The Impact of Expanded Regulations Under CETA on Geographical Indications and Your Brand
By David Lotimer, January 8th, 2018
Trademarks are a part of our everyday life. A trademark protects a combination of letters, words, sounds or designs that distinguishes one’s goods or services from those of another in the marketplace. There are specialized trademark rules, including those relating to Geographical Indications (“GIs”) that have the potential to impact specific industries. For example, recent changes in GI law could significantly alter how a wine, spirit, agricultural product or food producer approaches their branding and marketing efforts.
A GI[1] is an indication that identifies a wine or spirit, or an agricultural product or food, as originating in a specific territory. The GI must also be associated with a particular quality, reputation or other characteristic of the wine or spirit or the agricultural product or food that is attributable to its geographical origin. Essentially a GI can add value to your product as it certifies that the product possesses certain qualities or reputation, because of where the product was created. We are all familiar with some common GIs including Champagne (an alcoholic drink produced from grapes grown in the Champagne region of France); Port (a Portuguese fortified wine produced exclusively in the Douro Valley in the northern provinces of Portugal); and Cognac (a variety of brandy named after the town of Cognac, France, produced in the surrounding region).
Prior to Canada-European Union Comprehensive Economic and Trade Agreement (“CETA”)[2], which came into force on September 21, 2017, GIs were used to protect only wines and spirits. CETA implementation has resulted in amendments to the Canadian Trademarks Act (“Act”) that expanded the protection afforded by the Act to a wider range of products to which GIs (including translations of these GIs) can now apply. Certain agricultural products and foods are now afforded the same protection. The amendments have automatically granted GI status to a number of products including Brie de Meaux, and Huile d'olive de Haute-Provence, providing them with legal recognition, and exempting them from objection and cancellation proceedings.
Certain more commonly used GIs have been afforded a more limited type of protection (such as Feta, and Asiago).[3] Users of these particular marks will be exempt from cancellation proceedings if they have been using the mark for 10 years (starting before October 2013), have previously had indications granted, or currently have an applied-for or used trademark on file. As a producer of these products, there is some risk in relying on this exemption. The specific GI use must qualify as trademark use as defined by the Act, otherwise you will not qualify for the exemption. You will also be able to continue to use the more common GIs if they are accompanied by a qualifying term such as “kind”, “type”, “style” or “imitation”.[4] The geographical origin must also be clearly displayed on the packaging in which it is distributed.
A third category of commonly used GIs such as Parmesan, Black Forest Ham, and Valencia Orange can be adopted, used or registered as a trademark without penalty.[5] Additionally, these GIs can be used in comparative advertising that is not placed on labels or packaging, or in the instance that consent was given by the ‘Responsible Authority’.[6]
The implementation of CETA has also provided the Federal Court with exclusive jurisdiction to order the removal of a GI, a procedure which did not previously exist. Moreover, there is a process by which a ‘Responsible Authority’ can apply to have a new GI added to the GI List[7] and includes the following steps:
1. Filing a request with the Trademark Office;
2. Trademark Office reviewing your request;
3. Trademark Office putting out public notification of the GI;
4. Going through an objection proceeding (if a proceeding is initiated[8]); and
5. Entering the new GI on the Official GI list.
If you reference a GI on any of your products, it is important you understand how these rules can impact your business. Contacting an experienced professional who can help you in this understanding could end up being the difference between protection of your brand, and the loss of it.
For more information please contact:
T: 613.801.1063
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.[2] See http://www.international.gc.ca/gac-amc/campaign-campagne/ceta-aecg/index.aspx?lang=eng for additional information on the Comprehensive Economic and Trade Agreement.
[7] View the current list at http://www.ic.gc.ca/cipo/listgiws.nsf/gimenu-eng?readForm.
Congratulations Kimberly!
July 10th, 2019
MBM’s own, Kimberly Dunn, achieved the highest overall mark across Canada on the Trademark Agent Qualifying Examination in the most recent exam cohort.
