On November 14 2022, the United States Court of Appeals for the Ninth Circuit ruled in &�Բ�����;(“Jiaxing”) that foreign parties to a trademark infringement complaint can be served by trademark owners within the U.S. because of . Statutory interpretation of s.1051(e) in this case provides a new way to serve foreign defendants via the Director of the United States Patent & Trademark Office (“USPTO”).  Specifically, Jiaxing provides that a foreign defendant may be served if they have filed an application for a conflicting trademark at the USPTO. This mitigates the traditional temporal, financial, and logistical challenges associated with preventing trademark infringement by foreign companies.

The Los Angeles-based &�Բ�����;(“San Antonio”) is known for their Stella Rosa brand that they have produced under the trademarks  since 1998. They , a Chinese company, for registering the mark “RIBOLI” for tands, containers, cocktail shakers, dishware, and other kitchen products. Jiaxing registered “RIBOLI” in 2018 for clothing and shoes and in 2020 for kitchen products. Accordingly, San Antonio filed a complaint for trademark infringement, trademark dilution, and false designation of origin. They are seeking an injunction against Jiaxing from using the “RIBOLI” mark, and an order to prohibit Jiaxing’s registrations.

The current route to service of foreign defendants is the Hague Convention, but San Antonio sought a faster and inexpensive way to serve Jiaxing. They did so under  which allows U.S. residents to serve the foreign defendant’s O agent or the USPTO director in “proceedings” that affect the mark. The provision states that if the trademark applicant is not in the U.S., they can designate a person in the U.S. who may be served on their behalf regarding the marks; and if that person is not found then the USPTO director may be served. 

Jurisprudence conflicts as to whether s.1051(e) is limited to USPTO proceedings or includes civil lawsuits. As such, the  that held the provision only applies to administrative proceedings. The Ninth Circuit reversed this by interpreting that the words “proceedings affecting a trademark” are broad enough to include civil litigation. Since , the provision must encompass serving process for disputes in district court. The Court held that the wording only requires that it’s plain and ordinary meaning be taken. Moreover, since the Lanham Act grants courts the power to affect trademarks in other ways, s.1051(e)’s use of the word “process” must apply to court proceedings. Further, the word , and thus it would have been  if it were not meant to also include civil proceedings.

Serving foreign defendants through s.1051(e)  as it governs service amongst foreign countries whereas s.1051(e) governs service within the U.S without international transmittal of documents; which means it .

Foreign infringers are increasingly popular and  on marketplaces that verify IP ownership, such as Amazon. The decision is significant, in that it may act as a deterrent — it warns foreign companies that an application at the USPTO is all that is needed to be served a U.S. lawsuit. The Court’s adoption of the plain and ordinary meaning is akin to the starting point of statutory interpretation in this context in Canada —  as adopted in Rizzo and Bell ExpressVu. This points to an expectation of similar results in Canadian courts, wherein a purposive analysis would be adopted to assess the ability of domestic trademark owners to serve foreign infringers.

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Every year on January 1, works protected under copyright law enter into the public domain due to their copyright protection expiring. Thus, as a new year approaches, those in the field of copyright look to see which works will expire at the end of the year. As the world entered January 2023, many excitedly anticipated that Disney’s copyright protection of Mickey Mouse in the United States (US) would expire at the end of 2023, allowing Mickey Mouse to . This means that  reproduced, adapted, published, publicly performed, and publicly displayed by anyone in the United States without infringing upon Disney’s copyright.

As a general rule in the U.S., for works created after January 1, 1978,  for the life of the author plus 70 years. However, for works created before January 1, 1978, the duration of copyright protection depends on several factors as set out by  in the United States. Mickey Mouse  in the US in 1928 with the film “Steamboat Willie,” so its copyright protection term was dictated by several factors outlined in chapter 3.Additionally, the expiration of the copyright term only applies to the original version of Mickey Mouse displayed in Steamboat Willie; later versions of Mickey Mouse will still be protected by copyright. This original version of Mickey Mouse is a black and white rat-like depiction with a long snout and black eyes, whereas later versions of Mickey Mouse include the version of Mickey with his signature red shorts and white gloves.  

