Creativity Life Cycles : Canadian Trademark Agent and Lawyer : Joshua MacFadden : MacPherson Leslie & Tyerman Law Firm : Patents, Intellectual Property

The Globe and Mail and other news agencies are reporting a brewing dispute in mainland China over the use of the trademark iPad has resulting in the seizure of Apple iPads at retail locations in northern China due to a dispute over rights to the iPad trademark in China.

Shenzhen Proview Technology, a subsidiary of Proview International Holdings Ltd. - a manufacturer of LCD screens, has filed a trademark violation complaint with the Chinese commercial bureau of Beijing citing its ownership of iPad trademark for over 10 years.  Apple had previously purchased the rights with respect to the trademark in Taiwan and in December had unsuccessfully sought to enforce a 2009 agreement between the parties allegedly transferring iPad trademark rights to Apple.

Currently, Shenzhen Proview is seeking the seizure and destruction of offending goods, creating not only a challenge to Apple's ability to expand its business in the large and growing market for its products in China, but exposure to potentially significant legal costs and related expenditures in order to use its well-known trademark in China.

This story highlights a concern businesses and organizations - that trademark rights are specific to each jurisdiction and even a brand as "iPad" trademark - which might be regarded as "famous" in some jurisdictions, must be cleared and registered to enable a business to protect and enforce its rights. 

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On January 26, 2012, Beyoncé's holding company, BGK Trademark Holdings LLC filed an application to register the name of her newborn daughter (born January 7, 2012), BLUE IVY CARTER, in association with a thorough list of consumer products, together with retail and entertainment services.

BLUE IVY CARTER is already in demand, however, and two other enterprising applicants have also sought to register trademarks referencing the famous infant, including:

1. a January 11, 2012 application for "Blue Ivy Carter NYC" in association with infant and toddler clothing, etc. based upon "use" of the mark (for specimens, see here)  The application was subsequently abandoned; and
2. a January 20, 2012 application for "BLUE IVY CARTER GLORY IV" in association with a range of cosmetic and fragrance products.

Fortunately for Beyoncé, Jay Z and their already famous infant daughter, examination of each of the above-referenced applications has been swift and included a Section 2(a) False Connection Refusal, suggesting that BLUE IVY CARTER is not connected with the goods provided by the applicant under the applied-for mark and that she is "so famous that consumers would presume a connection".  As mentioned the first application has already been abandoned and, without consent, the second application is unlikely to succeed.

Coincidentally, a pre-existing registration does exist for a BLUE IVY logo which references the retail services of a Wisconsin based company - a registration which pre-dates the birth of the famous baby so it may be interesting to follow how Blue Ivy's famous parents address the rights holder's position or whether the USPTO may issue a confusion objection.

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Be careful when copying material. Most material on the Internet (i.e. photos, logos, articles, etc.) is protected by copyright. Such material can only be used with the written consent of the owner (i.e. a license). The penalties of using content without such permission can be costly and embarrassing to you or your business. 

Be careful when selecting and adopting new trademarks (i.e. logos, product names, slogans, etc.).  It is important to research whether a new trademark may infringe on a third party’s copyright and/or trademarks. Consult with a legal advisor to research the availability of your new trademarks before investing large sums of time and money in adopting new brand names, logos or slogans.  A failure to do so may result in a need to re-brand or, at worst, litigation.  Bottom line:  the loss of momentum for your new brand, not to mention the costs associated with litigation, are huge in comparison to appropriate due diligence.

Comply with license terms. Periodically review  compliance with all key licensing agreements to which you are a party and make sure you are complying with user counts and other license terms and conditions. If you are not sure, check the license or consult with your legal advisor.

Protect third party confidential material.  Many businesses will have material from third parties that is protected under confidentiality agreements.  Segregate this material from non-confidential material, don’t disclose to third parties without authorization, and only discuss that information with others on a “need to know” basis.

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Know what you have.   Know what  your business owns and what is licensed into the organization.  Consider whether a client deliverable, an internal document or module of software (or a portions thereof) are developed, owned or licensed from a third party?

Protect what you have.   If a deliverable or work product is owned by your company consider whether it should be protected by IP registration or trade secret policies.  If you are unsure, contact your legal advisor.

