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

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

Sonic Seasoning: Combining Music with Flavour

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

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

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

Trademarking the “Consumer In-Store Experience”

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

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

Conclusion

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

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

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

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Former President Donald Trump changed U.S. Intellectual Property Law on December 27, 2020. Months before leaving the White House, he signed into law the . The Act significantly changes American copyright and trademark laws.

Changes to Copyright Law

The Copyright Alternative in Small-Claims Enforcement Act of 2020 (the “2020 Copyright Act”) protects copyright owners’ rights in two ways: .��

Under the 2020 Copyright Act, or for-profit network based on unauthorized downloading or distribution of copyrighted material is criminal. This echoes the U.S. government’s protectiveness over copyright holders in the digital era.����

By creating a small-claims tribunal for copyright matters, the 2020 Copyright Act also addresses access to justice concerns. The Copyright Claims Board (the “Board”) consists of a which hears claims regarding copyrighted material and awards damages or relief as necessary. disputes in a federal court.

Changes to Trademark Law

The Trademark Modernization Act of 2020 (the “2020 Trademark Act”) contains two major developments:

Pursuant to the 2020 Trademark Act, trademark examiners enjoy greater flexibility in setting response times to the “” procedure. This is the process through which third parties submit evidence to refute the registration of a trademark. Additionally, . Despite granting increased flexibility in time, the 2020 Trademark Act simultaneously introduced additional fees. These changes suggest that flexibility in timing comes at a cost.

The 2020 Trademark Act allows third parties to formally submit evidence into the record of an application of a trademark registration Third parties are given more authority to challenge a trademark registration if they are able to provide formal, relevant evidence that on or before the date of filing.

Intellectual Property Law and the Pandemic

Protecting intellectual property remains a priority during the unsettling times of a pandemic. Stronger copyright and trademark laws foster intellectual vibrancy; however, the Act, through imposing fees upon response-time extensions, may undermine any newly implemented flexibility.

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Granting trademark protection for personal names is an accepted and common practice in European trademark laws, especially for celebrities’ names. In contrast, prohibits the registration of a mark that is merely the name of an individual. The decision rendered by the (“CJEU”) on September 17, 2020 enabled the registration of a trademark consisting of a capital letter “M” and the surname of the world-renowned football player, Lionél Messi. Lewis Hamilton’s legal representatives are currently attempting to register the famous Formula One driver’s name as a trademark.

which was brought before the (“EUIPO”) by the owner of the mark “MASSI” continued before the CJEU and lasted for 10 years. This opposition had initially enabled the rejection of the trademark application made by the renowned football player to EUIPO. The and CJEU have both ordered that there is no likelihood of confusion due to the conceptual distinctions created by Messi’s fame, and granted the registration of the trademark. As stipulated in the court’s decision in EUIPO v Messi Cuccittini “the reputation of the applicant is another consideration to be regarded in risk of confusion examination which has to be conducted globally” (para. 44). Although the conceptual difference created by the reputation had not been claimed by Messi’s lawyers, the Court factored in the said reputation when assessing the likelihood of confusion.

The court’s decision in Messi Cuccittini was important for celebrities who seek to register their names as trademarks. In some cases, semantic content placed on such trademarks may inhibit their successful enforcement. For example, in , Picasso’s heirs were unsuccessful in opposing the aurally and visually similar trademark, ‘PICARO’, on the grounds that their ‘PICASSO’ name was also too famous to not be confused with the said trademark application.

A well-known individual who attempted to benefit from the court’s decision in Messi Cuccittini was the seven-time world champion Formula One driver, Lewis Hamilton. Hamilton had applied to register his full name as a trademark in the ‘jewelry products’ and ‘retail services’ classes. The Swiss luxury watchmaker, “Hamilton”, which owns trademarks in the same classes, opposed Lewis Hamilton’s application.

The racecar driver’s lawyers brought an action against the “Hamilton” trademark, requesting the expungement of the word mark on the grounds that the mark had been filed in bad faith. EUIPO disagreed with this claim and underscored the fact that the Swiss watchmaker had been in the market since 1892, before the racecar driver was born. In this case, perhaps due to made about the decision in Messi Cuccittini, the Office stipulated that “there is no ‘natural right’ for a person to have his or her own name registered as a trademark when that would infringe third parties’ rights” (para. 40). Hamilton’s lawyers’ claim about the conceptual difference is still pending before EUIPO. The claim of the conceptual difference created by Messi’s fame superseding any visual and aural similarities may apply to the “Lewis Hamilton” and “Hamilton” trademarks. Unlike the applicant’s claims in Messi Cuccittini, Hamilton’s representatives had made a point to mention the racecar driver’s fame in their initial application before EUIPO.