Copyright law in the US has evolved many times in part as a result of Disney lobbying for copyright term extension. Originally, the Mickey Mouse copyright was supposed to expire in 1983 because when Mickey Mouse was first debuted to the public in 1928, copyright law only protected works for 56 years. However, in 1976 Congress passed the  which extended the copyright term to 50 years after the death of the author or 75 years after the death of the author if the author was hired by an employer to create the work. As a result, the Mickey Mouse copyright was then set to expire at the end of 2003.

Starting in 1990, Disney pushed hard for an extension of copyright protections. This resulted in the  which extended copyright protection to 70 years after the death of the author. This extension is why Mickey Mouse’s copyright protection is set to expire at the end of 2023. The extreme lobbying from Disney to extend copyright protections earned the 1998 act the nickname of the “Mickey Mouse &�Բ�����;������.”

Although the original Mickey Mouse’s copyright protection will expire at the end of 2023, Disney will still be able to protect the Mickey Mouse brand through trademark law. Mickey Mouse is  as Disney’s property because . Trademark protection can theoretically last forever if Disney can continually show that Mickey Mouse is associated with its company.  Disney will likely be able to continually show an association with Mickey Mouse. In 2007, Walt Disney Animation Studios  to incorporate the original version of Mickey Mouse. Therefore, although someone may use the original version of Mickey Mouse in a work, they are not able to use this version of Mickey Mouse for any branding purposes or any purpose that would cause consumers to be confused about the source of the Mickey Mouse product. These intersections between trademark and copyright law may stop Mickey from strolling into public use for the coming years.

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Anita Gogia is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On November 2, 2022, in the case of (“Bhagwani”), the Ontario Superior Court of Justice upheld trademark principles which state that an enforceable right does not exist on the mere filing of a trademark application absent use of the mark.

In Bhagwani, the divisional court an injunction prohibiting Bhagwani from using “Bombay Frankie” in any restaurant they operate. The motion judge had to 2788610 Ontario Inc. because it was the first to file a trademark application for “Bombay Frankies” despite not having yet used the mark. The divisional court reversed this decision and held that an applicant cannot sue for trademark infringement until the . If they are to sue for passing off when registration is pending, they cannot do so successfully unless the mark has developed goodwill.

2788610 Ontario Inc. applied to register the mark in October 2020 but that application had yet to be examined, approved, or advertised. It was in the process of developing a franchise system of restaurants but had not opened or advertised any restaurant or obtained any reputation associated with the mark. In contrast, Bhagwani had on various menu items and to register “Bombay Frankie” in 2021. They also opened two restaurants with the “Bombay Frankie” name.

In granting the injunction, the motion judge applied the :

• First, a serious issue to be tried is present. The issue is whether 2788610 Ontario Inc.’s entitlement to the trademark manifests on the application date or registration date. The judge accepted that this is a novel claim and to establish a “serious issue to be tried”.
• Second, the judge held that 2788610 Ontario Inc. would suffer irreparable harm that is not compensable without the injunction. The judge concluded that Bhagwani would have a significant advantage if they continued operation with the marks in issue on their restaurants.
• Third, the balance of convenience favoured the granting of an injunction.

The divisional court reviewed the motion judge's decision on a standard of correctness because it is an error in principle attributable to the application of an . The divisional court applied the test in accordance with established trademark principles:

• First, in finding a serious issue to be tried, the motion judge incorrectly concluded that 2788610 Ontario Inc. had a right to the marks by virtue of the trademark application or that its trademark would be registered (both errors of law). Per , a trademark must be registered to give rise to a cause of action. There is no certainty that 2788610 Ontario Inc.’s application will be granted. In considering a possibility of a passing off claim, the court upheld that to establish passing-off per , 2788610 Ontario Inc. must have shown existing goodwill. While 2788610 Ontario Inc. was engaged in start-up activities, those per the jurisprudence. In this analysis, the court notably recognized that goodwill could exist from the perspective of potential franchisees (but was not established on the facts of this case).
• Second, the court held that the motion judge made a by ruling that 2788610 Ontario Inc. would suffer irreparable harm without an injunction because the loss of goodwill , only established by clear evidence. The cause of action protects existing, not potential goodwill. The court cited , noting that confusion does not per se result in “irreparable harm not compensable in damages.” Irreparable harm is a high bar.
• Third, although the divisional court did not consider the balance of convenience, the court did note that such consideration may favour Bhagwani, who had to remove signs, website content, and social media accounts bearing the “Bombay Frankie” name.

