A recent filed in the Central District of California helps to illustrate the concept of trade dress and the scope of its legal power. The plaintiff, Nicole Lee, a handbag and accessories company based in Los Angeles, filed a complaint on September 29 alleging trade dress infringement against several handbag companies.

Despite holding various copyrights to the artwork and features of its handbags, as well as trademarks for its logo and other features, these rights do not protect the handbags as a whole. Trade dress, on the other hand, is able to ensure protection of the handbags in their entirety.

So, what exactly is trade dress? The term generally refers to visual characteristics of a product or its packaging that identify to consumers the source of that particular product. Essentially, it is the total image, design, and appearance of a product or its packaging. The US Supreme Court noted in?that trade dress may include features such as ※size, shape, color or color combinations, texture, [or] graphics§. As such, a handbag easily falls within the ambit of trade dress.

Both the US and Canada acknowledge trade dress as a valid right; there are both similarities and differences in the jurisprudence of each jurisdiction.

Statutory Authority

A statutory cause of action for trade dress infringement is provided by both American and Canadian legislation. For the former, creates a federal cause of action for unfair competition. The provision prohibits the sale of goods by use of:

any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.

In Canada, a statutory cause of action for trade dress infringement is legitimated by a conjunctive reading of sections 2, 7(b) and 7(c) of the . Section 2 defines a trademark as including a ※distinguishing guise§ which is the "shaping of wares or their containers" or "a mode of wrapping or packaging wares." A trade dress can thus be registered with the Trademarks Office as a distinguishing guise and its owner can enforce its right as would any other trademark owner. Sections 7(b) and 7(c) provide a statutory cause of action for all trademarks.

Registration Requirements

In both the US and Canada, for a trade dress to be registered, it must be both non-functional and distinctive. Generally, a trade dress is not ※functional§ if its configuration of shapes, designs, colours or materials does not serve a utility or function outside of creating recognition in the consumer＊s mind. ※Distinctive§ means that consumers perceive a trade dress as identifying a product＊s source; in other words, there is an association between the trade dress and a source in the consumer's mind.

Unregistered Trade Dress

An unregistered trade dress is still subject to legal protection. In the US, a claim under section 43(a) of the Lanham Act is not circumscribed to registered trade dresses. The test articulated in Two Pesos for finding a trade dress infringement requires a plaintiff to establish that:

1) the design is non-functional;

2) the design is distinctive; and

3) there is a likelihood of confusion.

In Canada, unregistered trade dresses can be protected at common law through the tort of passing off. The classic test of passing off (see )?requires a plaintiff to demonstrate:

1) existence of goodwill in the trade dress;

2) deception of the public due to a misrepresentation; and

3) actual or potential damage to the plaintiff.

Additionally, a plaintiff must show the design to be non-functional.

Does Nicole Lee have a case?

Nicole Lee claims it owns trade dress in its designs, which consists of an ※artistic depiction of a stylish woman with a doll-like face§ combined with other Nicole Lee-associated elements such as, but not limited to, ※a pyramid-shaped lock with the brand name in red§ and ※beige lining with small graphics and brand name§.

The alleged trade dress is not registered, but as mentioned above, this does not bar legal protection or right to bring a legal action.

In its complaint, the plaintiff claims that its trade dress is non-functional and distinctive as ※[t]he appearance, nature and mood of [the trade dress] are of such an unusual design that a customer would immediately rely on them to ascertain the source of the product§. The presence of confusion is also alleged as the defendants manufactured and sold copies of the plaintiff＊s handbags, sometimes ※with confusing and misleading references to #NicoleLee or Brand: Nicole Lee.§

Based on the contents of the complaint, it seems that so long as Nicole Lee is able to prove all of its allegations at trial, it may be well on its way to making out a valid claim for trade dress infringement under US law. If the proceedings were to take place in a Canadian court, the company could successfully establish a passing off claim so long as it can prove the asserted non-functionality, goodwill in the trade dress, deception of public, and the damages it believes to be in excess of $5,000,000.

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

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After Professor David Vaver＊s light hearted introduction of Professor Dinwoodie＊s long list of accomplishments and status as a ※force of intellectual property internationally§, Professor Dinwoodie began his talk. He opened his lecture by indicating that his talk was part of a?working project on examining the dynamics of IP law in America, and?comparing whether the same dynamics existed in European IP law. Professor Dinwoodie proposed that a cardinal principle of IP law is that it is territorial, and it has always been that way even within the international systems since the late 19th century.? However, global trade and social changes along with the creation of the online marketplace have called into question the practical relevance of this territoriality principle.? There is a growing gap between the global reach of trade and the local nature of IP law, and what should be of interest to us is how we respond to this gap between the social reality and the legal principle of territoriality.

Professor Dinwoodie then put forth the question of whether we should reconfigure the legal principle of territoriality to comport with today＊s commercial reality. He noted one approach worth paying attention to: the Community Trade Mark (※CTM§) created by the European Union (※EU§) about twenty years ago. The CTM allows European producers to try and adapt their trademark rights from a national basis to a regional basis, and has been mimicked, whether adopted or considered, around the world 每 for example, among the Russian commonwealth of independent states, by groupings of African countries - both French-speaking and English-speaking countries,? a trans-Tasman mark for Australia and New Zealand , and a group of Portuguese speaking countries considering a?＆Lus車fona＊ mark. Professor Dinwoodie then said that this evolution in the approach to trademarks suggests that trademarks could be understood to have a connection to culture and language, and not necessarily solely territory as traditionally accepted by IP law. The room then pondered whether cross-country trademarks like the CTM would work here in North America 每 perhaps something like a ※NAFTA§ mark?

