The Government of Canada is inviting Canadians to read and comment on the (TPP), along with the government’s , which provides an overview of how the TPP would affect Canada.

The summary that the largest trade deal in history will have little effect on Canada’s (TMA) since the trademarks section of the TPP is “in line with Canada’s existing regime”. This blog will highlight two instances where that is not the case.

How the TPP changes Canada’s trademark laws positively

The TPP’s broadening of collective marks and geographical indications may provide some benefit for certification marks. Article 18.19 of the TPP requires that Canada “provide that trademarks include collective marks and certification marks. ��A Party is not obligated to treat certification marks as a separate category in its law, provided that those marks are protected.�� Each Party shall also provide that signs that may serve as geographical indications are capable of protection under its trademark system.”

While the TM Act currently provides for certification marks indicating that goods or services are of a defined standard, it does not explicitly carve out protection for collective marks, which indicate membership in a group or organization. Much litigation has resulted from confusion about whether professional designations can function as certification marks. In 2013, the Federal Court of Canada the possibility that such designations merited trademark protection. This ruling may lead to further adjudication over whether a future trademark application is for the name of an occupation or profession (using CDA to identify certified dental assistants remains prohibited) or for a professional designation or acronym (using CDA to identify that the services of the certified dental assistants meet a defined standard would be permitted). Accordingly, allowing trademark owners to apply for collective marks may provide an alternative to such litigation.

Another and larger change comes from the last sentence of Article 18.19 combined with . GIs are indications that identify either where a product originates within World Trade Organization member states, or a region where the quality, reputation or other characteristic of a product is essentially attributable to that geographical origin. While the TMA currently limits GIs to a , the TPP expands the definition to include all goods. This is a welcome change for trademark owners, who circumvented that limitation by using certification marks as de facto GIs for the products that could not make the list (e.g., beer, cheeses, meats, confectionary and baked products).

Amending the TMA to both include collective marks and expand GIs may discourage the current abuse of certification marks, which will result in clarity and transparency.

How the TPP changes Canada’s trademark laws negatively

The TPP’s broadening of well-known trademarks may provide little benefit for Canadians. The first half of Article 18.22 of the TPP states:

“(1) No party shall require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction, included on a list of well-known trademarks, or given prior recognition as a well-known trademark.

(2) Article 6bis of the Paris Convention shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark, whether registered or not, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark, and provided that the interests of the owner of the trademark are likely to be damaged by such use.”

The TMA currently makes no mention of well-known trademarks, and will need to be amended to define and protect the same. Such an expansion of trademark rights is dangerous for Canada because most are American. One wonders if American trademark owners need another ground upon which to strong-arm Canadians in light of recent news that the band .

The potential scope of Article 18.22 should not be underestimated. First, Article 18.22(1)’s removal of three possible conditions for determining that a trademark is well-known will result in uncertainty as to what kind of factors is left for consideration: Advertising? Sales? Surveys? Second, Article 18.22(2) is broader than the Paris Convention, which was limited to marks considered by “the country of registration or use to be well known in that country”. The dilemma created by removing any geographical jurisdiction can be illustrated by the example of two popular television shows: The Oprah Winfrey Show and A Date With LuYu (). Oprah is presumably a well-known trademark in the United States (and other foreign countries, given her popularity in Western culture) based on her . That assumption does not extend to China, where . Without any geographical jurisdiction, it is unclear if “well-known” refers to cultural significance (and must it cross country/language boundaries?) or if it is a numbers game. Third, footnote 13 of the TPP confirms that Canada “need not require that the reputation of the trademark extend beyond the sector of the public that normally deals with the relevant goods or services.” The removal of the traditional practice of limiting trademarks to their associated goods and services is troubling. The sum of the foregoing means Canadians are left with uncertain factors, no geographical jurisdiction and no internal limit to help them determine whether or not their trademarks could fall victim to well-known trademarks which had no prior registration or recognition in Canada.

As a country with a less litigious nature and fewer global brands, it appears Canada has little to gain and much to lose from such an expansion of trademark rights.

Overall analytical conclusions

Even if the Government of Canada was correct that the TPP’s trademarks section is “in line with Canada’s existing regime”, it is important for Canadians to remember that the TPP’s Investment chapter for “the revocation, limitation or creation of intellectual property rights” that the foreign investors claim are inconsistent with Article 18 of the TPP and the TRIPS Agreement. For example, .