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Rosie Giannone is a 1L JD Candidate at Osgoode Hall Law School.

Image from the

EUTM 17981629 in the name of Pest Control Office Limited

The European Union Intellectual Property Office’s (EUIPO) Board of Appeal has a EUIPO decision from May 2021, rendering invalid a trademark registration for Laugh Now, better known as the monkey sign image, by anonymous U.K. street artist Banksy.

Background

Banksy’s graffiti artwork Laugh Now first appeared in Brighton, England, in 2002. The work depicts an image of a monkey wearing a sandwich board around its neck, reading, “Laugh now, but one day we’ll be in charge.” , a U.K. company specializing in greeting cards depicting street art, subsequently used this image in their products.

On November 7, 2018, Pest Control, Banksy’s authentication body, filed an EU trademark claim on behalf of the artist for Laugh Now. Typically, artists protect their artwork using only copyright law. However, artists are required to when claiming copyright infringement. Trademark law allows Banksy to remain anonymous and maintain his mysterious artistic persona.

On November 28, 2019, Full Black Colour applied to cancel Banksy’s trademark under the European Union Trademark Regulation (). Full Black Colour claimed that the work was More specifically, Aaron Wood, a trademark lawyer, argued on behalf of Full Colour Black that . A trademark holder must make of a registration by using it to acquire market share in relation to distinguishable goods or services. that Banksy only registered the trademark to prevent others from using his image and to avoid revealing his identity under copyright infringement claims.

On May 18, 2021, the EUIPO Cancellation Division ruled in favour of Full Colour Black. The decision repeatedly referenced a by Full Colour Black in 2019, which challenged the registration of a trademark for Banksy’s work, The Flower Thrower. The EUIPO found that since the art is a work of graffiti originally spray-painted in a public place, Furthermore, the Board accepted Banksy’s 2007 book Wall and Piece as damning evidence that this trademark was registered in bad faith. In the book, Banksy famously claimed that “copyright is for losers” and stated that

The EUIPO also accepted that Banksy knew that his works were widely photographed and reproduced by third parties between these parties and himself. The EUIPO noted that Banksy provided high-resolution versions of his work on his website and invited the public to download them. Essentially, the court found that and that the artist had done nothing to prevent this. Ultimately, the EUIPO declared the trademark registration of Laugh Now .

Appeal

On October 25, 2022, the EUIPO Board of Appeal reversed the Cancellation Division’s decision, ruling that Banksy’s trademark registration for Laugh Now was not made in bad faith.

The Board found that the wide-scale commercial use of Banksy’s artwork had not been proven. Although Banksy makes his artwork available online for free downloading, he these images from being used for commercial purposes.

Furthermore, that a work of art subject to copyright protection could also act as a trademark. Registering a trademark to prevent others from using one’s work does not amount to bad faith when the applicant is the legitimate owner.

Moreover, the Board notes that the trademark was cancelled only six months into Banksy’s . During this time, the rights-holder is not required to use their trademark. In this case, it was for the Cancellation Division to assume that Banksy never intended to use the trademark or allow legitimate third parties to use it as licensees.

Finally, the Board reasoned that accepting Banksy’s statement that “copyright is for losers” as supporting a finding of bad faith .

According to Lee Curtis, a trademark specialist, this case is a for Banksy and Pest Control, as it allows the artist to maintain his anonymity, contributing to his artistic success. Full Colour Black has brought invalidity proceedings against 7 of the 15 European Union Trademarks (EUTM) filed by Pest Control on behalf of Banksy. In 6 of these cases, the Cancellation Division invalidated the trademarks, finding that they had been filed in bad faith. To date, Laugh Now is the only case successfully appealed.