Both “Lewis Hamilton” and “Hamilton” trademarks are word marks. They are arguably more similar visually than “Massi” and “Messi”. Indeed, the court had emphasized the influence of a first name from a conceptual point of view in , where Barbara Becker had managed to register her full name despite her application being opposed on the grounds of the risk of confusion with the earlier trademark, “BECKER”. Considering Messi’s full name, Lionel Andrés Messi Cuccittini, the trademark application may not be deemed to imply a name-surname reference.

The Messi Cuccittini decision may be a game-changer for Lewis Hamilton in that his trademark dispute may not be as prolonged as Messi’s. Even though prior registration is important in claiming trademark protections, celebrities’ reputations could also be considered in opposition proceedings or applications for the registration of marks associated with branded products.

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Background

Loblaws, the Canadian supermarket giant, utilizes a variety of trademarks and names including “President’s Choice” abbreviated “PC”. Under the “PC” mark, Loblaws markets a variety of food and household wares. An American company, Columbia, which owns Pampered Chef, Ltd. and Pampered Chef ­– Canada Corp, has operated and sold housewares in Canada for many years. However, in 2015 Columbia the “Happy Spoon” mark (below) which employs the “Happy Spoon” between the words “pampered” and “chef” in the long form mark, or between the letters P and C in the short form marks.

Loblaws opposed the application for the short form marks on the grounds that they infringed their PC (President’s Choice) mark (below), are likely to cause confusion, and have the effect of depreciating the goodwill associated with the PC marks.

Loblaws was unsuccessful in any of the causes of action at the 2019 trial, and subsequently appealed the decision to the FCA.

The trial judge held that, while the marks had some similarities and were used in association with similar goods, confusion was unlikely. The first reason was that, unlike Loblaws, Pampered Chef goods were sold through a direct to consumers business model. Secondly, Pampered Chef utilized the short from mark with the corporate name or the long form mark such that consumers would know it is a Pampered Chef product.

The Appeal

On appeal Loblaws alleged four errors of law.

First, Loblaws challenged the finding that the resemblance between the marks was not particularly strong. Loblaws argued that the marks were identical in sound. According to s. 6(5)(e) of the , resemblance is assessed by the “appearance or sound or in the ideas suggested by them”. However, this argument was unsuccessful as Noël C.J. held that this is to be considered inclusively. The analysis is not to be limited to just sound, but rather must include the sound and visual appearance of the marks. Further, following the Supreme Court’s decision in the mark was viewed as a whole considering the dominant and most striking features, which in this case included the distinctive “happy spoon”.

Second, Loblaws contested the analysis of the “nature of trade”. It was held the trial judge did consider the customer bases of the parties in the analysis of the “nature of the wares, services or business”, and it was not an error of law to repeat this in conducting the “nature of trade” analysis. Further, the trial judge found the customer base to be the same and in fact favoured Loblaws.

Third, Loblaws argued the judge was wrong in drawing an adverse inference from the lack of evidence of actual confusion. The fact that the competing marks had only existed for two to three years was immaterial since Pampered Chef had already operated in Canada prior to the introduction of the new marks. Thus, the Court concluded any likelihood of confusion would in fact have given rise to actual evidence of conclusion.

Finally, Loblaws argued that the trial judge placed too much weight on the different channels of trade. However, Noël CJ dismissed this argument, as consumers would be aware of the fundamental differences in product distribution. Further, the Court stated that even those consumers encountering Pampered Chef for the first time would be unlikely to confuse the marks due to the presence of the corporate name or long form mark.

What’s Next?

Ultimately, Pampered Chef successfully defended their PC mark for a second time against Loblaws. To date, there is no evidence of an appeal to the Supreme Court of Canada. Although I am no judge, as a consumer aware of both PCs (who is sometimes in a hurry), I am certainly not confused by these marks!

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

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So how does one go about proving use of their trademark? “Use” carries a particular meaning in trademark law which varies depending on whether it is associated with goods or with services (or with exported goods). A mark is deemed if it is marked on the goods at the time of the transfer of the property or the possession thereof in the “normal course of trade”. The mark can be on the goods themselves or on the packaging in which the goods are distributed. Use of a mark in association with goods can also be established if the person buying or receiving the good is given notice of the association between the mark and the good in some manner besides mere advertising. Moreover, the transfer of the marked goods must be in the “normal course of trade,” meaning that the transaction must be for some profit-making purpose. but it could help meet the “normal course of trade” requirement. Luckily, these “use” requirements are not too difficult to meet in the modern era of e-commerce. Retail companies can continue to sell their marked goods on digital platforms like Amazon, Etsy, and Ebay. A single sale may suffice as “use” in association with goods.

Businesses that ship products outside of Canada can establish use of a trademark if the goods or the packaging of the goods are marked at the time of

However, is a completely different challenge. A trademark is “used” in association with services if it is used or displayed in the performance or advertising of those services. In the case of marks associated with services, mere advertising is not enough. . But how does a business prove that their service is performed in Canada if they shifted to a digital platform (e.g. online education/consultations over Zoom, online booking/reservations)?