We were then presented with the three different dimensions to territoriality that would inform the rest of Professor Dinwoodie＊s talk. Professor Dinwoodie suggested that territoriality could be understood as: (i) territorial laws (the applicable legal norms), (ii) territorial rights (the acquisition of trademarks and the scope of those rights), and (iii) territorial actions (such as issues regarding jurisdiction and relief). Consequently, Professor Dinwoodie noted that these three different aspects of territoriality each create unique problems for trademark law, with each requiring unique solutions.

To illustrate this argument Professor Dinwoodie began in the realm of American IP law, using cases like , and to demonstrate how the US has created two different conceptions of territoriality with respect to trademarks. Professor Dinwoodie suggested that there is both a political purpose (deriving from registration systems stemming from the territorial character of political institutions) and an intrinsic purpose (the defining of trademark rights by referencing the geographic reach of a mark＊s goodwill) of American trademark law.

From there Professor Dinwoodie took us to Europe where we discussed the directive to harmonize legal norms and regulate through unitary rights as attempted by European trademark law. ?We explored in further detail the nature of the CTM and the importance of distinctiveness in trademark protection. I thought it was very interesting how in Europe a mark must be distinctive on all relevant grounds, in that a similar mark cannot exist anywhere else in Europe. This means that an application for an English mark could be defeated by the existence of a similar mark in Greece. Furthermore, marks in Europe cannot be descriptive 每 a secondary meaning must be shown in every country where there is a distinctiveness problem. In other words, if there is a problem with a mark in any part of the EU the applicant must be able to resolve the problem in each country where the issue lies (see ). Therefore, although the EU has tried with the CTM to create one trademark region, in reality the needs and challenges of twenty-eight separate territories must be satisfied in order for a trademark application to be successful. Trademark law in the EU is therefore not a total picture, but rather a puzzle 每 and if one piece is missing the image remains incomplete.

Professor Dinwoodie continued his talk with further discussions of the unitary character of the CTM in Europe, from dilution protection based upon reputation (as applied in ), to genuine use (see ). We then came to the issue of the scope of injunctive relief in regards to a CTM violation. As Professor Dinwoodie explained, if an infringement of a CTM is found an injunction for the infringing act is supposed to be put in place for the whole of the EU. However using French, English, and Dutch cases to demonstrate the different approaches to granting relief I found myself agreeing with Professor Dinwoodie＊s proposition that the unitary market is a legal fiction in the EU that does not exist in fact. Professor Dinwoodie＊s analysis demonstrated that the intrinsic territorial nature of a trademark＊s reputation tends to restrict the political grant of EU-wide relief that is meant to occur.

Two main lessons were given to the room to think about in the final moments of the talk. Firstly, Professor Dinwoodie suggested that the value of remedial flexibility in preserving local markets might grow as political units enlarge. Secondly, he said that the dangers of a gap between the market and trademark law lie in reform that both forces change too quickly and reform that fails to keep up with changes in the market. As such, other approaches to territoriality and trademarks that are connected to the intrinsic territoriality of marks might closer align with our social and commercial reality. Professor Dinwoodie proposed that the EU should consider American systems such?as remedial flexibility and the use of disclaimers to avoid the issue of multiple trademark conflicts across the EU＊s large regional area. Professor Dinwoodie then wrapped up his remarks by saying that while countries consider whether they should mimic the CTM in their own regions they must think about whether territoriality is best configured by a top-down political approach or if there are forces tied to the actual scope of goodwill that allows for a definition of territoriality that is not too far from the reality of the markets.

The lecture finished off with questions from the room 每 from Professor Vaver＊s questioning of Professor Dinwoodie＊s seemingly ※cut and dry§ comparison between intrinsic territoriality and political territoriality, to a question about the major problems countries may face setting up a model similar to the CTM. The entire experience was both engaging and informative as someone who is not familiar with the international conversations regarding trademark law. Admittedly, I had never considered trademark issues outside the borders of one country but Professor Dinwoodie brought to light many of the issues a global marketplace has created for IP law. As our world continues to expand and connect it is true that the law cannot remain confined within the boundaries of territorial lines 每 these lines have become more fluid and the law must flow as well.

Jaimie Franks is an IPilogue editor and a JD Candidate at Osgoode Hall Law School.

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Since the Quicksilver?character came into being in the?Uncanny X-Men?comics, but became a member of?The Avengers?in 1965, each upcoming summer sequel (X-men?produced by 20th Century Fox and?Avengers?produced by Marvel Studios) will feature a different actor playing dissimilar versions of Quicksilver on the silver screen with likely disparate back stories and characterizations.

Researching the Marvel Cinematic Universe reveals an interesting occurrence 每 commonly called??每 which pertains to trade-mark, copyright and licensing issues surrounding Marvel Studios＊ creative assets and intellectual property. This ?in?a 1993?licence agreement?is the source of the division of various intellectual properties between Marvel and Fox.

Twentieth Century Fox Film Corp v Marvel: A?Rip-Off Use of Fox＊s Mutants by Marvel?