Full Colour Black has expressed with the outcome of the appeal, noting that it is out of line with the Board’s decisions thus far. However, the company has no plans to appeal the decision.

Ultimately, the Board of Appeal’s decision clarifies that a trademark should be presumed to have been registered in good faith unless proven otherwise, leaving Banksy the one laughing now.

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Mariela Gutierrez Olivares is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Controversy ensued when a Mexican food restaurant in the UK, �ղ���ܱ��í��, issued a  to a similar restaurant, Sonora �ղ���ܱ��í��, for infringement of their registered mark "Taqueria." Yet is Spanish for a place where tacos are sold. Trademarking is akin to trademarking "pizzeria" or "café."

Across social media platforms, what they perceived as an act of ������ (owned by �ղ���ܱ��í�� Worldwide "TW"). A group called MexiBrit even launched which has collected over 100,000 signatures to date, hailing, "The Mexican UK community is outraged and we won't stop until we see justice. Stop the cultural appropriation!" However, Sonora �ղ���ܱ��í�� is not the first business TW's trademark is enforced against. In 2020, TW of their mark and successfully opposed a competitor’s mark, "Taco Ria" claiming it was "visually similar and phonetically and conceptually identical" and would confuse consumers.

Conflicts surrounding marks that many consider generic, descriptive or worse culturally appropriating (or misappropriating) are . The recent �ٲ���ܱ��í�� highlights the following issues in the global trademarks (and IP) regime:

1. The role of trademark examiners interpreting the statutes that grant trademark rights is increasingly challenging in a global economy. In cases like the one here, trademark examiners and officers consider the average consumer's knowledge in the jurisdiction they are acting. Here, a trademark examiner would examine the understanding of the UK public when reviewing the "Taqueria" mark. Presumably, when it was granted in 2004, the mark was not considered generic or descriptive.
2. The use of generic and descriptive marks will inevitably cause harm. Owners who invest resources to build a reputation suffer when they have to discontinue use of a mark. Inversely, non-owner users who become excluded from using a term where no other exists also suffer. Here, TW could choose to surrender its mark, but not without facing a considerable financial setback – forfeiting the investment made to build its name and re-distinguishing its business under a new name. Sonora �ղ���ܱ��í�� and others who wish to defend their use of the mark must also spend their resources and potentially face more significant losses if those actions fail.
3. Protecting traditional and cultural heritage requires adequate legal tools. Whether "Taqueria" ought to remain a generic term available for anyone to use in their business name is a legal question. Though various have called for the , legal tools to determine how such protection is to be accomplished are lacking. Despite the moral reprehension associated with , legally-binding solutions are few and far between, left to each jurisdiction.

Trademarks indicate the source of a product or service. Where intellectual property rights (including trademarks) exist, accusations of cultural appropriation are insufficient to cancel or invalidate those rights. All things considered, more �ٲ���ܱ��í��s means more tacos and that is a great problem for the UK and the world to solve.

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

For all the gamers out there, do you still remember the classic, pixelated games of the 2000s? Gone are the days where fiction and reality were easily discernible, with the emergence of hyper-realistic video games such as , and depicting entire fantasy worlds at a crisp 1080p quality or better.

The video game industry has sky-rocketed in the last decade, especially due to historic amounts of people turning to digital forms of entertainment to wait out the pandemic. In this , game developers must be especially cautious of potential trademark infringements. Two recent U.S. court cases addressed the question of whether depictions of real vehicles in video games constitutes trademark infringement.

Battle of the tractors:

The star of this case is a K-700 tractor. Saber Interactive Inc.(“Saber”) had entered into a licensing agreement with the trademark owner for the exclusive intellectual property rights to depict the K-700 in its video game, Mudrunner. The agreement included the right to enforce the license in court. Subsequently, Oovee Ltd (“Oovee”) released its game Spintires, featuring the K-700 as a playable vehicle. Saber then sues Oovee for unfair competition caused by unauthorized use of the K-700 trademark and trade dress under the American Lanham Trademark Act.

