Amazon Expands its Brand Registry Program

E-commerce leader Amazon.com is expanding its brand registry program to include measures aimed at combating the sale of counterfeit goods on its website.  The expanded anti-counterfeiting program will allow rights holders to register their logos and intellectual property with Amazon, with the aim of expediting the removal of any listings and seller accounts that are flagged as counterfeit.

Registrants enrolled in the program (who must have a registered trademark in order to participate) have the ability to manage their intellectual property on Amazon’s marketplace via access to the ‘Report a Violation’ tool and the ‘Brand Support’ tool.  An Amazon user account is required.

The ‘Report a Violation’ tool allows registrants to search the site using a range of identifiers (such as ASIN, key search words, brand name, jpeg image, and brand logo) to search for copyright or trademark infringement listings and report a particular listing, up to a maximum of 300 listings.  With the ‘Brand Support’ tool, registrants are able to report any inauthentic product concerns, including actual inauthentic product being sold, misleading product descriptions, and the like.  This tool also gives registrants access to a case log to track submissions and the status of open cases.

Amazon’s program is currently undergoing a beta registration process with top selling brands and is expected to launch worldwide in the coming weeks on a self-service registration basis through Amazon’s website.

For further information, please contact Paula Clancy at pclancy@cbrcanada.com.

Can I Register a Geographic Name as a Trademark?

The simple and prudent answer is ‘no’.  A trademark is not registrable if it is clearly descriptive, or deceptively misdescriptive of the place of origin of the goods associated with the mark.

The Canadian Trademarks Office recently issued a new practice notice clarifying its practice with respect to marks that describe a place of origin.  This practice notice was issued in response to the Federal Court of Appeal decision in MC Imports Inc. v. AFOD Ltd. [2016 FCA 60].

Specifically,

  1. A trademark will be found to be “clearly descriptive of the place of origin” if the trademark is a geographic name and the associated goods originate from that geographic location.
  2. A trademark may be misdescriptive if it consists of a geographic name and the associated goods do not emanate from that geographic location.  Whether the mark is deceptively misdescriptive, contrary to s.12(1)(b) of the Trademarks Act, will depend on whether Canadian consumers could be misled into thinking that the associated goods actually originated from that geographic location.
  3. If Canadian consumers would view the primary or predominant meaning of the trademark as the geographic name, then a trademark will be deemed to consist of a geographic name, notwithstanding that it could have other meanings.

For further information, please contact Paula Clancy

New Combating Counterfeit Products Act Procedures Will Help Brand Owners

The Combating Counterfeit Products Act came into force on January 1, 2015.  In addition to expanding the definition of trademark infringement to include the manufacture, possession, import and export of protected goods for the purpose of sale or distribution, the Act creates new criminal offences of copyright and trademark infringement.  Penalties for knowingly infringing on copyright or trademark rights may lead to a fine of up to $1,000,000 and/or a jail sentence of up to 5 years.

The Act also creates a new procedure whereby owners of Canadian trademark registrations and copyright may file a “Request for Assistance” with Canadian Border Services, in turn enabling border officials to seize or detain goods that are suspected of being counterfeit or pirated.  Border officials will have the power to detain goods for 5 days (in the case of perishable goods), and 10 working days (for non-perishable goods).  Moreover, they will be able to disclose information to IP owners which will assist in enforcement proceedings.

The Request for Assistance procedure is outlined on the Canada Border Services Agency website (click here for more information). Below are the steps outlined by the CBSA to enroll and participate in the program:

  • Step 1: Ensure that your trademark is registered with CIPO and your information is up to date.
  • Step 2: Complete the Request For Assistance form and submit it to the CBSA.
  • Step 3: Await confirmation of enrollment and CBSA approval letter.
  • Step 4: Once approved, if suspected counterfeit goods are intercepted by the CBSA, you will be notified and given the opportunity to take commence an action. The CBSA may communicate information to you to assist in making a determination as to whether the goods are counterfeit or pirated.
  • Step 5: Notify the CBSA if the goods are not counterfeit or pirated, or if you do not intent to purse a claim.

It is important to note that by filing a Request for Assistance, brand or copyright owners may become liable to the Canadian government for any costs relating to storage, handling and destruction of detained goods.  Costs are tallied from the day after the notice of detention is sent by the CBSA. Therefore, it is important to respond as soon as possible to any notices received from the CBSA in order to minimize such costs. 

The RCMP will lead any criminal investigations related to large-scale (commercial) counterfeiting and piracy.

For further information, please contact Paula Clancy.

To Renew or Not Renew – Has CIPO Answered the Question?

Bill C-31, which is expected to come into force in late 2015 or early 2016, will reduce the Canadian trademark registration period from 15 years to 10 years.  As a result, many trademark owners have opted to renew their registrations early in order to take advantage of the current 15 year registration period.

CIPO  has recently announced that the following policy will be implemented for dealing with renewals during the period prior to the implementation of Bill C-31:  registrations with a renewal deadline that falls before the amendments come into force will be given a 15 year renewal period; registrations with a renewal deadline that falls after the amendments come into force will be given a 10 year renewal period.  Seems simple enough.

However, the Office has not addressed what will happen to those registrations that have renewal deadlines that fall after the amendments come into force, but that have already been renewed under the current practice (which permits renewal of a mark well in advance of the deadline).  In those cases,  the Office has already issued a renewal certificate with a 15 year term.  Will the Office revoke the renewal certificate, and issue a new one with a 10 year term?  This will create a heavy administrative burden on the Office, as well as a great deal of uncertainty for trademark owners.