As a result, she will be the recipient of the Educational Foundation Award given by the Intellectual Property Institute of Canada (IPIC). The award will be officially presented during the Institute’s Annual Conference in Ottawa-Gatineau, September 25-27, 2019, at the Gala Dinner.
A total of 98 candidates across the country wrote the exam in 2018. Out of those, 32 candidates passed the exam resulting in a passing rate of 33% (13 passed on their first sitting; 15 on the second; 1 on the third; 2 on the fourth; and 1 on the fifth sitting). [1]
Kimberly wrote and passed the exam on her first try and obtained the highest mark of: 154 out of 160 for Part A; 142 out of 150 for Part B; with the highest overall mark of 296 out of 310.
We are so proud and happy for Kimberly and her tremendous achievement and excellence in the trademark profession and want to congratulate her on becoming (in our opinion the best!) registered Canadian Trademark Agent.
A bit more about Kimberly:
Kimberly is an MBM veteran; she started with MBM in 2008 as a paralegal working in both patents and trademarks but decided to focus her career on the trademark practice and becoming a registered Trademark Agent.
In her spare time, Kimberly enjoys reading (especially true crime and murder mystery books), travelling the back roads of Ontario and taking photographs of hidden gems found during her travels. On rainy (and truly Canadian snowy) days, she spends her time indoors completing various arts and crafts projects, including knitting, bead work, scrapbooking and painting. She also has a passion for baseball and is a fan of the Toronto Blue Jays and regularly attends their games.
Kimberly can be reached at:
T: 613.801.1050
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.
[1] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04633.html
When is an Engineer not Engineering in a Trade-mark?
Scott Miller, February 18th, 2014
In Kelly Properties, LLC v. Canadian Council of Professional Engineers, 2013 FCA 287, the MBM litigation team successfully overturned the Federal Court decision of Canadian Council of Professional Engineers v. Kelly Properties, LLC, 2012 FC 1344 which found the trademark KELLY ENGINEERING RESOURCES unregistrable in association with personnel employment services, namely, providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training.
The recent Federal Court of Appeal decision is important for two reasons:
- A trade-mark application based on a foreign registration may register regardless of whether a date of first use claimed in a Canadian trade-mark application is correct; and
- Just as a trade-mark which is descriptive is registrable if it is not clearly descriptive - A trade-mark which is potentially misdescriptive is registrable if it is not deceptively misdescriptive.
FOREIGN USE BASIS OF REGISTRATION ALIVE AND STRONG IN CANADA:
The Federal Court of Appeal solidified that where a trade-mark application is based on use in Canada and foreign use and registration, the two are pleaded in the alternative. That is, only one of the basis of the application must be met for the application to be considered for registration. Therefore, if the application is found to be unsupported on one ground, it may still be registered on the basis of the alternate ground for registration.
DECEPTIVELY MISDESCRIPTIVE NOT TO BE DETERMINED BY GUIDELINES
Each of the Provinces and Territories in Canada include legislation that more or less defines the Practice of Engineering to incorporate the professional application of applied science. The engineering legislation also includes a prohibition of the use of the word engineer/engineering in a trademark if the use may lead the public to believe the trademark owner is engaged in the Practice of Engineering.
Kelly Services sought to register the trademark KELLY ENGINEERING RESOURCES in connection with personnel employment services. The Canadian Council of Professional Engineers opposed registration on the basis that only licensed engineers should be able to use the term “engineering” in a trade-mark. The evidence before the Trade-marks Opposition Board (2010 TMOB 224) demonstrated that Kelly Services is a personnel employment company and its KELLY ENGINEERING RESOURCES division employs and places both engineers and non-engineers with technical training (e.g. draftsmen). However, the Trade-marks Officer determined that personnel employment services would not be the type of technical services that one would expect engineers to provide. As such, the Board found the trade-mark neither clearly descriptive nor deceptively misdescriptive.