Expressive works are granted expression rights by the First Amendment. Oovee’s use of the K-700 was hence protected as such, as the Court found video games to indeed be expressive works. Accordingly, then, Saber had to satisfy the two-prong Rogers test to bypass this defense by showing that Oovee’s use of the K-700, as follows:

1. Had no artistic relevance to its Spintires game; or
2. Explicitly misled consumers regarding the source of the K-700.

The Court found that Saber “did not explain why Oovee’s use of the K-700 is artistically irrelevant,” and did not satisfy the high bar of “explicitly misleading” in their submissions. Saber argued that because consumers expect that “actual vehicles featured in simulations are licensed,” there arises a likelihood of confusion amongst the public as to the involvement of Saber in Oovee’s game. The Court found that without an explicitly misleading statement, this likelihood of confusion is insufficient to satisfy the second prong. Accordingly, Oovee’s use of the K-700 did not infringe upon any marks and the motion was dismissed.

Humvee v. Call of Duty, aka

The Saber case ruling follows an earlier case concerning the appearance of Humvee vehicles in the Call of Duty franchise games. Call of Duty, created by Activision Blizzard, is a first-person shooter game simulating a modern warfare setting with Humvees depicted throughout the game. AMG sued Activision Blizzard for these depictions since Blizzard did not acquire authorization for such uses. Like the Saber case, First Amendment protection applied to the video game, and this protection was subjected to the Rogers test.

Ultimately, the Court found that the use of Humvees was artistically relevant to the game because they evoked “a sense of realism and lifelikeness” to the players. The second prong, however, was unmet because despite there being survey evidence of confusion, the confusion itself did not arise from Activision Blizzard’s actions. The case was dismissed in favour of Activision Blizzard.

Implications

As more of our world moves online, these such lawsuits help guide the direction of developers designing the digital space. To make video games more immersive and realistic, developers would have to bring in real-life characteristics and these precedents help to shield designers from tedious trademark litigation. However, as we have seen from the Orton case , similar protection may not be granted to copyright infringements in games. Regardless, we expect further guidance as the courts continue to clarify how the nuances of IP law apply online.

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Michelle Mao is  an IPilogue Writer and a 2L student at Osgoode Hall Law School.

You may recall Usain Bolt’s subtle but impactful on August 23, 2022, adding a trademark emoji to his iconic quote, “To the World”. That tweet spoke to his trademark of his iconic “lightning” celebration pose, indicating Bolt’s possible plans to create merchandise using his iconic celebrity power and image. Indeed, when searching the United States Patent and Trademark Office (“USPTO”) database, the signature pose for many industries, including eyewear and accessories, clocks and watches, leathers, bags, clothing, footwear, games, entertainment, restaurants, etc. While Bolt’s trademark registration is for the rather than the pose, the use of poses and gestures in branding can potentially bring a new wave of “unusual” trademarks, especially as social media and technology have spread previously unthought-of but recognizable traits. One type of “unusual” mark would be celebrities’ recognizable poses or gestures.

For some time now, celebrities’ brand images have increasingly used their iconic poses or features to market their brand to promote endorsed goods and services. For example, Kim Kardashian’s body-shaped perfume gained fame several years ago for demonstrating the recognizability of Kim K’s body as her brand. In the sports world, the trend to trademark poses and gestures like Bolt’s victory pose has been demonstrated for some time, Mo Farah’s “Mobot” pose, Gareth Bale’s “elven of hearts” gesture, and Jesse Lingard’s “JLingz” gesture. Similar to Bolt’s trademark, one other notable trademarked pose as a design mark is Michael Jordan’s “” which represents Michael Jordan’s Collaboration with Nike – the Air Jordan line.

To discuss future legal considerations arising from this trend of trademarking “unusual” marks, including poses and gestures, we must first understand the purpose and limits of trademarks.

The essential purpose of trademark law is to allow one entity to distinguish its goods and services from another’s. Therefore, a when analyzing the possibility of trademark infringement is if the general public would be likely to confuse, be deceived, or mistake the source of the good or service. Trademarks do not necessarily prevent all others from utilizing the trademark in the future. A trademark protects a brand’s image by preventing others from imitating or devaluing the brand through association with a similar or identical mark. The USPTO that if you trademark a mark, it does not allow you to gain rights over the mark in all uses but only allows you to gain exclusive rights to it in its specific category of goods and services.