The TPP’s trademark-related provisions will affect Canadians beyond the mere requisite changes to our TMA. In discussing how the TPP would affect Canada, we must consider the substantive effects on our government’s authority to make laws and our court’s autonomy to interpret them.

The post Branding the TPP: Trademark Pros & Problems appeared first on IPOsgoode.

Currently, the requirement under the Trade-marks Act that goods and services be stated “in ordinary commercial terms” in applications has been interpreted as requiring very detailed listings of goods and services.�� Further, under Bill C-31, the language of the requirement will not be changed, such that it is expected that the current Canadian practice will be continued, at least initially, after the amendments are implemented.�� Accordingly, it is not immediately evident and therefore interesting to consider what the benefits of adopting the Nice classification system will be.

To put the issue in context, it has to be understood that the requirements in Canada for specifying goods and services are stricter than requirements in almost all other countries of the world.�� Further, requirement for statements “in more specific terms” of goods and services listed in applications filed in the Canadian Trade-marks Office are the most common reason for issuance of Examiner’s reports by the Trade-marks Office.�� Considering sufficiency of descriptions is time consuming for examiners and responding to description requirements is time consuming for practitioners and costly for applicants.�� Accordingly, there is no doubt that there would be significant cost benefit to the Government and trade-mark applicants if adopting the Nice classification system will minimize issues arising in respect of sufficiency of descriptions of goods and services in Canadian Trade-mark applications.

Another benefit to the adoption of the Nice Classification system is that it will facilitate implementation of the , which provides for the international registration of trade-marks (or more correctly a system for cost-effectively obtaining domestic registrations in multiple jurisdictions). Article 3(2) of the Protocol provides for classification under the Nice system in international applications under the Madrid Protocol.�� Accordingly, adoption of the Nice Classification system goes hand in hand with the provisions in Bill C-31 for implementation of the Madrid protocol.

One issue that has been discussed in the context of descriptions of goods and services in international applications under the Madrid Protocol arises from the fact that international applications and registrations under the Protocol are based on home country applications and registrations.�� However, different countries provide different scope of registration as a result of different levels of detail being required in descriptions of goods and services.�� For instance, while some countries like Canada and the United States require specific descriptions, other countries like Italy and Australia accept broad specifications including Nice Classification class headings.�� There are variations lying at different points along the spectrum of specificity, including many countries that will accept descriptions of goods or services provided under Nice Classification class headings and others requiring individually defined specificity.�� The concern is that the scope of international registrations under the Protocol based on registration in countries requiring high specificity may be significantly narrower than those based on countries accepting broad descriptions.

The issue of scope of registrations under the Madrid Protocol was the subject of much debate leading up to the ratification of the Protocol by the United States in 2003.�� Further, the scope of protection issue has been raised as a reason why there have been fewer Madrid Protocol filings originating in the U.S. than were expected (see e.g. Donald Prutzman, (2010) 25:2 Int’l Practicum p. 173 at 177).

��In light of the foregoing, it is clear that the benefit to Canadians of adopting the Nice Classification system may depend upon the extent to which the strict requirements for descriptions of goods and services are maintained by the Canadian Trade-marks Office after implementation of the Nice Classification system.�� However, one also has to consider the overall effect on the trade-mark system in Canada, including the fact that registration provides a monopoly with respect to use of the registered trade-mark for the registered wares and services across Canada, and that proposed amendments to the Trade-marks Act in , the Combating Counterfeit Products Act, limit offences and remedies to unauthorized use of trade-marks in association with registered goods and services.

The extent to which descriptions of goods and services in trade-mark registrations should be broadened is not a trivial question.�� It will be interesting to see whether and how the regulations, policies and practices of the Canadian Trade-marks Office evolve in respect of such requirements under the updated Trade-marks Act.�� Hopefully, we will end up with needed clarity as to what descriptions will be acceptable; and scope for registrations that achieves a fair balance between the need to provide for effective enforcement of rights to protect brand owners and consumers, and the need to maintain a sufficient stock of language to facilitate effective selection, adoption and use of distinctive trade-marks by traders in Canada.

Brian P. Isaac is a partner at the Toronto office of��Smart & Biggar/Fetherstonhaugh.��Mr. Isaac's practice has involved litigation in all areas of intellectual property for over 20 years and has appeared before the Federal Court of Canada, the Ontario Superior Court of Justice, and the Federal and Ontario Courts of Appeal. He has also acted on numerous matters before the Canadian Trade-marks Opposition Board and Patent Appeal Board. Mr. Isaac received his L.L.B. from the University of Ottawa ('89) and was called to the Ontario Bar in 1991.��

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While the Bill will enable Canada to implement several international trade-mark treaties and make other welcomed changes to the law, the proposed elimination of the requirement to “use” a trade-mark before obtaining a registration for the mark is a major departure from the foundation of Canadian trade-mark law.�� This is significant because the law of trade-marks is based on use.

