As many of you know, the Federal Government recently introduced Bill C-31, the Economic Action Plan 2014, No. 1. Among the changes to almost 40 different pieces of legislation, it introduces many significant and long-awaited changes to the Trade-marks Act.
In this post, I will outline what they are, and provide my opinion about them, and also comment on why established Canadian law firms are now singing the same old song about dangers of these new changes.
The general idea of the changes is to align Canadian trademark laws with the rest of the civilized world.
Currently, Canada has a unique system that is unlike every other trademark law on the planet. We are not party to several major international treaties that make it simpler for businesses to protect their brands around the world.
What this means is that companies based outside Canada cannot protect their brands in Canada through a centralized international filing and, up to this day, have had to resort to using Canadian trademark agents to file their trademark applications in Canada directly. What this also means is that Canadian businesses that target worldwide markets cannot take advantage of the international filing system either. Up to this day, they either have to set up operations in a different country (typically, by incorporating a separate company in the U.S.), or file dozens of trademark applications, with their legal bills for trademarking going through the roof.
Canada’s current isolationist system benefits a very particular contingent – Canadian law firms who readily take advantage of international businesses that are seeking to protect their brands in Canada.
Canada has been marching to a different drummer for a very long time, many provisions of its trademark system are incomprehensible to and often ridiculed by trademark lawyers from around the world. But now it appears that Canadian legislators are finally getting ready to do something for Canadian business owners, and not just Canadian law firms.
Mincov Law Corporation and the Trademark Factory wholeheartedly welcomes these changes, even though it means that we will need to tweak a few things in our internal systems.
So what are the changes? The rest of this post is about just that.
1. Trademarks are going to be called “trademarks”, not “trade-marks”. The hyphenated spelling was often the cause of ridicule, as Canada was the only country using it. Seriously, is this the only way Canada could safeguard its uniqueness? Through spelling of a legal term? Why not just call them ”tRaDe-mArCz” then?
In the same vein, “trade-names” will be called “trade names”, and “wares” will be referred to as “goods”.
2. Special rules regarding registration of the shape of the product as a trademark are gone. No more distinguishing guises. On the other hand, the definition of a trademark will refer to a “sign”, which in turn is defined as including “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.” This will simplify the life of many business owners who will be able to protect more of their unique features in a more streamlined manner.
3. Use will no longer be a requirement for trademark registration. No more trademarks based on proposed use. No more declarations of use. You file your trademark – unless it gets opposed it will be registered. This shifts the burden of protecting one’s brand from the government to business owners themselves. This makes perfect sense: if a business does not care enough to protect its long-standing brand by registering it as a trademark, why should the Trademarks Office care?
4. Certification marks will now be registrable even before their first use. Currently, in order to protect a sign as a certification mark (that is a sign to distinguish goods and services that meet the requirements of a a defined standard from those that do not), one had to demonstrate that the sign was already used. The amendments do away with this unreasonable restriction.
5. Canada will adopt the Nice Classification of Goods and Services, which divides all goods and services into 45 classes – 34 classes of products and 11 classes of services. All applications will need to classify the goods and services for which the trademark is filed into these classes. This is how the rest of the world has been doing it. Canada was one of the very few countries that was not. It was impossible to integrate Canadian trademark laws with the international filing system without switching to the class-based system of trademarks. One potential disadvantage for business owners, compared to the current system is that filing fees will likely be based on the number of classes, as opposed to there being a single filing fee that covered as many goods and services as one wanted to include on the application. However, this has not yet been announced, so we’ll see what will happen in this regard.
6. The term of registration will drop from 15 years to 10 years. This is also to put Canadian trademark laws in line with those of most other countries. If anything, this should be another incentive for business owners to get their trademarks registered as soon as possible, because they may just be able to secure the 15-year term for the last time.
7. Canada will have divisional applications, which may come handy in case a part of the application is smooth and non-problematic, and some other part of it raises a concern of the trademark examiner. Today, businesses face an all-or-nothing proposition: they either have to convince the examiner that the mark is registrable as it’s described in the application, or get rid of the items that cause concern. With divisional applications, one will be able to proceed to registration in respect of non-problematic parts of the application, while battling over the rest.