The Federal Court agreed with the Trade-marks Officer’s decision that KELLY ENGINEERING RESOURCES was not clearly descriptive of personnel employment services, but found the mark deceptively misdescriptive relying heavily on a non-statutory guideline from the Association of Professional Engineers which provided criteria for when human resource or staffing agencies are allegedly engaged in the Practice of Engineering. The guideline was not before the Trade-marks Officer and the Federal Court concluded that the guideline would have materially affected the decision of the Officer. Thus the Federal Court came to its own conclusion without giving deference to the Trade-marks Opposition Board decision.
The Federal Court of Appeal found the guidelines of the Alberta Association that regulates the profession of engineering to be just that, guidelines and not law. The Court accepted MBM’s argument that the guidelines were merely the opinions of the Alberta Engineering Association and its interpretation was irrelevant for the purpose of trade-mark law. Since all statutes to regulate the term “engineer” were before the Trade-marks Opposition Board, the Court found that the trial judge made a palpable and overriding error in admitting evidence that opined on the scope and the interpretation of those statutes.
The Federal Court of Appeal found that the decision of the Trade-marks Opposition Board was reasonable and confirmed that the trade-mark KELLY ENGINEERING RESOURCES is registrable in association with personnel employment services. The Trade-marks Opposition Board correctly considered the mark as a whole, and recognized the family of KELLY marks used in personnel employment services.
The bottom line is even if one presumed that the mark KELLY ENGINEERING RESOURCES was misdescriptive of personnel employment services (which was not the case), it was clearly not deceptively so.
For more information, please contact:
Scott Miller, Partner
T: 613.801.1099
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.
Illegal Downloaders Beware – You Can Run but You Can’t Hide Behind Your ISP: Balancing Privacy Rights against the Rights of Copyright Holders
By Scott Miller, February 24th, 2014
The Federal Court of Canada in Voltage Pictures LLC v. John Doe and Jane Doe (2014 FC 161) has set the ground rules for when an Internet Service Provider (ISP) will be required to hand over to copyright holders the names and addresses of individuals suspected of unauthorized downloading of copyright material such as movies and music.
The court ordered the Ontario based ISP TekSavvy to disclose approximately 2000 customer names and addresses to the U.S. production company Voltage Pictures for the alleged unauthorized downloads of such movies as “The Hurt Locker” and “Dallas Buyers Club”.
In Canada, the Copyright Act provides for statutory damages for non-commercial infringement in the range between $100 and $5000. This range was likely implemented to discourage file sharing lawsuits against individuals. However, it is easy to imagine how with the names and addresses of individuals a simple letter to a suspected downloader of, for example, pornography might be embarrassed into paying a settlement without the copyright holder having to file a lawsuit.
To that end the court was extremely sensitive to both the potential rise of the so called ‘Copyright Trolls’ - plaintiffs who file multitude of lawsuits solely to extort quick settlements and the need to safeguard an individual’s right to privacy.
In order to overcome these issues but also balance the right of the copyright holder, the Federal Court instituted the following safeguards before requiring the ISP to deliver the subscriber names and addresses, including:
- The moving party must demonstrate a bona fide case (a real intend to sue and there is no other improper purpose)
- Disclosure will be only names and address and not phone numbers or email addresses
- The information disclosed shall be used exclusively for the purpose of the lawsuit and will not be disclosed to the public/media
- The letter to the ISP subscribers will include the court order and a statement that ‘no Court has yet found any recipient of the letter liable for infringement’
- The case will be specially managed and a Case Management Judge will approve the demand letter before it is provided to the individuals
- The copyright holder shall pay the legal costs of the ISP before the information is provided
The safeguards and limit on damages might still result in some copyright holders bringing lawsuits to deter the public at large from infringing copyright but the economics suggest this will not open the floodgates to litigation before the Federal Court. Likewise, the safeguards do balance the fear against Copyright Trolls and the potential loss of privacy rights.
For more information, please visit CTV National News website to watch Scott Miller’s commentary given during the CTV news coverage of the case.
T: 613.801.1099
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.