It is understood that the goal of Bill C-31 is to improve the position of Canadian businesses, including by reducing their costs.�� However, the proposed amendments to the TMA to delete the requirement for an applicant to have made “use” of a trade-mark before obtaining registration in Canada will negatively impact Canada’s trade-mark system.�� This will result in significant adverse consequences to Canadian businesses by increasing costs, causing delays, adding uncertainties and creating risks.

The proposed change will also increase litigation, which will stress the already overburdened resources of the Trade-marks Opposition Board and the federal court system. The elimination of “use” as a precondition for registration is not required by any of the treaties Canada intends to join pursuant to the amendments.

Use as a Cornerstone of Trade-mark Law

For over 150 years, the Canadian trade-mark system has required that a person “use” a trade-mark.�� The requirement has been repeatedly confirmed by the Supreme Court of Canada (see, for example, Justice Rothstein’s comments in the decision). A trade-mark is typically “used” with goods by displaying the mark on the goods or their packaging or labelling when the goods are sold.�� A trade-mark is typically “used” with services when the mark is displayed in advertising the services, such as on letterhead and signage.

Currently, in order to acquire rights in a trade-mark in Canada, a person must use the mark.�� Unregistered rights at common law are obtained through the acquisition of a reputation in the trade-mark as the identifier of the source of goods or services with which the mark is used in the marketplace.

To obtain a registration of a trade-mark, use is also a requirement.�� A Canadian trade-mark application may be based on one or more bases, all of which require use of the trade-mark, in Canada or elsewhere, before a registration is issued.

Elimination of Use of Mark as Requirement for Registration

The changes proposed in the Bill will permit an application to be filed, and a registration to be obtained, without any “use” of the mark by the registrant having occurred in Canada or elsewhere.�� The proposed changes will also remove the requirement that an application for a trade-mark identify whether the applicant has “used” the trade-mark and, if so, where, when and in association with which particular goods and services.

The proposed deletion of the requirement of “use” of a trade-mark by the applicant prior to registration is a fundamental departure from the Canadian trade-mark system that many in the international community consider to be the best in the world.

The government has stated that deletion of the “use” requirement is necessary for Canada to comply with two of the treaties, the Madrid Protocol and the Singapore Treaty.�� However, that is not the case.�� Specifically, the treaties do not preclude requiring “use” of a trade-mark as a prerequisite to registration.

A written for the Canadian Intellectual Property Office (CIPO) by the Department of Justice expressly acknowledges that deletion of the “use” requirement is not necessary for accession to the treaties.�� In fact, when the United States implemented those treaties, it did so without eliminating its equivalent “use” requirement.

It is true that many countries in the world have a system like the one that is being introduced. ��While, at first blush, one might think that the new system would make life easier for Canadian businesses, it will have the exact opposite effect for a number of reasons.

Increased Clearance Costs, Delays, Risks and Uncertainty

In the proposed system, businesses will suffer the consequences of a reduction of available trade-marks.�� Since there will be no requirement to “use” a trade-mark before registration, trade-marks which have never been “used” anywhere may be registered, including by trade-mark trolls who make no investment in the economy, and removed from availability to Canadian businesses.

Applications and registrations will cover long lists of goods and services for which there will be no “use” of, or even any intention to “use”, the trade-marks so a person who “uses” the trade-mark ALPHA with clothing might register the trade-mark for furniture, food and landscaping services, and prevent two other unrelated businesses from using the same mark.

This will likely to be a significant increase in cost for Canadian business and uncertainty in clearing trade-marks for use and registration.�� There will be more applications and more registered marks and, without investigation, there will be no way of determining from the application or registration information whether such marks have ever been used in Canada or elsewhere.�� When faced with these challenges, costs, delays, risks and uncertainties, businesses may choose alternate marks from a smaller available pool.

Trolls

Trade-mark trolls have not been a significant factor in Canada to date.�� The current use requirement has impeded the ability of a troll to secure registrations in Canada without any investment in a real business.�� Outside North America, trade-mark trolls often are able to register a mark used by others in another country, without the trolls being required to have used the mark before registration.�� The Bill invites trade-mark trolls to Canada.

