Last week the Supreme Court of Canada (SCC) released a significant trade-mark decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27.  It represents a major review of the legal concept of “confusion” in trade-mark law, as well as the vexing question of registered versus unregistered or “common law” trade-mark rights.

In this case, Masterpiece starting using its MASTERPIECE brand in 2001 in Calgary, Alberta, for retirement residences. However, the brand owner did not register the marks. A few years later, another company, Alavida, based in Ottawa, Ontario, applied to register the mark MASTERPIECE LIVING for similar services, and that application matured to registration in 2007, claiming use since 2006. So we have unregistered marks used since 2001 in Calgary, and a registered mark used since 2006 in Ottawa. Which one should prevail? 

The SCC agreed with Masterpiece that Alavida’s registered mark (the later one, based in Ottawa) should be cancelled, based on confusion with the earlier unregistered mark. This is because the later registered mark failed to survive the confusion analysis, on the assumption that both marks are used in the same geographic area. In reality, the marks were never used in the same region. However, for an owner of a registered trade-mark to have exclusive rights to the trade-mark across Canada, that mark cannot be confusing with another previously used trade-mark anywhere in Canada.  Even if that previously used mark is not registered.  Put another way, an unregistered trade-mark in Canada can be the basis of a challenge to a registered mark.  

Lessons for business:

• This case makes it clear that common-law trade-mark rights are enforceable in Canada. That’s good news for brand owners. However, it’s also important to remember that with an earlier application and registration, Masterpiece would have avoided this lengthy and costly battle since their registration would have blocked the later entry of Alavida’s trade-mark application.
• The importance of effective trade-mark searching is critical to a successful trade-mark application. Consider clearance searches and an availaibility opinion as part of your risk mitigation strategies for the launch of a new brand, or the registration of a long-standing unregistered mark.

Calgary – 07:00 MST

 

Canadian trade-mark owners take note: The .XXX top-level domain is a new sponsored TLD designed for the adult entertainment industry. It is expected to launch in 2011. Trade-mark owners can make use of a blocking procedure to ensure that their trade-marks are not reflected in .XXX domain names. The opt-out process blocks names at the .XXX registry so these names cannot be registered by others. This will be available to trade-mark owners for a fee during the “Sunrise B” period. This period will commence in September 2011 for a period of 30 days. As an example, Microsoft might make use of this procedure to block the registration of “microsoft.xxx” as a domain name. For further details see: xxxempt.com and see this related article IPRota White Paper on xxx Launch.

Contact the Field trade-mark team for assistance on taking advantage of the blocking process. 

Calgary – 07:00 MDT 

 

A recent app dispute between the Globe and Mail newspaper, and Spreed Inc., a Toronto-based app developer, highlights the risks with outsourcing app development, for both companies and developers.  Spreed developed an iPhone app news reader for the Globe, which was popular enough to pull in 700,000 readers. For whatever reason, the Globe later decided to develop its own app inhouse.

When the Globe’s inhouse app was launched, Spreed issued a software update to the users of Spreed’s Globe and Mail app. Updates provide bug fixes, upgrades to a new iOS, or new functionality – at least that’s what users expect. However, in this case, the update peeled off the Globe and Mail user-interface, and transformed the app into something new called “Free Press News” – a generic news reader no longer associated with the Globe and Mail.  Why can Spreed do this? Because, according to them, they own the code.  Lessons for business?

• Get advice. If you’ve hired an independent app developer, then check your contract: who owns the code? This becomes critical when the relationship breaks down – in this case between the content-provider and the app developer.
• App ownership is important in other situations including: privacy (who has access to what information during and after the contract?), and transfer of IP rights (let’s say you sell your company and want to transfer all the intellectual property – including your popular iPhone or Blackberry app. You can’t transfer the code if you don’t own it).

Calgary – 07:00 MDT

The Lawyers Weekly interviewed Richard Stobbe for its recent article Canada mulls registration of non-traditional marks.

