Canada Sounds Off

CanadaFashionLaw recently reported on interesting developments with regards to Canada’s foray into the non-traditional trade-marks world.  Although Canada may be a late-comer to the party, it certainly is playing catch-up.  Today, the Canadian Trade-marks Office issued a Practice Notice stating that effective immediately it will accept sound mark applications.  Does anyone else have a mild case of whiplash from this quick turnaround? 

 So here’s the 411 if your business is thinking of obtaining trade-mark protection for a sound:

• The application must state that the application is for the registration of a sound mark;
• The application must also include a graphic representation of the sound, along with an electronic recording and description of the sound.

The Canadian Trade-marks Office can call into question the registrability of the trade-mark with the usual suspects: functionality, clearly descriptive and/or deceptively misdescriptive.  It is possible to assert the registrability of the trade-mark by demonstrating that the sound has acquired distinctiveness. 

Interestingly, it is not possible to file a sound mark application online and, therefore, the cost will be moderately higher. 

Stay tuned to CanadaFashionLaw to see who takes the first steps.

Will The Canadian Trade-marks Office Get Its Groove On?

Ever eager to keep our readers in tune with the latest developments, CanadaFashionLaw is excited to share some red hot news.  (Ok – yes it’s about trade-marks law, but it’s still pretty interesting!)  Last week, the Canadian Trade-marks Office issued a notice that it has launched a consultation period aimed at amending the Trade-marks Regulations.  Yawn?  Maybe yes, maybe no. 

What caught our attention is the possibility that the Canadian Trade-marks Office may be ready to accept sounds as trade-marks.  To date, Canada has taken a hard line position that in order to be recognized as a trade-mark, the trade-mark must be visual.  Based on this threshold, slogans, logos, three-dimensional shapes, etc., can all function as trade-marks.  But what about sound, smell or touch?  Nope.  These cannot yet function as trade-marks in Canada.  Is this inline with modern day branding?  Arguably no.  Is Canada’s trade-marks system lagging behind those of other countries?  Arguably yes. 

Always wanting to show trade-marks at work in the real world, CanadaFashionLaw has provided some fun examples of what could possibly qualify as a sound mark:

 Example Numero Uno

 

You’re at a movie (I’m setting a scene – go with it). 

It’s a first date. 

The lights dim.  The popcorn is too salty.

A lion’s roar startles you. 

Chances are you’re at a movie produced by Metro-Goldwyn-Meyer Lion Corp.

Example Numero Duo

 Frustratingly, your date’s phone rings in the middle of a gripping scene of the movie.

The phone’s ring has a very distinctive 4 note descending tune.

Could it be that your date is using a NOKIA phone?

 

Example Numero Trio

Ok.  The date is clearly not going well. 

Not only is your date taking calls, but you hear the clicker clacker of typing.

You hear a long drawn out southern drawl “YAHOOOOOOOOOOOOO”.

Could it be that your date is IM’ing via YAHOO?
The date ends early.

A number of other countries have had a far more liberal view than Canada of what could constitute a trade-mark by allowing non-traditional trade-marks to be capable of registration.  Now that Canada is finally thinking about stepping up its game, it will be interesting to see how this will all play out.

In the consultation paper, the Canadian Intellectual Property Office is eager to hear from stakeholders, both large and small, on their perspective.  Should Canada venture further into non-traditional trade-marks?  If yes, what should be the threshold for registration?  Should the applicant be required to prove acquired distinctiveness in order to gain trade-mark rights to a sound?  Should specimens be included in the application?    

The deadline to provide this input is April 23, 2012.  It’s likely that the heavy hitters such as INTA and IPIC will put in their submissions.  Law firms have also been known to draft up submissions on behalf of their clients. 

CanadaFashionLaw is interested to hear your thoughts…

Birds of a Feather Do Not Flock Together

International Clothiers Inc. is getting well-acquainted with Canada’s Federal Court.  Previously, CanadaFashionLaw advised of Target’s aggressive strategies prior to actually launching in Canada, which involved International Clothiers Inc.  Now they are on the receiving end of another alleged trade-mark infringement case.  This time it’s Canada Goose that's spreading its wings.