Increased CIPO and Court Litigation

A very significant cost, in money, delay, risk and uncertainty, to applicants, registrants and third parties will be the administrative and court litigation that will result.�� The basic requirement of use prior to registration of a trade-mark will no longer act as a gate to registration.�� Businesses will have to incur the responsibility and the costs of adversarial proceedings to prevent and cancel third party registrations for confusing trade-marks that are not in “use” or that have overreaching lists of goods and services.

The increased litigation will take several forms, including opposition, non-use, infringement and expungement proceedings:

Once an application is approved by CIPO, it is advertised so that third parties can make a decision as to whether they wish to oppose the application to prevent or limit registration of the trade-mark.�� Oppositions have many of the hallmarks of traditional litigation and can take years to complete, both within CIPO and on appeals through the federal courts.

Given that trade-marks which have never been “used” will be the subject of applications covering long lists of goods and services, there will be many more oppositions by parties seeking to prevent or limit such registrations.�� The European experience is instructive. ��Currently in Canada only about 2-3% of all trade-mark applications are opposed.�� In Europe, which has a system similar to the one being introduced by the Bill, over 15% of applications are opposed.

After the third anniversary of a registration, a person may seek to cancel or limit the registration for non-use of the trade-mark.�� With registrations having been obtained without “use”, there will be many more non-use proceedings in CIPO by parties seeking to cancel or limit such registrations and appeals therefrom to the federal court system.

With an increase in the number of registrations, there is likely to be an increase in infringement and related litigation.�� Good faith common law use in Canada may be alleged to infringe a registration for a trade-mark that has never been used anywhere.

Lawsuits by trolls are likely to be settled by legitimate businesses paying “go away” money.�� Also, under other pending amendments to the TMA, a registrant may be permitted to avail itself of border measures to stop “counterfeiting” even where the registrant has never used the mark.

Applications to “expunge” registrations for reasons other than non-use are also likely to increase.

Constitutional Issues

The federal government has constitutional limitations that most other national governments do not.�� Specifically, trade-mark law is governed both under the federal Trade and Commerce power and the provincial Property and Civil Rights power. There are those who are of the view that aspects of the amended TMA will not be constitutionally valid because a system that grants registrations in the absence of “use”, namely without the trade-mark being “used” in trade or commerce, cannot be supported on the basis of the federal Trade and Commerce power.

Some have even suggested that the Bill might encourage provincial legislatures to enact their own trade-mark legislation. This would result in a patchwork quilt of both federal and provincial trade-mark rights, which is the case in the United States with both federal and state trade-mark registrations.

��What is the Status of the Bill?

Many Canadian large and small businesses and trade associations, such as the Canadian Chamber of Commerce, have communicated to the government their strong objections to the change in the use system.�� These voices have been joined by Canadian and international intellectual property organizations, and most of Canada’s leading trade-mark lawyers, despite the possibility that the new regime will create more legal work for lawyers.

The government is also being criticized for introducing this fundamental change by way of a budget bill, which has traditionally been the subject of less opportunity for analysis. ��Businesses, trade associations and the trade-mark bar have asked the government to, at least, remove three sections and one transitional section from the Bill in order to have meaningful analysis and debate.

However, to date, the government has not shown a willingness to engage in meaningful debate on the proposed changes.�� It is difficult to understand why or how a government that says it is committed to assisting Canadian businesses is taking such a bold step to create more cost, delay, risk and uncertainty for them.

Sheldon Burshtein and Antonio Turco are partners at the Toronto office of Blakes, Cassels & Graydon LLP. ��Mr. Burshtein's practice includes the clearance, prosecution, acquisition, enforcement and exploitation of patents, trade-marks, copyright, industrial designs and other forms of IP.��Mr. Turco's��practice focuses on litigation related to intellectual property rights, including disputes related to patents, copyright, trade-marks, industrial designs and trade secrets.��

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A Tale of Two Woodpeckers

Two businesses operating in BC allegedly marketed wood flooring products using a trade-mark that contains either an image of a woodpecker or the word "woodpecker" itself. The plaintiff, Woodpecker Hardwood Floors (2000) Inc, has been in the hardwood flooring business since as early as 2000. The defendants, Wiston International Trade Co, Ltd and Wiston Building Materials Co, obtained trade-mark registrations in early 2013 for various logos and word marks including some which use the word “Woodpecker” in association with wares and services involving hardwood floors. The plaintiff, in response to what it viewed as an infringement of its common law trade-mark rights, alleged passing off and sought a declaration of invalidity, as well as an interim injunction.