Between the late 1970s and the early 90s, Marvel?licensed-out the names and likenesses of?many of?its superheroes.?This trade-mark strategy enabled Marvel to distribute its comic-book characters across multiple media formats 每 including film, television, and video games. One of these licensees was Twentieth Century Fox Film Corp (Fox), which acquired certain rights from Marvel in the X-Men comic book series such that they could produce theatrical motion pictures. Fox painstakingly developed its?X-Men?film franchise, finally releasing the first live-action installment in 2000. It was an instant success, both critically and financially, but led to litigation primarily centered on the following key contractual clauses of the 1993?between Fox and Marvel:

※The ＆X-Men＊ comic book series, referred to in the [1993] Agreement as the ＆Property＊, includes the X-Men Characters, specifically the ＆core＊ Characters and the Characters of the ＆X-Universe＊; their origin stories;?storylines from individual comic books;?and ＆all other elements relating to the Property and the Characters＊. The rights granted to Fox included ＆the right to use the title (or subtitle or portion of the title) of the Property or any component of the Property as the title of any Picture or related exploitation＊. The Agreement reserved all television rights to Marvel, subject to a proviso, critical to Fox＊s pending contract claim, that Marvel would not ＆produce, distribute or exploit or authorize the production, distribution or exploitation of any live-action motion picture＊ without Fox＊s consent (the ＆Freeze＊)§.

This provision proved problematic mostly because Marvel then made a?Mutant X?live-action television series and released it one year later in 2001. Fox complained of infringement of its exclusive rights to develop?X-Men,?and essentially claimed that?these ※hour-long episodes of movies made for TV§ were so substantially similar that ※Mutant X [became] a?§ of the X-men film. However, Fox＊s efforts proved unfruitful 每 both at the and levels 每 which ultimately allowed?Mutant X?to go forward until 2004.?At this point,?the parties ?signed a?confidential?settlement?agreement to resolve the dispute. Nonetheless, a key contractual term can be inferred, largely based on subsequent developments in the following years such as the establishment of the mutant-less Marvel Cinematic Universe in 2006.

It is reasonable to presume that the agreement requires Marvel to abstain from using mutant characters in either film, or television. This is likely what has led to a bifurcation of the Quicksilver character into a mutant character in X-Men, and a non-mutant variety that will likely appear in The Avengers.

Can Marvel Studios Ever Get All Their IP Rights Back?

Now that Fox has the rights to X-Men mutants, it has been reported that they?are keen to?hold onto the source of?a lucrative revenue stream:

※Word on the street is Fox has made it very clear that they will not let go of any of the properties under their control for any live action medium. We＊ve also been told that if it ever came to the point where they were going to lose any property they own because of failing to have a movie in production, they would simply produce a low budget, straight-to-DVD feature and stick it in any theater to fulfill their theatrical release clause＃§.

The one avenue for Marvel to reacquire their IP rights, and what is alluded to in the quote above, is what is known as a theatrical release clause. This clause is included in Marvel＊s contracts, and has been public knowledge since the?. In that dispute, it was revealed that the rights to?X-Men?would revert back to Marvel if Fox failed to film sequels by contractually-set control dates.

Over the years, the reversion of other character IP rights back to Marvel have shown this specific clause appears in most, if not all, of the company＊s confidential licensing agreements. Furthermore, past experiences show this is also the primary means by which Marvel can claw back some of its desired film rights in the?future. For instance, after New Line Cinema spent several years unsuccessfully developing?Iron Man, the rights??back to Marvel in 2005 and the character＊s use in his own film trilogy as well as?The Avengers?was thus made possible. Similarly, when Universal Studios failed to initiate principal photography of a?Hulk?sequel and make significant payments towards filming by a specified date in 2006, the rights also??back and made the Hulk available for use in?The Incredible Hulk,?The Avengers,?and at least five other films.

Other than the theatrical release clause, Marvel＊s primary contractual protection in the case of licensed-out characters concerns its right to define the logistics of the licensee＊s film production plans. In the 2002?X-Men?dispute, the following?was also revealed to exist which requires that Marvel must approve:

※(i) the ※fundamental elements§ of the story, namely the basic storyline, character integrity, living habitat, and conformity with the so-called ※X-Men Handbook§ written by Marvel; (ii) the screenplay, to the extent it substantially alters a fundamental element; (iii) costumes; (iv) the photography of scenes, to the extent it substantially alters a fundamental element; and (v) the content of director＊s cuts, to the extent it substantially alters a fundamental element.§

However, even without these contractual provisions, it should be noted that Marvel is still financially protected to some extent by its trade-mark strategy should it ultimately be unable to regain control of its characters＊ film rights in the future. Over the years, Marvel＊s merchandising reach has been shown to have few limits, as it can include anything ranging from perfume to toys and luxury cars to clothing. Indeed, protecting the names and likenesses of its characters has allowed Marvel to significantly profit from film-related merchandise sales even when the film (produced by another studio) itself disappointed at the box office. This was the case with Ang Lee＊s 2003 Hulk film where costumes and role-play toys like ※Hulk Hands§ became valued at $100 million.

Conclusion

So when you're checking out X-Men: Days of Future Past and Avengers: Age of Ultron and Quicksilver doesn't seem to look quite the same - don't worry! There's nothing wrong with your eyes or 3D glasses, it's simply uncanny intellectual property rights dealings at play. If you're seeing?double?in the coming years, don＊t think your eyes have mutated, its only?strange licensing agreements that?have created parallel universes for our beloved characters.

Harjot Atwal is an IPilogue Editor and recent graduate of the JD program at Osgoode Hall Law School.

The post Seeing Double - Two Quicksilvers on the Silver Screen? appeared first on IPOsgoode.

Negative Publicity

So far the only reported enforcement by King of CANDY had been?against?, who made the game "" [now titled "All Sugar Casino Slots - Jewels Craze Connect: Big Blast Mania Land"]. However, the news of King looking to trade-mark CANDY drew attention to past instances of King attempting to enforce their intellectual property rights. This included? against Albert Ransom, the maker of the game "" based on King's acquisition of the CANDY CRUSHER trade-mark.?[Ransom's open letter on the CandySwipe website detailing King's moves against him has since been taken down.] There has also been growing for King's attempts to the registration of trade-marks incorporating SAGA, as potentially confusing with King's SAGA trade-mark.