The introduction of motion marks in the Canadian Intellectual Property Office (CIPO) would permit registration of marks such as the “VeriSign Secured” motion mark, depicted at left. The mark is an EU Community Trade mark registered in 2006 (No. 004366001).  The graphic depicts a stop-action representation of the motion mark. The new CIPO guidelines are expected soon, for motion and hologram marks. To permit registration of other nontraditional marks in Canada (particularly sound marks), CIPO may have to seek changes to the Trade-marks Act and Regulations rather than simply issuing a practice notice.

Related Reading:

• Holograms & Other Nontraditional Trade-marks in Canada
• Time for Sound Marks in Canada?

Calgary – 07:00 MDT

 

It is a long established principle that, under Canadian law, a mark must be used in the form it is registered. For example, Apple couldn’t remove the “bite” out of its famous Apple logo, or for example, add an extra bite. This could result in loss of rights in the original mark. However, Canadian trade-mark law does permit some variation to occur, as long as the differences are unimportant and the dominant features of the mark are maintained. A recent decision has raised questions about what constitutes use of the mark as registered. In the Trade-Marks Opposition Board (TMOB) case Bigras v. BMO Nesbitt Burns Corporation Limited, 2010 TMOB 174, Bank of Montreal has lost its registration of the trade-mark SIGMA ACCOUNT because it published a brochure with the word SIGMA followed by the symbol ®. Elsewhere on the brochure, the words “BMO Nesbitt Burns Sigma Account ®” appeared, but the TMOB decided that consumers were misled when the symbol ® was placed immediately after SIGMA in the core of the brochure, and by a footnote stating that SIGMA is a registered trade-mark. Lessons for business?

• Seemingly small details – such as placement of the ® symbol, footnotes, or the font size of the trade-mark - can be critical in a situation like this.
• Brand guidelines can help ensure consistent use of your brand across the business – in marketing, advertising, social media and packaging.
• Seek advice to ensure that your core brands are protected, and that use of the marks matches registration of the marks.

Calgary – 07:00 MDT

 

It’s playoff season in Canada, and some hockey fans cheer when the players brawl. The good folks at UFC have simplified things by doing away with the hockey and all the other distractions, and just giving the fans what they want: big guys hitting each other. 

A Kelowna, BC, man registered the domain name ULTIMATEFIGHTINGCHAMPIONSHIPS.CA and seven other variations using the .US, .INFO and .BIZ extensions.  Zuffa LLC, the company that owns the UFC trade-marks, approached the registrant with an offer to settle. When the man refused, Zuffa filed a complaint under the CDRP – the dot-ca dispute resolution procedure. In the recent decision in Zuffa LLC v David Bruce [PDF], the panelist had to decide if the domain name had been registered “in bad faith” which is typically one of the more difficult elements to prove. 

In this case, the registrant had admitted in email correspondence with Zuffa that he hoped to make a great deal of money from the registrations, that he was well aware of the UFC brand, and he had registered other offending domain names. The panelist had no trouble concluding that this qualified as “bad faith”.  The domain name was ordered transferred to the trade-mark owner.  That’s one down, seven to go. 

Calgary – 07:00 MDT

 

Quick, which is Apple’s iPhone and which one is the Samsung Galaxy phone?In a recent lawsuit Apple Inc. v. Samsung Electronics Co. Ltd., (11-1846 U.S. District Court, ND Cal.) Apple complains that Samsung’s line of Galaxy phones and tablets infringes the “look-and-feel” of the Apple iPhone and iPad. Besides patent and trade-mark infringement, this is an interesting trade-dress infringement claim, which alleges that Apple owns rights in the way their phones and tablets appear – the screen layout, product design elements, user interface, the appearance of icons and packaging. Can this kind of intellectual property be protected?

In Canada, the law will protect “trade dress” that distinguishes the product – such as colour schemes, signage, the layout of packaging and product design.  Industrial design law can also protect the ornamental (non-functional) elements of a product including product shape and size. In Eli Lilly and Co. v. Novopharm Ltd., [2001] 2 F.C. 502, a drug-maker complained that the distinctive shape, size and colour of its drug (in this case, Prozac) was being unfairly copied by generic competitors. This leads to a claim for “passing off” – where the knock-off product is passed off as the genuine original by copying the distinctive trade-dress of the original.