Put IP Notices on original materials. This includes appropriate notices, symbols and disclaimers for your IP, for example:

• Copyright notices include the © symbol and copyright notices such as “© 2010 . All rights reserved.”;
• Patent rights can be indicated on a product or its packaging (i.e. Canadian pat. No. 1,234,567); and
• Trademark rights can be indicated with use of the TM symbol or ® symbol for registered marks along with trademark notices such as “ is a registered trade mark of work”.

Make sure Consulting and Employment Agreements are in place to address Confidentiality and IP Ownership. Make sure written agreements are in place referencing commitments of non-disclosure, confidentiality and IP ownership before disclosing IP to employees or potential employees or engaging outside consultants.  If there is not an effective agreement in place, a consultant, for example, may claim IP ownership or otherwise misuse key information or materials for their own benefit or for others in the industry.

Mark  confidential information as “CONFIDENTIAL”. Where documents contain confidential information, mark the document “Confidential” and protect it from unauthorized disclosure.  Only discuss confidential matters internally on a “need to know” basis and do not disclose to a third party unless effective confidentiality and non-disclosure agreements are in place.

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With our change of the calendar to 2012 it is worth noting the many artists, writers, lyricists and other 'creative types' whose work now passes into the "public domain" as a result of applicable copyright laws (i.e. in Canada, the life of the author/creator plus fifty years; in other jurisdictions, the life of the author/creator plus seventy years). 

With the help of a third party blog post entitled "Public Domain Day 2012", the unofficial list of creators whose published works have potentially* entered the public domain in Canada includes, among others, Ernest Hemingway and Carl Jung, both of him died in 1961.  In other jurisdictions (i.e. Europe) where the relevant date is 1941, the list of creators includes such prominent figures as James Joyce, Virginia Woolf, and Frederick Banting.

* It is important to note that entry into the Public Domain is not automatic and subject to many qualifications including works of joint authorship, unpublished/posthumous works, retroactive extensions, etc.  If in doubt, contact legal counsel for advice.

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IP is an asset of every business and indeed, may be the most valuable assets of a business.  Such assets include brand names, logos, slogans, domain names, software code, literary works, inventions, confidential information and trade secrets (i.e. everything from your customer list to your corporate logo).

For many businesses IP may be unprotected, under-exploited, or vulnerable to theft or infringement by third parties thereby reducing the potential competitiveness of a business and opportunities for growth.   Any individual or organization which invests in innovation fails to capture and exploit the true value of that investment if IP rights are not protected, commercialized and enforced.  Moreover, to the extent that a third party’s IP (i.e. software) is being used in conducting business, it is essential to know what your rights and obligations are to any such third party to ensure you are not violating the rights of third parties.

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The unauthorized use of the Conservative Party of Canada's logo on a website has placed Michaela Keyserlingk, an anti-asbestos advocate, in hot water.

Ms. Keyserlingk is the widow of Robert Keyserlingk, who died in 2009 of mesothelioma, a cancer caused mainly by asbestos exposure.  She started her website (www.canadianasbestosexports.ca)  to generate awareness on the dangers of asbestos in an effort to stop the mining and export of the product from Canada and claims that the unauthorized use of the CPC logo is merely to gain the attention of the Canadian government.  Ms. Keyserlingk has made statements to indicate that she will remove the logo if a high-ranking member of the Conservative party meets with her to account for its continued support of the Asbestos industry.  To date, the logo remains on the website.

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True North Sports & Entertainment, owners of the Winnipeg Jets, have today released images of their new logos for the upcoming NHL season:

The logos represent a departure from the previous "Jets" logo as the team seeks to make a new identity from that of the former Winnipeg club. and an opportunity to generate additional fan enthusiasm for the return of NHL hockey to the city.

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Within one day of the raid on Osama bin Laden's compound, Disney Enterprises, Inc. filed three trademark applications  with the U.S. Patent and Trademark Office ("USPTO") for the trademark SEAL TEAM 6 in association with a range of products and services, including:  entertainment and education services, clothing, headwear, footwear, a range of toys, electronic games, etc. and  "snow globes", Christmas stockings, tree ornaments, and decorations.

Given the rushed nature of these "intent to use" filings it will be interesting to see whether the full range of products do, in fact, appear on department store shelves in the months ahead or whether Disney's filing was merely an effort to stake a claim on the Trademarks Register while they contemplate the business case and/or approach to capitalizing on one of the more significant United States news stories in recent years.

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