8. One concern is that amendments that will be necessary in light of Canada joining the Madrid system of international trademark applications are not contained in the proposed amendments to the current Trade-mark Act (as it is called today) but are reserved for regulations. I can only wonder why no mention is made of the possibility for Canadians to file international trademark applications.
9. My biggest concern with the amendments is that they do nothing to do away with Canada’s unique “official marks”, superpower marks that trump regular trademarks and that are available to any university or any public authority. These official marks not only trump regular trademarks, they confer protection that is not limited to specific goods and services, as is the case of regular trademarks. Why universities and government entities should be allowed to hold hostage business owners who come up with brands that have nothing to do with education or the functions of these government bodies, is beyond me. If anything, I would really like the amended Trademark Act (as it will be called after the amendments come into force) to strip away the right of universities and public authorities to disregard the usual provisions of the trademark system.
Having said all that, we welcome these changes, and anticipate that they will be very beneficial to a great number of Canadian businesses.
Who would have thought that the week before Christmas would be so fruitful on important decisions in the area of intellectual property.
First, the Supreme Court of Canada has delivered a landmark decision in Cinar Corporation v. Robinson. In it, the Supreme Court of Canada unanimously dealt with many crucial issues pertaining to how copyright cases will be resolved in the future:
– the scope of protection afforded by the Copyright Act;
– the meaning of the words “substantial part” that set out the threshold for copyright infringement;
– rules regarding disgorgement of profits;
– rules regarding non-pecuniary damages; and
– rules regarding punitive damages.
Despite Supreme Court’s unanimity, this decision in fact further blurs the line between unprotectable ideas and protectable expression of ideas by adding a significant degree of subjectivity in the analysis. The Court refused the approach whereby the court first determines the original elements in the plaintiff’s work, then filters out unprotectable elements from that list, and, finally, compares the remaining protectable original features with what was actually used by the defendant. Instead, the Supreme Court preferred the holistic approach where “The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff’s right.”
This case likely turned on the single issue that defendants had access to the plaintiff’s work and knew that plaintiff would object to their use of it. The court wanted to land a helping hand to an author who failed to carry out a project whereas a very similar project was later carried out by several parties some of whom were originally involved in the plaintiff’s project.
It is what some lawyers call “the degree of sneakiness” that decided the case. In other words, the entire copyright law analysis only happened after the judges internally decided that the plaintiff should be rewarded and the defendants should be punished.
While I typically always support those whose rights are infringed in copyright law suits, this may be the case when bad facts make bad law, because I’m not sure that I agree (from the description of the two works, and without having had a chance to compare the actual works) that what was used was more than unprotectable idea.
Time will tell what this case will mean in terms of development of Canadian copyright law.
The second case is the case decided by BC Court of Appeal that affirmed the landmark decision of BC Supreme Court in Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co..
I already wrote about the facts of the case with a brief analysis before, but briefly here they are again: a BC flooring company that’s been around for over a decade realized that its competitor, another flooring company from the same city trademarked the word “Woodpecker” as its own.
The dilemma – do we spend a ton of money on rebranding or do we spend a ton of money on lawyers to fight this through – was entirely avoidable. All the first company had to do was register its trademark first.
They decided to fight for their trademark. BC Supreme Court granted an injunction recognizing the first company’s prior right in the trademark. Now, the BC Court of Appeal has agreed.
Happy ending? Not really, unless you mean a happy ending for all lawyers involved in this case.
Now that the case has been through the BC Supreme Court level and the Court of Appeal level, the first company has probably spent close to 100 times the amount that it would have cost them to register their trademark when they were starting out.
If anything, it would have been a good insurance policy.
Remember, registering trademarks is within the reach of any business that’s more than just a hobby. It’s a long-term investment that is crucial for any business that spends time, money and energy on branding and marketing.
Now, that there is a way to register your trademarks with a Triple Peace-of-Mind Guarantee™, you are committing a crime against your business if you are not protecting its trademarkable assets!
Speaking of how we help our clients register trademarks, here’s a testimonial from another happy customer:
P.S. Merry Christmas, Happy New Year and Happy Holidays!
As I was watching the latest Dragons’ Den on my laptop a couple of days ago, I was bombarded with the same advertisement, over and over again.
Ford was adamant to show me how great their new car is.