Whether these separate actions by King to enforce their intellectual property rights were conflated with their application for CANDY, or just polarized the public against King, there has been a massive public backlash against King. Numerous and ?were flooded with statements decrying King's actions, and a??to stop/revoke King's registrations of CANDY and SAGA gained almost ten thousand supporters. Despite an? by King attempting to defend their actions, the public reaction seemed clearly against King.

What Did King Give Up?

King's application to the USPTO to?register the CANDY trade-mark initiated a??where any interested parties can file an opposition to their registration on various grounds. It was during this period that King voluntarily?abandoned?its registration of the trade-mark, meaning the USPTO will no longer consider granting them the mark. As a result, King will not obtain a registration for the word CANDY and any future actions they intend to bring against others with regards to trade-mark infringement/damaging of goodwill would have to be brought under the common law tort of passing off.

Why Did King Drop the Mark?

From a financial perspective, there are few reasons for a successful developer such as King to stop pursuing registration of a mark or allow for its obtained registrations to be taken off of the register. The only of which are the application and maintenance fees, both of which are less than a few hundred dollars. On the other hand, actively defending a trade-mark requires?monitoring?the industry for unauthorized use, and using various enforcement measures to avoid dilution. While this can be a large financial burden, the result of failing to "police" owned registrations allows for the loss of?distinctiveness in the trade-mark. This opens up the possibility for others to challenge a registration and potentially strike it from the Registrar.

In a?, King stated that the reason for abandoning the CANDY mark was because it was no longer needed in light of acquiring another mark,?CANDY CRUSHER, which they believe is effective in defending their intellectual property rights. While this may be true, it is not hard to imagine that public pressure resulting from their initial application could have played a part in making this decision for the burgeoning game developer.

Not All About the Law

This move by King shows how intellectual property rights-holders often need to consider many factors in creating and adjusting IP and business strategies. While owning a trade-mark for CANDY would significantly strengthen King's position from a legal perspective, there were likely other considerations King weighed against that benefit leading them to decide that owning the trade-mark was not in their best interest. The tale of King and their CANDY trade-mark is a good cautionary tale for other rights-holders, in particular regarding the public relations implications that may come from an?aggressive?intellectual property strategy.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at the University of British Columbia.

The post "CANDY" Trade-mark Proves Too Bitter for King appeared first on IPOsgoode.

High-end bicycle part and accessory manufacturer Campagnolo filed an application for the proposed use of the word mark ※§ in association with bicycle parts and accessories. Notwithstanding the exclusion of ※tires, brakes, wheels, rims and spokes§ from the listing of wares in the application, and the fact that Bridgestone does not sell bicycle products in Canada, Bridgestone filed an opposition against the application. Bridgestone based its opposition on of the Trade-marks Act - confusion with its own registered mark ※§, which is used in association with tires, tubes, and wheels, as well as the mark ※§ used in association with tires and inner tubes.

The Federal Court reviewed the board＊s findings on the factors outlined in ?and noted that per , other factors gain significance once the appraiser finds the marks identical or very similar. Although many of the factors did weigh in favour of Bridgestone＊s opposition, due to the resemblance of the marks, the two central factors to the outcome were the nature of the wares and the nature of the trade.

On appeal to the Federal Court, Bridgestone submitted that it would be hard to imagine wares being more similar than in this instance (motor tires and bicycle accessories) and that confusion was likely because Bridgestone＊s wares potentially may sell through the same channels of trade as Campagnolo＊s. Bridgestone＊s opposition was premised on the position that although Campagnolo＊s current market is high-end specialty stores, in the future they might create a less expensive line and/or sell their products in box stores alongside Bridgestone＊s products. Bridgestone submitted that the Registrar should have looked at hypothetical channels of trade that may be used in the future.

In this case, the specific exclusion of ※tires, brakes, spokes, rims and wheels§ likely saved the mark from a finding of confusion. In Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA), the Federal Court of Appeal remarked that the test for confusion must have regard for ※whether confusion would be likely if the appellant were to operate in that area in any way open to it using its trade mark in association with§ the respondent＊s wares or services. This specific exclusion of Bridgestone＊s wares means that it is not open, nor will it ever be open, to Campagnolo to use its mark in association with those wares if the registration were successful.

In addition, the Court held that the Registrar was correct to only consider the predictable and usual channels of trade rather than simply any hypothetical channel imagined by Bridgestone, following the Federal Court of Appeal＊s decision in . In that case the Court approved a statement from the TMOB in that, ※the parties＊ respective statements of services must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording.§ Though a confusion analysis will look at any area open to use of the mark, the court restrains the analysis to the realm of probable trade. In this case, though the scenarios posited by Bridgestone were deemed as possible, they were not considered probable. The mark＊s relevant trade must be grounded in realistic possibilities in order for this factor to point towards a finding of confusion.

While at first glance this appears to be a reasonable constraint on the scope of analysis, I think that this subjective inquiry could cause problems for the court in the future. In this case, the court dealt with the straightforward example of a registration application that excluded the wares covered by a pre-existing mark which it would have allegedly been confused with. Moreover, the court determined that consumers of Campagnolo products would be sophisticated and likely to know the difference between Campagnolo and Bridgestone wares - even if Bridgestone did start to sell bicycle tires and Campagnolo sold their wares in box stores alongside Bridgestone products. However, it is likely that further clarification on how one determines the demarcation point between possible and hypothetical channels of trade will be required. For example, the quality of phone cameras today can and are often offered in the same channels of trade. Would a court have considered an SLR camera and a cellphone to be probable to enter the same channels of trade even ten years ago? ?Hypothetical versus probable is not only a subjective determination, but may ignore the nature of innovation in a number of contexts.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.?