If persons in Canada receive a from a service, the service will be deemed performed in Canada. There is no strict test for what constitutes a material benefit, but the Federal Court of Appeal in Hilton found that an online booking service created a material benefit in the absence of a “brick-and-mortar” hotel in Canada, based on the :

• a large number of Canadians (41,000) used the service;
• the service resulted in significant revenues ($50 million) from Canadians; and
• Canadians received discount rates and loyalty points from using the service.

Material benefits are determined contextually, so businesses do not have to meet the exact factors or numerical figures listed above. However, it would be prudent to keep evidence demonstrating similar factors to maintain trademark rights. Hilton also affirmed that these material benefits can come from services that are to the service(s) listed on a trademark registration.

In conclusion, continued use of a trademark in Canada is required for maintaining trademark rights and “use” is defined differently depending on whether the mark is associated with a good or a service. The current pandemic has pushed many businesses to change the way they operate and it is important for those businesses to ensure their practices still make “use” of valuable trademarks.

Written by David Park. David is a second year JD Candidate at Osgoode Hall Law School. He is an IP Innovation Clinic Fellow.

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Granting monopoly and exclusivity rights to a company/brand owner for a trademark vastly depend upon the owner demonstrating “use” in “correlation” with its description of classified goods and services. Also, the 2020 amendments to the Trademarks Act, RSC 1985, c T-13 have emphasized the importance of “use” in many contexts. Recently, in , we witnessed that evolving jurisprudence of “use” in trademarks when the courts deviated from the old concept of brick and mortar presence. However, in non-use cancellation proceedings, the Canadian Intellectual Property Office (CIPO) maintains that a trademark owner should establish a direct correlation and association of goods and services with the trademark’s use. The Federal Court notes that they are considering the in the meaning of section 4 and 45 of the . proceedings are not a mala fide attempt of unwarranted expungement (which is filed under of the ), but to clear out “dead wood” from the trademark database and create space for other brand owners to register their trademarks.

a) Summary – Federal Court Upheld the Trademarks Opposition Board Decision

Justice Fuhrer upheld the decision of G.M. Melchin, Trademark Hearing Officer (THO), CIPO in the matter of . The Federal Court (FC) reiterated that a preponderance of evidence is not required to prove the use of the trademark in Canada, but rather emphasizes that, in non-use cancellation proceedings, the evidence must correlate with the goods/services. Accordingly, the FC did not find any palpable and overriding errors in the THO process and decision. As per the dated January 09, 2020, the description of goods for the trademark “en Vogue”, (TMA789,288) needs to be amended to delete the goods “adhesives used in industry”, “nail adhesives”,��“nail brush cleaners”, and “apparatus for lighting, namely, UV lamps (not for medical purposes)” from its description because the Applicant failed to demonstrate a correlation between the evidence submitted for the trademark “en Vogue” and the aforementioned goods. Justice Fuhrer dismissed the appeal with costs payable by the Applicant to the Respondent.

b) Application of Standard of Review by the Federal Court��

The Supreme Court of Canada established in�� that the appellate court’s role is to identify whether a Hearing Officer has erred in their findings and, if so, to narrow their analysis to any palpable and overriding errors in the inference drawn from the evidence. Only at this point can the Federal Court delve into mixed facts and other inferences which the Hearing Officer reasonably may have drawn from the evidence. Simply put, the appellate court must first identify which standard of review applies to the issue in question, then apply it appropriately. Since the Applicant’s evidence does not support their factual conclusions and the Respondent did not present new evidence, Justice Fuhrer applied this principle in her analysis and dismissed the appeal. Therefore, a .

c) Correlation or Overkill via Evidentiary Documents��

Many summary non-use cancellation proceedings have affirmed that a trademark owner is not required to provide an evidentiary overkill to demonstrate “use” (meaning not all examples of use must be evidenced), but merely that a single document can substantiate the “use” within the last three years. However, pertinently the owner’s evidence should directly demonstrate a correlation between the mark and its associated goods and services. The Court in (“Pacific Sky”) observed that although the “use” threshold is not stringent, particularly to use within the last three years, for a decision-maker to infer an association and correlation between the evidence and the description of goods specified under the registration, relevant and definitive facts within the submitted evidence must suggest a direct correlation. Hence, the THO is not just emphasizing “use”, but also “use” in “direct correlation” between the “classified description of goods” and the “evidence” so brought on record. ��

d) Ambiguity in establishing correlation via evidence/affidavit

In the present case, the Applicant’s affidavits, filed by its President, failed to explicitly demonstrate their use pf the mark in association with the said goods and services. The Federal Court suggests that a sworn affidavit can establish use of a mark. An Affidavit is produced in absence of evidence or to combat the risk of breaching confidentiality. In Pacific Sky, the Applicant’s binding officer filed an affidavit because it could not furnish evidence associated with “consumer and industrial safety products namely flashlights, flares” and “consulting and assessment services” and pleaded confidentiality. However, the court concluded that the Applicant’s affidavit did not explicitly suggest “use” for the identified goods and services and was vaguely attested.