So, what happens when the industry you are in requires selling yourself? For example, an influencer’s job is to promote products and services through their looks, personality, aesthetics, etc. An influencer can establish their brand through iconic and recognizable traits such as poses or physical features. An influencer’s image can be used to provide an endorsement service of a product or another service (for example, a celebrity holding up a branded item to be photographed). The option to is available and is generally not an issue because likeliness is unique, but what about something more generic, like a pose, gesture, or silhouette?

The legal problem comes if the over whether an iconic or even trademarked gesture or pose is being used by a third party to refer to the originating individual or if the gesture or pose is used to signal an endorsement from the individual. For example, other athletes being pictured posing in Bolt’s victory pose may have sent a message that Bolt was endorsing them for whatever reason (luckily, in this case, it was a tweeted by Bolt in 2018 before this trademark was submitted). If displaying a pose or gesture causes consumer confusion, we enter the territory of trademark infringement.

It will be interesting to see how trademarks evolve beyond word marks and design marks alongside increased online marketing through influencer brand endorsements. While Usain Bolt’s trademark this time is only for the flat design mark of his iconic pose, there is no doubt that trademarking poses, gestures, and other iconic traits will be on the minds of celebrities moving forward.

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

Can you file a trademark application for a restaurant and proceed to demand 1.5 million dollars to sell that mark? The May 2022 Federal Court of Canada decision, (“Judian”), finds you cannot because the application would be filed in bad faith. Beijing Judian is a reputable barbeque bar restaurant with over 40 locations in China with established Ju Dian character marks, including the JU DIAN & Design Mark. The defendant, Meng, resides in Richmond British Columbia. Upon learning that Beijing Judian was planning to open locations in Canada, Meng raced to file trademark applications for the identical mark in Canada. Two years after filing the application, Meng went to the newly opened Vancouver location of the restaurant and demanded $1.5 million dollars for Beijing Judian to purchase the mark from him. Beijing Judian refused. A month later, the restaurant found an advertisement posted by Meng for the sale of the registration of the JU DIAN & Design Mark for $100,000. Beijing Judian subsequently brought a claim to court arguing that the identical mark registered by Meng is invalid because it was obtained in bad faith.

Two sections recently added to Canada’s Trademark Act of 1985 (“t��� Act”) mention bad faith. In a December 2018 amendment, the Act added , which states that a trademark registration is invalid if the application was filed in bad faith. Similarly, a 2019 amendment included bad faith in as a new ground of opposition that individuals can file in response to an application. Although the law does not precisely define bad faith, the two inclusions of bad faith in trademark legislation advance the idea that .

A closer look at the Judian case shows what the court had to say about the bad faith ground. The judge found the JU DIAN & Design Mark filed by Meng to be from the Canadian trademark database. It was reasonable to infer that Meng knowingly obtained the trademark registration associated with Beijing Judian in China to leverage the restaurant’s reputation for his own economic interests. Meng’s advertisement revealed Meng’s knowledge of Beijing Judian’s reputation. Meng also had no evidence of using the mark for any legitimate commercial purpose, as the only use was the sale of the identical mark online. Looking at the timeline, the judge found that Meng’s intention for filing the trademark application was to either extort money from Beijing Judian or to sell the mark to others. All of these factors combined in this case constitute bad faith.

Since the Act does not explicitly define what constitutes an application filed in bad faith, more bad faith cases  will slowly clarify the meaning of bad faith in Canadian trademark law.  Although Beijing Judian successfully won the trademark battle, this case follows two 2021 decisions in Norsteel Building Systems Ltd. v. Toti Holdings Inc. and Yiwu Thousand Shores E-Commerce Co. Ltd. v. Lin where the to invalidate trademark applications based on bad faith. Parties seeking to invalidate a trademark application using this claim would likely need to meet a higher standard. With the bad faith ground still developing in case law, foreign reputable establishments looking to expand into Canada should actively file trademark applications as early as possible and not rely entirely on bad faith to fend off imposters or extortionists.