Canada Goose recently issued a Statement of Claim against International Clothiers Inc. alleging trade-mark infringement of its trade-marks.  Canada Goose alleges that not only are the trade-marks confusingly similar, but the trade-mark placement and certain design elements of the apparel themselves are also confusingly similar.

In its Statement of Claim, Canada Goose states that it has incurred significant money in marketing its products and brand throughout North America, which has significantly paid off as its notoriety has spread throughout the continent. 

Given the alleged sub-standard quality of the apparel sold by International Clothiers Inc., Canada Goose believes that its reputation and goodwill is becoming tarnished by International Clothiers. 

As of today’s date, International Clothiers Inc. has yet to file its Statement of Defence.  This should be an interesting Canadian battle – stay tuned to CanadaFashionLaw for developments! 

Don't Exploit Me Because I'm Beautiful

When we see models saunter down the runway or captivate us on the glossy magazine covers, our first thought may not be "woe is them".  But should it be?  This is an interesting issue that is being posed by a non-profit organization, The Model Alliance.  

With the vast majority of models starting out their career in their early teens, it is possible that these young darlings may not be well-prepared to look out for themselves in the big bad world.  Enter The Model Alliance.  Founded by Sara Ziff, a ten year catwalk veteran, The Model Alliance seeks to advocate against "...the modeling industry's systematic abuses of its workforce".  Heavy hitting issues such as child labour, eating disorders and sexual abuse in the workplace are high priorities on the agenda. 

The Model Alliance has caught the attention of some heavy hitters in the fashion industry.  The Fordham Law Institute at Fordham Law School have supported the organization.  Also, if you're looking for a Canadian connection, Canada's own Coco Rocha is on the Advisory Board.  

Some may scoff at the need for such an organization, but The Model Alliance is quick to point out that there are a number of unions that protect young actor and actresses in the US.  There is no such organization for fashion models. 

The Model Alliance recently released a draft Bill of Rights that sets out model's rights in the workplace, which addresses issues that vary from transparent accounting practices to not requiring under 17 year old models to pose nude or semi-nude to helping models report work-place harrassment.  Unfortunately, the Bill of Rights will only be as strong at its support.  Fingers crossed it gets some significant buy in from the industry.

E-Gold Mine Rush?

As the internet becomes an increasingly pervasive marketing tool for fashion companies, it’s hard (and not very business savvy) to ignore developments on the internet.  Previously, CanadaFashionLaw gave our fashionista readers a head’s up on looming developments with the internet.  

Well, the future is here! 

(Technically the application period has only recently opened…so it’s still early days.) 

Let’s not get ahead of ourselves:

The future is drawing near!

ICANN (the organization that basically runs the internet) has now opened the application process for parties that wish to run their own generic Top Level Domain (“gTLD”) registry. (Read CanadaFashionLaw's previous article to get your internet geek on so you understand what a gTLD is).  The application process opened on January 12, 2012 and will close on April 12, 2012. 

What does this mean? 

At this point, we’re not quite sure; literally the sky is the limit!  With some companies openly stating that ICANN’s extension is not warranted, we’re not quite sure if companies will change their online branding strategies or how extensive they will be.  But putting on our cautious (and fabulously bedazzled) lawyer’s hat, we do know that there will be at least some changes:

Will we see fashion brand owners run their own gTLD:

www.website.GUCCI 

Perhaps.

Do you think that fashion brands will join forces:

www.website.FASHION

Peut-etre.

Or, do think that industries will unite for a global domain name registry:

www.website.LUXURY

Maybe baby.

What’s the draw back? 

There’s a possibility that the expansion of the internet could create cybersquatting on steroids! Prudent and proactive brand owners can monitor the new gTLD applications on ICANN’s website to determine if any third party proposed new gTLDs will infringe on their brand and/or trade-mark portfolio.  Thankfully, an objection option has been incorporated into the application process to afford brand owners the opportunity to “X” the proposed new gTLD.