The ad closed with this line:
Only Ford has Ecoboost fuel economy
Curiously, the ad does not explain what the Ecoboost fuel economy actually is or how it is better (if at all) from all other options that exist on the market today.
What matters is that only Ford has it.
How do they achieve this unique position on the marketplace?
They have a registered trademark for the word ECOBOOST®
Now, nobody can use the word ECOBOOST in association with automobiles and automobile engines.
What the system does is irrelevant, because trademarks do not protect the substance, only the name.
But this is a great example how protecting a name can boost your advertisement, marketing and (hopefully) sales.
P.S. If you look at our Trademark Factory™ website, you will notice that we do what may look like the same thing there when we claim that we offer our unique Triple Peace-of-Mind Guarantee™
Our offer is indeed unique, but even if (when) other law firms decide to copy our offer, they still would not be able to call it a “Triple Peace-of-Mind Guarantee”, because it is our trademark.
Are you using a special name to refer to the uniqueness of your offer? See if you can register it as a trademark for FREE with no strings attached.
In a recent case Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., Ltd. and Wiston Building Materials Co., a BC Supreme Court judge granted a court order (injunction) preventing the owner of a registered trademark “WOODPECKER” from using it because this name for many years had been used by that company’s competitor who neglected to register their trademark.
Woodpecker Hardwood Floors have been using the brand since at least 2000, without registering it as a trademark with the Canadian Intellectual Property Office (CIPO).
Lo and behold, in 2011 a competitor, Wiston, a company started in 2009, filed an application for the trademark WOODPECKER with CIPO, which application has matured to a registration in 2013.
Mr. Justice Silverman found that “Having two ‘Woodpeckers’ selling hardwood flooring within a mile of each other in Richmond would seem to run contrary to public interest.” Because Woodpecker Hardwood Floors started using their mark years and years prior to Wiston, the judge recognized that Woodpecker Hardwood Floors had the prior right that trumped Wiston’s right to the registered trademark.
This case has 3 important lessons for Canadian businesses. They are nothing new to trademark lawyers, but this case presents a great example of how poor IP strategy can spell trouble.
So here are the three things to remember:
1. A trademark registration is not a tool to override pre-existing rights of your competitors. Even if you succeed with such registration, it will not be worth much because it can be taken away from you easily and it cannot really be enforced against the competitor anyway.
2. Had Woodpecker Hardwood Floors registered their trademark early, the Canadian Intellectual Property Office would never have registered a confusingly similar trademark for Wiston, so all of this would have been a non-issue to begin with.
3. If the old Woodpecker had registered its trademark, it would have cost at least 10-15 times less compared to having to take Wiston to court over an unnecessary dispute.
I’ve said it many times, if you have developed a valuable brand for your business and you have not registered it as a trademark, you are not being serious about your business. It’s not even about bringing a knife to a gunfight. It’s about bringing a blindfold to a gun fight – simply hoping that somehow things will figure themselves out. Even if they occasionally do, the cost may be prohibitive.
With the Trademark Factory™ offering a unique new way to register trademarks in Canada with a Triple Peace-of-Mind Guarantee, there is really no excuse for neglecting to protect your valuable business assets!
Last week, I have delivered a seminar on trademarks through Vancouver Business Network.
Among other things, I explained that business owners can file their own trademark applications in Canada because there is no mandatory rule that would require them to use a trademark agent for that. I also said that it may not be such a great idea if you don’t know what you’re doing.
The night after the seminar, I received an email from a business owner who, about a year ago, was shopping around for a good deal to register three trademarks for his business.
Eventually, he decided to file them on his own.
Unfortunately, he now received office actions for all three of them.
One is especially troublesome, because the examiner is of the opinion that the mark is descriptive of the services in association with which it was applied for.
The problem is not with the mark itself, the problem is with the way the business owner drafted the statement of wares and services. He should have worded the statement of wares and services more broadly, so that it wouldn’t be essentially the description of the mark itself. Unfortunately, he can no longer do that, because after the application has been filed, one cannot broaden the scope of goods and services any more.
So the end result is: he saved a few thousand dollars on lawyer fees, yet he wasted a year investing his time, effort and money building a brand he can’t register as a trademark.
Was it worth it?
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Tags:Small BusinessNew Copyright ActFair DealingCollectivismPhilosophy