The post Reality Check: Federal Court Rejects Bridgestone＊s Hypothetical Channels of Trade Argument in Confusion Analysis appeared first on IPOsgoode.

Trade-mark Confusion

To qualify for??in the Unites States, a proposed trade-mark must be sufficiently distinctive to differentiate the source of a good from other sources of goods. Once granted, trade-mark protection grants the owner exclusive use of it, and restrains anyone else from using a confusing trade-mark.?The American legal test for?likelihood?of confusion, as set out in ,?partly depends on the relation between the mark and underlying product, and the similarities in products between the trade-mark and infringing mark. ?However, the essence of the test is whether a consumer viewing the infringing mark would likely be confused as to what the source of the good is.

This is very similar to the Canadian test for confusion?set out in?,?which is whether or not a casual consumer, somewhat in a hurry, would be confused if the two marks indicate the same source.

How Can King Register "Candy"?

Protection of original designs and words generally pose little concern for trade-mark systems. However, the use of generic words?like "Candy"?divorced of any specific design or font poses some concern that the use of common words will become unduly limited.

?in the United States (see 15 USC ∫ 1052) partly depends on the connection between the mark and the goods is it used with. As a generic word, King would not be able to register "Candy" in connection with selling actual candy. Generic words are considered too useful in describing the products of their literal meaning to be protected by trade-mark. However common words can be registrable if there is no logical relation between the mark and the product they are used with. This is the case for marks like "Apple". This is why King was able to register "Candy", but only for use with two types of products that have no logical relation to "Candy", video games and clothing.

In Canada, a common word may also be??if it has obtained sufficient distinctiveness through use by the registrant, but the exclusivity granted will likely be limited to the industry in which it acquired distinctiveness. If King were to apply for trade-mark protection of "Candy" in Canada, they would have to prove it has obtained sufficient distinctiveness, and even then any protection would be similarly limited as in the United States.

What Did King Gain?

King was granted a trade-mark in the US for the word "", but only for uses in video games and clothing. King had previously obtained protection for numerous other trade-marks which included the word "Candy", but the word was always incorporated into a larger title or design as in "", or "". Since these previous trade-marks also had a design component, tests for confusion would also have to take into account the stylistic elements as well as the words used. The newly granted "Candy" trade-mark is a pure word mark, imposing no limitations on font, colour, or arrangement. This new mark potentially allows King to limit any use of the word "Candy" in video games and clothing. Previously, King would only be able to stop competitors and knockoffs who named their products and designed their logos in a sufficiently similar manner to King's that would cause confusion. Now, King can use their registration to oppose new registrations attempting to use the word "Candy" and the test for confusion in any related litigation becomes that much easier for King to prove.

King's Position

?at this point seems to be the knockoff games appearing in various "app" stores looking to bait consumers by including popular key words in their titles and ride on the coattails of King's success. This is precisely what the policy behind trade-mark law is intended to eliminate - consumer confusion about the source and quality of goods, and anti-competitive actions by rival companies abusing the goodwill generated by others.?There have been many??across the Apple app store and Google Marketplace, and there have been moves to crack down on?perceived?knockoff apps by the companies in charge of these markets. An additional trade-mark will give King another tool to use against?perceived free-riders.

Why Are People Worried?

The two key concerns by critics are the perceived??and long term implications of such a registration. The short-term concerns related to granting King a registration for "Candy" is their new-found ability to limit the use of this regular, every-day word by others.?While King's ability to limit its use might hinge on whether the word is being used in the areas of video games or clothing, there is still a concern that it could be abused. Some fear that the practice of aggressive enforcement of patent and copyright protections could?, leading to "trade-mark trolls" looking to exploit them. In my opinion, this eventuality seems unlikely as a fundamental difference between trade-mark and the other areas of intellectual property is that the trade-mark protection regime operates as a "use-it-or-lose-it" system. This limitation reduces the likelihood of non-practicing entities accumulating marks for the purpose of suing for infringement or for requesting licensing fees.

Some are also worried about what King's mark means in the long-term; to what extent will we be seeing further registrations of individual, ordinary words without a design element? From a policy perspective, is it wise for intellectual property offices to grant registrations for everyday and dictionary words even if they have acquired some distinctiveness through use? Does King's mark provide too much protection at the expense of limiting the market? Given King's success in obtaining a trade-mark for "Candy", it may be likely that other similar trade-mark registrations could be on their way. While this is not the first time that registrations for everyday words have been granted, there is something about this registration that leaves a bittersweet taste.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at the University of British Columbia.

The post Will "Candy" Trademark Prove Sweet or Bitter for King? appeared first on IPOsgoode.

CIPO is a hotbed of intellectual property action and is able to cater to the most eclectic of tastes. Have a thing for patents? CIPO has you covered. Trade-mark examination more your cup of tea? CIPO＊s got that too. CIPO＊s examiners in its various departments are the individuals responsible for dealing with applications for protection; connecting with direct filers or the agent community in order to grant rights. Hearing officers in the Trade-mark Opposition Board (TMOB) are tasked with sorting out disputes that arise from oppositions or non-use proceedings while those from the Patent Appeal Board (PAB) conduct ex partes administrative functions to determine whether or not an application should be granted patent rights. The Policy, Planning, International and Research Office (PIRO) conducts research into IP policy and best practices in other jurisdictions. But as the point of contact between the public and Canada＊s IP regime, CIPO also acts as a centre of information and assistance. In this capacity, they take calls from inquisitive parties, work on improving their social media outlets, and conduct outreach with those that they feel could benefit from an introduction to what the office does. CIPO really does it all and it＊s quite amazing to have been able to experience it through the IP Intensive program.