This situation closely tracks elements in most trade-mark litigation – save for the fact that Woodpecker sought relief in the BC Supreme Court, the provincial court of general jurisdiction. Since the claim involves allegations of invalidity concerning a registered trade-mark, such a claim would at first seem clearly within the Federal Court’s jurisdiction. The fact that an injunction was granted – and upheld on appeal – by BC provincial courts suggests that, in at least one province, whether or not provincial courts can declare trade-mark registrations to be invalid is a serious question to be tried. Related to this issue is whether or not owners of registered trade-marks can be restrained from using their marks by unregistered owners in various provinces.

The “Trump Card” and the Federal View

In Ontario, the Court of Appeal has referred to a trade-mark registration as a “trump card” which gives the owner a full answer to an allegation for passing off. In ([2002] OJ No 2029), the ONCA found that the defendant was entitled to use its registered mark in association with beer, and if a competitor takes exception to that use, “its sole recourse is to attack the validity of the registration” [at para 16].

While the plaintiff in Woodpecker did attack the validity of the defendant’s registration, it did so by seeking a declaration of invalidity in provincial court. This type of attack differs from the interpretation of Molson v Oland offered by the Federal Court in (2010 FC 1099, reversed in part on different grounds) in which Justice de Montigny found that the appropriate remedy for an unregistered owner alleging passing off against the holder of a registration was to “seek the expungement of the infringing trade-mark” [at para 209]. While the Federal Court of Appeal clarified that Molson v Oland only applied to the use of the mark as registered, the decision still seems dispositive in the current case.

Yet the BCCA still confirmed that there is a serious question to be tried. To understand why, one has to look to the language of the Trade-marks Act, the jurisdiction of the Federal Court, and even the division of powers established in .

Jurisdictions, Conflict and the Availability of Relief in Provincial Court

Trade-marks are not explicitly subject to the exclusive legislative authority of the Parliament of Canada under the Constitution Act, 1867, unlike “Patents of Invention and Discovery” and “Copyrights” (, respectively). Instead, federal legislative competence has historically been grounded in the broad section permitting legislation regarding the “Regulation of Trade and Commerce” ().

Parliament’s legislative competence to pass legislation which affects the common law tort of “passing off” was the subject of a direct challenge in , 2005 SCC 65. In Kirkbi, the Supreme Court found that , which codifies the common law civil action of passing off, is sufficiently integrated into the federal trade-mark scheme and therefore constitutional.

However, passing off remains a valid cause of action in provincial courts, who have original jurisdiction with respect to “Property and Civil Rights in the Province” (). Therefore, Parliamentary and provincial authority over trade-marks overlaps between the two jurisdictions.

As a result, potential overlapping jurisdictions can exist between federal and provincial courts where explicitly statutory language does not grant the federal court exclusive jurisdiction. Unfortunately, the Trade-marks Act may not be explicit enough to preclude a declaration of invalidity by a provincial court. The language of grants exclusive original jurisdiction to the Federal Court to order that any entry in the register be struck out or amended on the ground that the entry as it appears on the register does not accurately express or define the rights of the person appearing to be the registered owner of the mark. In addition, grants exclusive original jurisdiction to the Federal Court in any case in which it is sought to have any entry of the register of trade-marks made, expunged, varied or rectified. The subtle distinction drawn by the provincial courts in BC is that a declaration of invalidity is not an order to strike out or amend the register – and therefore does not necessarily fall under the exclusive jurisdiction of the court [see Woodpecker, at para 10].

The Position of the BCCA and its Potential Ramifications

For the interim order, the court concluded that it had the jurisdiction to issue an injunction against the defendants’ use of their registered marks on this basis, as well as jurisdiction flowing from and the inherent jurisdiction of the court. As this appeal involved an interim injunction, it was unnecessary to conclude that the provincial courts in BC did in fact have jurisdiction to make a declaration of invalidity regarding an entry on the Trade-mark Register. The decision simply stands for the proposition that provincial courts in BC still view the effects of registration which were the subject of comment in Molson v Oland and Philip Morris v Marlboro Canada, as well as the effects of to be unsettled matters of law – indicating that they may not interpret the FCA’s interpretation to be binding for the purposes of provincial law.