The three necessary components of a passing-off action are:

1. the distinctive trade-dress must have a reputation in the mind of consumers;
2. misrepresentation and deception that leads consumers to believe that the knock-offs are actually the genuine original; and
3. actual or potential damage to the original brand owner.

Apple’s recent lawsuit is one more battleground in the fierce war for consumers in the highly competitive mobile computing marketplace.

Calgary – 07:00 MDT

 

Two decisions just in time for spring cleaning and barbeque season. 

• Someone tried to trade-mark the term PEAMEAL BACON BACON for peameal-style bacon. A competitor, D & S Meat Products Ltd., opposed that application. The application disclaimed the right to the words “PEAMEAL BACON” and “BACON” (leaving open the question of what’s left to be protected). In making its argument to the Trade-Marks Opposition Board (TMOB), the applicant used the PIZZA PIZZA argument – namely, that the repetition of the word BACON qualified as a “unique linguistic construction” that consumers would recognize as a brand. In the famous decision of Pizza Pizza Ltd. v. Registrar of Trade Marks (1992), 67 C.P.R. (2d) 202 (F.C.T.D.) (famous for trade-mark agents, that is) the court allowed the mark PIZZA PIZZA for pizza, but that case was based on about 10 years of use of the mark in which time the owner created a “distinguishable identity” in the marketplace. The mere use of repetition cannot, on its own, defeat a claim that a mark is clearly descriptive. Decision: D & S Meat Products Ltd. v. Peameal Bacon of Canada Ltd.

 

• The second case opens up the competitive world of garage-door openers. The TMOB originally decided that there was no likelihood of confusion between an existing brand LIFTMASTER and newcomer LYNXMASTER, both for garage door openers. The court reviewed this decision and pointed out that the marks should be considered in their totality, without dissecting the marks and considering the word LIFT with LYNX in the absence of the rest of the trade-marks. The court decided that the two marks would be confusing with each other, and denied the application for registration of the LYNXMASTER marks. Decision: The Chamberlain Group, Inc. v. Links Industries Inc. 2010 F.C. 1287

 

Calgary – 07:00 MDT

The Canadian Intellectual Property Office is expected to announce new guidelines on “nontraditional marks” sometime this year. In their current proposed practice notice, the office would allow motion marks and holograms as two types of nontraditional marks. There is still some debate about how these marks would be depicted visually, since the limitations are not so much technological but rather procedural – the current rules require the mark to be depicted visually in a drawing.

Other nontraditional marks currently permitted in Canada include marks that protect the shape of the product, such as the Life Saver Design (at left) (Reg. No. TMA562616) registered by Kraft Foods for candy. BMW has registered the Mini Distinguishing Guise (Reg. No. TMA789872) for the shape of their iconic MINI cars. This protects the shape of the car as a distinguishing guise. Colour can be part of a trade-mark. Three-dimensional marks are also permitted in Canada.  Sound marks are allowed in the US and other jurisdictions, but Canada has a long way to go.  There are currently no sound marks registered in Canada. The MGM lion’s roar, which was the subject of a Canadian “sound mark” application in October, 1992 (Application No. 714314), is still before the Canadian trade-marks office after almost 20 years, having gone through various extensions, refusals and appeals.  Some other possibilities:

• Scent marks: a “cherry scent” is registered in the US for “synthetic lubricants.”
• Tactile marks: a velvet texture and a leather texture are registered in the US, both appearing on the surface of a wine bottle. Germany has permitted registration of the mark UNDERBERG in Braille for beverages.
• Flavour marks: an application for a trade-mark for an artificial strawberry flavor for “pharmaceutical preparations” was refused in Europe.

Related Reading: Time for Sound Marks in Canada?

Calgary – 07:00 MST

 

Is the use of a competitor’s name in keyword advertising considered trade-mark infringement? 