IN CONCLUSION, trademark-owners should maintain evidence that they consciously label their sales revenues, advertisements, and merchandise products with their registered mark to safeguard themselves from non-use cancellation proceedings. If they don’t, trademark registrants who cannot generate evidence that they have used their mark in association with their specified goods and services can lose their trademark rights and suffer huge monetary losses. Consequently, the brand owner might have to dispose of all property depicting the logo or trademark.

Written by Aishwerya Kansal, IPilogue Contributor. Aishwerya is pursuing Master’s in Law in International Business Laws at Osgoode Hall Law School, and she is also an IP Innovation Clinic Fellow.

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When asked about the most significant changes the new regulations implemented, Gill highlighted that the ability to register without having first used a mark is one of the most significant changes, in addition to joining the Madrid Protocol. There are also a number of challenges that practitioners must deal with when reconsidering filing strategies with their clients.

Challenges with the New Regulations

a) Monitoring and Opposing Trademark Applications

The way that trademark lawyers monitor and oppose applications has changed. Previously, it was easier to oppose applications when it was plainly recorded whether a company used a mark and what the date of first use of the mark was. Now, with no requirement to declare if and when a mark has been used, there are extra steps that practitioners must take when researching existing trademark applications and registrations. This research may not be very accurate, and these additional steps make it difficult to advise clients on whether they should be opposing a trademark application. It would be inefficient and potentially detrimental and costly to clients if their lawyers sent out demand letters to ask other parties to cease their use of a mark, only to have them respond that they have been using the mark before the client.

b) Examiners’ Discretion

Gill also noted that examiners can now refuse applications based on a lack of “”—the ability of a mark to distinguish the source of goods and services with which they are associated. He raised this as an issue as he sees it being used inconsistently, and at times inappropriately. This creates another layer that is slowing applications down and driving costs up. At this stage, there is little jurisprudence or guidance as to how this objection will be used and what will be required in a response where it is raised.

c) Accessibility

Another change to the trademark system is that the is now based on classes of goods and services, as set out in the Nice Classification system. Therefore, the more classes an applicant would like to include in their application, the higher the cost. While this could have resulted in a barrier to accessing trademark protection, Gill explains that not many applicants use a mark in enough classes to make this change prohibitive. Based on his experiences, this change has not impacted people’s willingness to apply for trademark protection.

The Use Requirement

The use requirement previously required applicants to sign a , confirming that they have used the mark.

In anticipation of the new regulations, which eliminates this requirement, speculated that Canada has moved from a first-to-use to a first-to-file system. On the contrary, Gill argues that all that has changed is the basis for registration. Canada still has a use-based system and all rights continue to flow from use. The only difference currently is that you may secure trademark protection before actually using the mark. After this, use is the basis on which you oppose other marks and assert trademark rights, which is illustrated in the example of the demand letter above.

One implication of removing the use requirement for registration is that it is much easier for trademark trolls to register marks they do not intend to use and sell them back to interested parties. While Gill noted that these trolls are an issue under the new regulations, he noted that there are an easily-identifiable group of trolls that have filed hundreds of applications across several goods and services. Thus, the increase of trolls in the trademark database is not a huge concern at this point and Gill has not yet seen any particular negative impact.

Some lawyers have also noted that there are changes that can . For example, includes the following amendments to the :�� a) registered trademark owners may not obtain relief for trademark infringement in the first three years after registration and b) registration may be opposed or invalidated based on a new ground of “bad faith”. Gill confirmed that these provisions make it hard for trolls to enforce their trademark protections if they are not using the marks.

What’s Next?

Gill proposed one simple resolution: applicants should be required to disclose if and when a mark has been used. He does not propose use as the basis for registration, but rather explains that this mandatory disclosure could ease the research process for practitioners, clarify any disputes regarding use, and easily isolate trademark trolls. This solution could also help clear the now crowded register and reduce the cost of clearing out marks for use-based reasons. The challenges lawyers currently face with the new regulations are not debilitating. The challenges, however, illustrate inefficiencies and room for improvement in reducing the costs associated with monitoring the trademarks Register and opposing applications.

Written by Summer Lewis, a second year JD Candidate at Osgoode Hall Law School. Summer is also the Content Editor of the IPilogue.

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A partner at Gowling WLG since 1999, is best known for his intellectual property litigation practice, particularly in the areas of trademarks and unfair competition. Kelly is past leader of the firm's Trademarks, Brands & Designs and IP Litigation & Strategy groups.

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