Darlene Carreau, the Chair of the Trade-marks Opposition Board, was my main point of contact at the Office and was an absolute pleasure to work with. Not only was she a great resource when I had a question to ask, but she was also the one responsible for planning my whirlwind tour through the other departments in the office. And what a tour it was! Due to the differences between each department, the work assigned to me each week was varied and always kept me on my toes. I wrote draft s. 45 decisions for the TMOB, created a policy report for PIRO on interfirm research and development collaborations, looked at trade-mark ※use§ in other jurisdictions and drafted trade-mark refusals for the Trade-mark Branch (TMB), tried to define ※the Register of Industrial Designs§ for the Copyright and Industrial Design Branch (CID), participated in a shortened version of patent examiner training and looked at ※utility model§ protection around the world for the Patent Branch, and finally spent some time doing case briefs for the Patent Appeal Board.

While the work was definitely interesting, I think the real meat of my experience at CIPO lay in my ability to see the inner workings of the office, pick the brains of those?who have been working on the ground floor of IP for years, and attending a variety of the meetings held in the Office. Seeing the way that an examiner approaches a file was an eye-opening experience, and being able to ask the examiners about their thought process and cases they worked on will be a perspective that most lawyers will never gain during their careers.

During my time in Ottawa I was also fortunate enough to attend a meeting for the Standing Committee on Industry, Science and Technology (INDU) where witnesses from a number of interested groups provided testimony and answered questions regarding Bill C-8, the . I was also able to attend a hearing at the Supreme Court of Canada 每 another event that not all lawyers have the opportunity to experience.

If you are an Osgoode student interested in intellectual property, I cannot stress enough the value of the work experience and personal contacts that I have gained through spending a work term at the Canadian Intellectual Property Office. My time at the office will no doubt be a boon to me as I enter my legal career and has given me a taste for what it means to work in the intellectual property field. And who knows? Maybe one day I＊ll return to that mystical place.

Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode＊s Intellectual Property Law Intensive Program.?As part of the program requirements, students were asked to write a reflective blog on their internship experience.

The post IP Intensive Program: Taking a Look Behind the Wizard＊s Curtain 每 A Semester at the Canadian Intellectual Property Office appeared first on IPOsgoode.

The problem? In 2001, Wujian Xili Textile Co Ltd, in Jiangsu province, ※炰薯§ with the Changan Trademark office in association with ※sewing needles and stitches§. Last month Heineken accused Wujian Xili Textile Co. of pirating its trade-mark. The action was allegedly triggered by Wujian Xili's use of the name at an industry trade show in Shanghai. Cai Fuwei, Wujian Xili Textile Co.'s legal officer, has that he has never heard of Heineken beer and had never seen their branding before.

It is not yet clear whether this suit will be heard by the .


A. China＊s Recent Trademark Reform: Good News for Rights-Holders?

Heineken's law suit comes at an interesting time in the Chinese legal landscape because on August 30, 2013, the the (PRC Trademark Law). While most of the revisions were procedural, there were a number of substantive changes and clarifications that may be relevant to the Heineken suit. An English summary of the revisions can be found .

Applications Made in Bad Faith: Of particular interest to foreign rights holders may be the appearance of a broad new principle that ※all trademarks must be applied and used in accordance with the principles of honesty and integrity§ ().

It specifically provides that if the applicant is aware of another party＊s mark through a prior contractual relationship, business dealings or other prior relationship, the applicant＊s application to register a trade-mark identical/similar to that party＊s mark for the same/similar goods or services will be rejected if it is opposed by the party with prior use.

Recognition of Prior Use: A registered trade-mark owner who is ※squatting§ on a famous but as-of-yet unregistered trade-mark is no longer allowed to prohibit a prior user from continuing to use an identical/similar mark within the original scope of his or her use. However, the registrant may request the prior user add appropriate markings to distinguish the marks ().

※Use§ under Chinese trade-mark law has been defined to appearance on products, packaging, containers and business papers, or use in advertisements, at exhibitions and for other business activities to designate the origin of the products ().

Clarification of China＊s Protection of Well-Known Marks: The new law expressly confirms the ※case-by-case§ recognition principle for well-known marks and the channels of seeking well-known mark recognition (). Basically, it states that the recognition of well-known trade-marks shall be conducted by competent authorities at the request of the trade-mark holder.

Additionally, use of the phrase ※well-known trademark§ (※喊靡妀梓§) is now expressly prohibited from use on goods, packaging or containers, in advertisements, exhibitions or other commercial activities. (). Any violation may be subject to injunction and a fine of 100,000 RMB (~ $16,000 USD).

Increase in Damage Awards: Before this revision, statutory damages were only about 500,000 RMB (~ $81,000 USD). This amendment has increased it to 3 million RMB (~ $490,000 USD) (). Punitive damages, up to three times the amount in other damages, are also now available when an infringement occurs in bad faith ().

The changes are scheduled to come into effect on May 1, 2014.

B.? Good News for Heineken＊s Case??