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

Imagine a Birkin bag – an iconic, timeless piece that arguably embodies luxury. Now make it digital, cover it in fur and sell it as a non-fungible token (NFT) called “MetaBirkin” for at least (about $6900 Canadian). Does this count as an artistic expression protected under First Amendment rights of expression and speech, or is it a trademark infringement upon a beloved fashion icon? This is the issue at the core of the ongoing lawsuit.

Brief Timeline of the Lawsuit

January 14^th, 2022 – Hermès files a complaint

Catching wind of the furry MetaBirkin NFTs, Hermès filed a trademark infringement and dilution lawsuit against Mason Rothschild, the creator. In their , Hermès claims that the label “MetaBirkin” infringes upon their “BIRKIN” trademark and likely causes confusion in the minds of consumers that Rothschild’s products were “authorized, sponsored, or approved by Hermès.” Further details about this initial action can be found in our earlier article .

February 9^th, 2022 – Rothschild files motion to dismiss the action

Legal counsel for Rothschild maintained that the NFTs constituted protected expression under the test set out in , which held that the use of a famous trademark is protected from trademark infringement if 1) the name is “minimally artistically relevant” to the product and 2) that the use of the trademark does not explicitly mislead consumers as to source or content of the product.

Regarding the first prong, that the term “MetaBirkin” was minimally artistically relevant to his project of questioning the nature of luxury and value and bringing awareness to the prevalence of animal cruelty in the fashion industry. Regarding the second prong, Rothschild’s counsel pointed to the lack of explicit mention of Hermès in the advertising of the NFTs. Rothschild’s counsel further argued that the First Amendment right of speech and expression outweighs the “slight risk” of consumer confusion.

that Rothschild’s usage of “MetaBirkin” was akin to a trademark, namely to “brand a product line, and to attract public attention and signify source.” This form of use is outside the scope of First Amendment protection, making the Rogers test inapplicable.

May 18^th, 2022 – Judge Radkoff denies Rothschild’s motion to dismiss

Judge Radkoff found that the Rogers test applied because the . Judge Radkoff that “[because] NFTs are simply code pointing to where a digital image is located and authenticating the image, using NFTs to authenticate an image and allow for tradeable subsequent resale and transfer does not make the image a commodity without First Amendment protection.”

However, the motion was ultimately denied because the Hermès had filed adequate evidence (such as Rothschild’s statements in public interviews) to support the allegation that the label was artistically relevant and explicitly misleading to consumers. Rothschild appealed this decision, which was subsequently

October 8^th, 2022 – Hermès files a motion for summary judgement

In a newly filed motion, the instead of the Rogers test, which asks: 1) whether the plaintiff’s mark (“BIRKIN”) is entitled to protection and 2) whether the defendant’s use of the mark (“MetaBirkin”) is likely to cause consumer confusion. Hermès argues that Gruner is the appropriate test given the recent development of “undisputable facts” that pushes the First Amendment considerations out of the question.

The facts that Hermès points to include: the similarity between the parties’ marks, evidence of actual confusion amongst consumers, and the fact that both parties are selling the same product, albeit in different universes. Counsel for Hermès claims that a summary judgment on the action should be granted due to the clear and undisputed nature of the material facts.

The Big Picture

All eyes are on the court as they navigate this new digital terrain and attempt to balance the freedom rights of creators against the IP rights of consumer brands. As Mr. Dan Bereskin emphasized in his , an IP owner’s rights should not go unchecked for fear of imposing a “chilling effect” on artists’ creative freedoms. On the other hand, the metaverse presents a new avenue for trademark infringement that is difficult to police, given the ever-evolving digital landscape. Hopefully, the continuing battle between Hermès and Rothschild will provide some guidance about the legal relationship between brands and creators in this new digital world.

The post Trademark Law Moves Online: “MetaBirkin” Updates appeared first on IPOsgoode.

Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 25, 2021 the Japan Patent Office (JPO) Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design  for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.

Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited of the Japan trademark law in support of their claim.

Gucci that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.

Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and . Even though the decision makers Gucci’s popularity and reputation, they of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.

Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for , “AZIDES” and “PAPAGORIRA”).

Some that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.

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