity and often sells out of their infamous handbags in milliseconds, provides online access to their collections throughout the years. Similarly, Louis Vuitton recently hosted a live stream for their wherein the brand offered immersive coverage through their use of 360-degree cameras and green screens. Although the latter example was mainly incited by the pandemic, perhaps it is the start of the new normal for the fashion industry. While this move towards a virtual reality allows more viewers to immerse themselves in fashion from the comfort of their own homes, we can expect legal issues to arise ranging from the copyright protection of songs used to entertainment contracts with broadcasting networks, just to name a few.��

Eloise Somera is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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