How might these amendments affect Heineken＊s suit against Wujian Xili? Certainly the protection of well-known marks and the recognition of prior use of the mark appear to weigh in Heineken＊s favor, given that Heineken entered the Chinese market before Wujian Xili registered for the mark. Moreover, some blogs have reported that Wujian Xili has been censured for in the past by - suggesting an opposition from Heineken may receive sympathy by the Trademark Review and Application Board.

Silence on Dilution: There is, however, one nagging problem for Heineken - the continued absence of the explicit codification of the dilution principle in Chinese law.? Protection against ※brand dilution,§ is the protection from a third party who seeks to use a registered trade-mark for an unrelated product. The existence of this principle in China's civil law regime has been a matter of some among academics and practitioners.

To help shed some light on these developments, I sat down with of Hong Kong University who teaches "International Comparative Intellectual Property Law" at HKU. The following is a transcript of that interview.

C.????? Policy Discussion with Dr. Yahong Li

Beatrice Sze: Thanks for sitting down with me today, Dr. Li.

Dr. Li: My pleasure.

Beatrice Sze: Having lived and worked in the Beijing, the United States, and Hong Kong, in your opinion, why do you think China is revising its IP laws now after so many years of being the world＊s ※Copycat Center§?

Dr. Li: Well first, I think the PRC recognizes that many of its laws are outdated and in need of revision, if only to clean up some of the procedural inefficiencies involved in application and objection. So there is a large practical consideration here. [Editor＊s note: The last time there was a major overhaul of the Trademark Act was in 2001.]

Secondly, the impression I get from these amendments is that the PRC is serious about answering the call from the international community to strengthen its protection of IPRs. To me the increase of the damage awards available to rights holders and the inclusion of punitive damages is the strongest indicator of this.

Beatrice Sze: What makes you say that? What makes these revisions substantive as opposed to empty gestures?

Dr. Li: What most people need to understand about China is that, while it has been a member of WIPO for nearly 30 years, its status as a formidable global economy is a relatively recent development. For the last 30 years it has largely been a developing country. Ten years ago, when these laws were drafted, an $81,000 USD award seemed like a low award to most American and European businesses. However, the reality is that kind of award would have crippled many Chinese businesses. The fact that the PRC is revising its laws to reflect the country＊s economic growth indicates to me that it is serious about meeting the WTO obligations and the bilateral treaties it recently signed with other countries in Asia.

Beatrice Sze:?What do you think of Heineken＊s case? Does the beer company have a shot given the difference between the products and wares in question?

Dr. Li: Yes, as you mentioned in your analysis, to me this case raises the question of whether or not the dilution doctrine is alive in Chinese jurisprudence. Heineken is claiming infringement of its trademark with respect to beer and Textile Co. has been using it with respect to sewing machines.? It is worth noting that there have been some decisions in which Chinese courts have adopted the American approach [Editor's note: which protects against dilution as a matter of law].? However, because China operates under a civil law regime, these decisions are not binding upon future courts or tribunals.

Beatrice Sze:?So it seems like Chinese law has a ways to go in its growth before rights-holders can be assured of the same kind of protection they are used to receiving in the United States and EU.

Dr. Li: Yes, I'd agree with that statement. Although I would suggest that this is certainly a step in the right direction.

Beatrice Sze:?It seems like it's an exciting time to be in this field - particularly in this part of the world.? Cheers!

Dr. Li: It is indeed. ?補戚! [Translation: "Cheers!" Pronounced:"Gan bei!"]

Dr. Yahong Li is an Associate Professor and Deputy Head at the Department of Law at HKU. She is also an Associate Director at HKU Technology Transfer Office.?? Read more of Dr. Li 's research in her book ※§ (Edward Elgar, 2010).

Beatrice Sze is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School. She is currently on exchange at Hong Kong University studying international law and the intellectual property and commercial laws of China.

The post Beer, Reform, and Policy: A Pint of Chinese Trade-mark Law appeared first on IPOsgoode.

The Pharmaceutical Patent Regime

Several changes to Canada＊s pharmaceutical patent regime were desired by Europe, and . Canada has agreed to allow a patent term extension (PTE) of up to two years. Additionally, the dual proceedings for patents 每 prohibition applications under the Patented Medicine (Notice Of Compliance) Regulations 1993 (as amended) for regulatory matters, followed by a court determination of patent validity or infringement 每 will likely be reformed. This second change is coupled with the newly acquired ability of brand companies to appeal an adverse PM(NOC) decision. However, the Canadian data and marketing exclusivity periods will , respectively, rather than move to the European period of 10 years. (To see past IPilogue coverage on this topic, click .)

These changes have predictably elicited polarized viewpoints. The Canadian Generic Pharmaceutical Association (CGPA) commended , but voiced their disappointment of others, including the PTE. The CGPA is pleased with the expected discontinuation of the dual litigation practice, the recognition of the generic pharmaceutical industry＊s importance in Canada, and the limitations placed on the use of the PTE. Notably, a suggests that the PTE＊s annual increased cost, even with the two year maximum, will range from $850 million to $1.65 billion.

By contrast, it was alleged in January 2013 that in Canada. Opinions nonetheless differ on whether brand companies have met previous promises to increase R&D in Canada in exchange for improved patent protection.

Whether these two changes are good for Canadians or not remains to be seen. Can the predicted annual cost of the PTE to Canadians be offset? The federal government＊s will not help those paying for prescriptions out of their own pocket, and lacked any assurance that reimbursement will continue in the long term. Pharmaceutical companies may perhaps decrease their product costs in response to lower litigation costs, or may conduct more research in Canada 每 but probably not sufficient to offset the high PTE cost.