The issue, if it goes to trial, could have important ramifications. A system of national registration which is subject to inconsistent provincial restrictions could pose obstacles to rights-holders. More importantly, the ability of provincial courts to make differing declarations of invalidity undermines the purpose of a national trade-mark registry, creating gaps in coverage for a system intended to provide an easy method of national protection. In any case, this decision shows that provincial courts are unwilling to limit their jurisdiction without a full hearing on the merits of the case, and that any restrictions imposed on that jurisdiction will not be taken lightly.

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

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Claim for Infringement and Counterclaim

Mattel argued that Zynga's use of the mark was contrary to article 9 of the��.��This provision allows exclusive rights to a community mark, and the right to prevent use of a sign that is either : 1) identical ��to the registered mark, 2) similar to the registered mark and likely to cause confusion in relation to identical and similar goods, or 3) where use of the mark takes unfair advantage of the distinct character and reputation of the community mark.��Zynga counterclaimed that the SCRAMBLE mark was invalid as it lacked distinctive character, was descriptive and had common usage, and that their mark was therefore non-infringing.

Evidence provided to the court indicated that Mattel was aware of the game for a number of years before launching a claim. At the time of the decision, the game was in its fifth version, and not only was Mattel aware of the game in earlier incarnations, but employees played the game with each other. The court also found it troubling that the claim was launched soon after negotiations regarding a joint venture between Mattel and Zynga broke down. The court concluded that such a delay indicated at worst that the negotiations were not carried out in good faith, and at best, that Mattel did not consider the game worthy of an infringement claim.�� In comparison, the court found that an email detailing Zynga’s concern over the potential confusion between Scrabble and Scramble to be insignificant.

Decision

The Court held that the word “scramble” was the common name for this type of game. As a result, the court agreed that Zynga merely used a wording in��the public domain that is descriptive of the game and therefore did not infringe the mark.��The Court concluded that neither “Scramble” nor “Scramble With Friends” infringed the SCRABBLE trade-mark. The Court deemed that mark was not similar and not likely to cause confusion for infringement or passing off. Yet, the Court did qualify this decision on a modification of the logo. The Scramble logo at the time contained an “m” on its side. The Court found that this gave “the impression that the word is scrabble when one looks at it quickly and has the propensity to confuse.” Although Zynga was largely successful they will have to alter their logo to avoid this potential confusion.

Canadian Outcomes

In North America, Hasbro holds the�� trade-mark, and Electronic Arts holds the rights to�� of the game. In addition, Hasbro entered into an����to create physical versions of games in the Zynga family, similar to the failed agreement in the Mattel claim. These games include a "" version of Monopoly��and a "" version of Pictionary that have tie-ins to the online versions of Zynga games.

In a similar case in Canada,��, the Canadian Federal Court examined the similarity between Trivial Pursuit and a parodic adult version. In a comparison of the script and packaging, the court found that the defendant’s script was reminiscent of, but not identical to, the plaintiff’s script. The court went on to hold that the design and appearance of the game intended to raise an association with Trivial Pursuit. The court in that case rejected an argument that Trivial Pursuit was descriptive of the type of game, as it did more than merely describe the game. In that case, the court turned its mind to the use of a trade-mark and made it clear that the focus of the action is "use", not the similarities between the games.��In that case, the court did find that the parody infringed the Trivial Pursuit trade-mark.

Due to the agreement between Hasbro and Zynga and the fact that the game is unavailable to Canadian consumers, a similar claim is unlikely to be made in Canada. If a claim was brought in Canada, the claimant would have to show infringement of the SCRABBLE mark itself, rather than rely on the Zynga game’s similarity to Scrabble, or infringement of SCRAMBLE, since that ��is owned by Konami. ��Even absent this web of ownership, I believe that based on��Horn Abbot,��a Canadian court would be unlikely to find infringement in this case. To��determine whether trade-marks or trade-names are confusing, the court must have regard for the surrounding circumstances including the degree of resemblance between the marks in appearance or sound or the ideas suggested according to ��of the��Trade-marks Act.��Unlike in��Horn Abbot, the marks are not similar in appearance. The UK court noted the use of��different words, script and packaging. Furthermore, I think that the addition of “With Friends” to the Zynga game's name identifies Scramble as a member of the Zynga "With Friends" family of marks rather than an attempt to confuse consumers by passing off.

In this case, Scrabble appears to be scrambling for a better result. A Mattel spokesperson has that Mattel was “disappointed that the court did not rule that Zynga should cease using the Scramble name, which Mattel intends to appeal.”

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

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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.