In summary, if you are a trademark owner and your registration period expires beyond 2016, be aware that even if you process an early renewal of your registration, the Office may shorten your registration period to 10 years, despite having issued a renewal certificate for a 15 year period.  If your registration period expires in 2015 or 2016, then it is worthwhile to seek early renewal in the hopes the implementation of Bill C-31 will be delayed and that you will be able to take advantage of the extended 15 year period that is currently available.

For further information, please contact Paula Clancy.

Case Review: Coors Brewing Company v Anheuser-Busch LLC

The Canadian Federal Court has confirmed that a registration cannot be invalidated merely on the basis that a claim for foreign use of a mark was made subsequent to the Canadian filing date.  As noted in our earlier post entitled “Possible Pitfalls in Claiming Use and Registration Abroad for Foreign Applicants”, the Thymes decision of the Opposition Board created considerable uncertainty as to whether foreign use and registration claims were valid if the foreign use of the mark did not pre-date the Canadian filing date.

In Coors Brewing Company v Anheuser-Busch LLC (2014 FC 716) the Federal Court considered an application by Coors to expunge a trademark registration owned by Anheuser-Busch.   Coors argued that Anheuser-Busch’s registration was invalid since use of the  mark commenced in the United States after the Canadian filing date.  The Federal Court dismissed the expungement proceedings noting that non-compliance with procedural filing requirements was not a ground for expungement.

Anheuser-Busch had initially  filed the application based on proposed use in Canada, but later amended the application to add a claim of  use and registration in the United States.  At the time Anheuser-Busch made the claim, there was no misstatement, and therefore Coors’s request to expunge the registration was dismissed.

The Coors decision is the first to deal with a claim asserting invalidity based on the amendment after filing to claim foreign use and registration, and gives trademark owners a degree of comfort in knowing that a registration will not be invalidated based on that practice so long as the claims were true when made.  It remains unclear, however, whether this would still constitute a valid ground of opposition.

Moving Closer to Trademark Law Harmonization – CIPO joins OHIM Database of Goods and Services

On August 25, 2014, the Canadian Intellectual Property Office (CIPO) joined the European Community Trademark Office (OHIM) database of goods and services,  TMclass.   TMclass is an online tool, with over 60,000 entries in 28 languages, that allows trademark practitioners to verify whether a particular term is acceptable in other national trademark offices.  Canada joins over 25 cooperating countries including the United Kingdom, Japan, Italy, Mexico and the United States.

The Canadian Wares and Services Manual will now include several thousand new entries classified in accordance with the Nice Agreement.  As reported earlier, it is anticipated that Canada will implement the Nice Classification system in 2015, which will require that all goods and services be grouped in accordance with the international classes.  Access to TMclass may streamline and standardize this task.

For further information, please visit the CIPO site or contact Paula Clancy.

OHIM Changes Practice for Black and White Marks

On June 2, 2014, the European Community Trade-mark Office (known as “OHIM”), changed its practice for trade0marks filed in black and white or gray-scale.  Specifically, while a black and white registration was thought to cover all colour variants of the mark, OHIM’s new policy suggests that this is no longer the case.  Under the new policy a black and white mark is not deemed to be identical to its colour variant.  Moreover, if colour gives the image a special effect, then a separate colour registration is required.  Use of a colour mark will only be deemed to be use of the black and white form (and vice versa) if the change in colour does not affect the distinctive character of the mark.  As a result, our European associates are recommending that in the case of designs, both black and white and colour versions of the mark be filed in the EU.  For further information about your international trade-mark portfolio or trademark strategy, please contact Paula Clancy.

Canadian Trade-marks Office Now Accepting Sound Marks

Trade-mark consisting of a sound

Publication Date: 2012-03-28

On March 28, 2012, the Canadian Trade-marks Office published a Practice Notice indicating that, effective immediately, the Office will accept applications for sound marks.  Applications for the registration of sound marks must include the following:

  1. an indication that the application is for the registration of a sound mark;
  2. a drawing that graphically represents the sound;
  3. a description of the sound; and
  4. an electronic recording of the sound, on CD or DVD.

Sound mark applications may not be submitted electronically. In other words, only a paper application will be accepted.  Moreover, the electronic recording of the sound must be in MP3 pr WAVE format, and must be no greater than 5 megabytes in size.   The Office will not accept a hyperlink, a streaming location or any other type of media recording, and the recording must not contain repetition (or looping) of the sound mark.

This recent change in practice represents an important step in recognizing the registrability of  non-traditional marks in Canada.  Please contact Paula Clancy for further information on registering non-traditional marks.

Trade-mark Symbols: ™ and ®

As soon as you begin using a trade-mark in commerce, be sure to mark your trade-mark with the ™ symbol.   Anyone who claims rights in a trade-mark may use this symbol, even if the mark has not yet been registered with the Canadian Intellectual Property Office.    Once a trade-mark has been registered, the ® symbol may be used.

The use of trade-mark symbols is not mandatory in Canada, however it is strongly recommended as these symbols provide public notice that you are using a word(s) or design as a trade-mark, or that you have registered your trade-mark.

Keystroke shortcuts for these symbols are as follows:

To create the Trade-mark symbol ™,  hold the Alt key and type 0153.

To create the Registered symbol ®, hold the Alt key and type 0174.

For further information on proper trade-mark symbol use, please do not hesitate to contact us.