Geographical Indications

Protecting Geographical Indications (GIs) was another important aspect of CETA. Until now, the only GI protection in Canada has been for . Otherwise, GIs are protected under or as certification marks under the . These laws have not always protected European GI producers against prior Canadian users, as occurred with the Parma ham GI in . In Europe, GI protection is largely and is potentially available for any foodstuff or beverage, although some countries such as the UK have also long had a scheme like Canada＊s and have also protected GIs under the law of unfair competition or false marketing.

Under CETA, Canada has agreed to increase the scope of GI protection to include . Areas that will remain unchanged in Canada include: words commonly used to describe items (Black Forest ham), generic plant names (kalamata olives), and components of longer terms, which can all still be used in association with wares. For other items, such as Asiago cheese, current users can continue to use the term, but future users are prohibited. It has not been indicated whether Canadian GIs can be protected in Europe. However, even if this protection is reciprocal, the limited use of GIs by Canadian producers suggests from the additional protection.

While existing Canadian trade-marks will , it seems that previously blocked European GIs, even if potentially confusing with Canadian trade-marks, may now be used in Canada. Thus, the European Commission has claimed that Prosciutto di Parma can in Canada. The possibility of harm to existing Canadian trade-mark owners and consumer confusion over the source of the two products becomes quite real. Consumer impact can of course be viewed as either a benefit (increased choice) or a detriment (confusion) but the potential harm to Canadian producers with valid trade-marks, coupled with the limited GI use by Canadian producers, suggests a clear victory for Europe in this sector.

Conclusion

In light of CETA＊s impact on patent law and GIs, Canada appears to have lost the IP game to Europe. Whether this preliminary assessment holds true once the full text of CETA is released, and is applied in Canada, remains to be seen.

The post Canada＊s IP Laws and the Comprehensive Economic and Trade Agreement (CETA): Canada Got the Short End of the Proverbial Stick appeared first on IPOsgoode.

Beyond a suggested resurgence of the principles that were last year, C-56 contains many backdoor revisions to the Trade-marks Act that do not pertain to counterfeiting. In addition to an extensive list of remedies (see Adam Stevenson's article ), including the creation of multiple (and stricter) , C-56 would extensively broaden the definition of a trade-mark. The proposed amendment to the definition reads:

※49.?If a?sign or combination of signs?is used by a person as a trade-mark for any of the purposes or in any of the manners mentioned in the definition ※certification mark§ or ※trade-mark§ in section 2,?no application for the registration of the trade-mark shall be refused and no registration of the trade-mark?shall be?expunged, amended or?held invalid merely on the ground that the person or a predecessor in title uses the trade-mark?or has used it for any other of those purposes or in any other of those manners.§ [underlined text indicating proposed amendments]

One key addition here would be the ※combination of signs§, which would vastly expand the scope of what can comprise a trade-mark beyond the traditional forms. As of the first reading of the bill, signs would now include: ※a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.§ These changes would mean that you could register trade-marks for purely intangible sensory phenomena such as scents, tastes, and sounds (which has been ). Also, in a semantic modernization, the entire Trade-marks Act would be amended to replace ※wares§ with ※goods§, to reflect common modern language.

The bill also suggests clarity of the registration of marks related to utilitarian features. Specifically, it would amend s. 12(2) to prohibit the registration of trade-marks where ※its features are dictated primarily by a utilitarian function§. Moreover, s. 20 would provide clarity that trade-marks can not be used to prevent others from using utilitarian features affiliated with the trade-mark. Another change associated with promoting public use and progressiveness is the proposed s. 18.1 which would allow application to the Federal Court to expunge a registered trade-mark that ※unreasonably limits the development of any art or industry§. This would bring the trade-mark system in Canada more in line with the underlying principles of the as a matter of public interest. These suggested provisions would represent a shift more toward ※user rights§, which was also seen with the expansion of fair dealing provisions in the Copyright Act last year with .

A number of the proposed amendments to the Trade-marks Act pertain to the power of the Registrar, reflecting recent caselaw. The Registrar would have the right to refuse an application with respect to one or more of the goods or services specified and accept it with respect to others. He would also have the power to strike any part of an improperly pleaded Statement of Opposition, so long as it was done prior to the filing of the applicant＊s? counterstatement (s. 38). The application process would be substantially changed, including the power being assigned to the Registrar to set regulations to establish the dates of registration for divisional applications to be re-merged (another new aspect of the Act; s. 39.1). Further clarity into the role of the Registrar includes the right to destroy records related to stale applications and registrations, within 6 years of the date of the final decision (s. 29.1) and a right to keep electronic records (s. 64). Finally, while the Registrar typically exercises no jurisdiction over correcting obvious errors in the records (it is presently subject to application to the Federal Court), ss. 41 and 48 would allow the Registrar to correct obvious errors within 6 months of entry and to remove registration of improper transfers, respectively.

Undoubtedly, the proposed amendments to the Trade-marks Act represent a modernization of the Act similar to that imposed by C-11 on the Copyright Act. However, a problem lies in the intention of the bill, which is purported to target counterfeiting. In my opinion, this bill mirrors the type of ＆omnibus＊ legislation that drastically and broadly reformed the , in the form of the wildly controversial . While some of the reforms suggested here will be welcomed to update archaic or out-of-date aspects of the legislation, the overall package of Bill C-56 is bound to be controversial. The , but I think that is unlikely the Conservative majority will waver. One thing is certain: the drama will be intriguing.

Ryan Heighton is a JD candidate at Osgoode Hall Law School.

The post The Living Daylights (＃Scents, Tastes, and Sounds): Bill C-56 Forebodes Drastic Trade-mark Reform appeared first on IPOsgoode.