The short answer is that in Canada, we still don’t know. The closest decision we have is from a recent lawsuit which deals with competing career colleges in Vancouver. Vancouver Career College (VCC) had an aggressive policy of buying up the keywords of competitors. In Private Career Training Institutions Agency v. Vancouver Career College (Burnaby) Inc., 2011 BCCA 69, the BC Court of Appeal has upheld a lower court decision  that the keyword advertising program of VCC was not misleading advertising.  Unfortunately, this is not a trade-mark decision, so it provides little guidance on the topic for business, since the lawsuit involved interpretation of a subsection of the BC Private Career Training Institutions Act.  Here, in deciding that consumers were not likely to be deceived, the court noted that the nature of the “product” will be relevant. Consumers spending several thousand dollars on career training courses are not likely to make snap decisions based on sponsored links; they are more likely to weigh their options carefully after going through a lengthy review and admissions application procedure. 

We still have to wait for a decision based in Canadian trade-mark law to provide useful business guidance in this area.

Related Reading:

• Google Adwords Update (from the IP Group at Field Law) 
• Google AdWords: Can’t Beat ‘Em?

US Update:

• Google Suffers Surprising Preliminary Loss in Keyword Advertising Case–Jurin v. Google  

Calgary – 07:00 MST

 

Who can get a monopoly on a particular word? Is it fair for someone to get a trade-mark for the word TEACHERS’? Under Canadian trade-mark law, there’s nothing stopping a company from obtaining a trade-mark over almost any word, as long as it meets the registration criteria. One of those criteria is that the word cannot be descriptive of the product or service that’s being provided. In Ontario Teachers’ Pension Plan Board v. Canada (Attorney General) 2011 FC 58, the Federal Court decided that the word TEACHERS’ is not registrable by the Ontario Teachers’ Pension Plan. The court decided that the word TEACHERS, describes an “intrinsic character of the administration, management and investment of a plan/fund for teachers” and so the word should be available for others to use. “Descriptive words,” the Court confirmed, “are the property of all and cannot be appropriated by one person for their exclusive use.” 

Lessons for business?

• Remember: This doesn’t mean that all adjectives are ineligible for registration. The word SWEET (TMA687821) is a registered trade-mark in Canada for “Plant nutrients and supplements namely plant food” because the word does not describe the character or quality of the product. However, the word SWEET for, say, candy or refined sugar would be clearly descriptive.
• If you are considering a new brand, get an advanced registrability search from a qualified trade-mark agent. They can advise on both the availaibility (whether someone else has an identical or similar mark) and registrability – including whether the mark is likely to be considered clearly descriptive or deceptively misdescriptive.

Related Reading: Generic Domain Names in Canada  

Calgary – 07:00 MST

My article on trade-marks and the Federal Court of Appeal decision in Jose Cuervo S.A. de C.V. v. Bacardi and Co., [2010] F.C.J. No. 1208  is published in the January 21, 2011 edition of the Lawyers Weekly: “Trade-mark owners must use it or lose it”.  This article reviews tips on dealing with Section 45 notices under the Canadian Trade-marks Act.

Calgary – 07:00 MST

 

 

Can intellectual property theft or infringement lead to jail time?

• An employee can walk out the door with all kinds of interesting information. Customer lists, business methods, intellectual property of all descriptions. Last week a US jury convicted an ex-employee of Goldman Sachs of trade-secret violations arising out of his theft of software code.  Mr. Aleynikov, a computer programmer, violated the employer’s confidentiality policy when he purloined portions of the company’s code and then quit to join a rival firm. The algorithms in such code provides a critical edge in such a competitive industry as high-frequency stock trading. The charges flow from the Economic Espionage Act dealing with trade-secret protection, a US law that doesn’t have an exact equivalent in Canada. Mr. Aleyniko faces up to 10 years in prison when he is sentenced in March, 2011.
• In Canada, we don’t have trade-secret protection legislation, and jail-time is extremely rare for white-collar theft of trade secrets or intellectual property. Under the criminal remedies section of the Copyright Act (Section 42), imprisonment is a possible punishment, but is rarely used in practice.  In R. v. Borg, [2007] O.J. No. 3287, a company was convicted of eight offences under the Copyright Act relating to importation and sale of forged copies of software.  The person who operated the company was convicted of two offences and the individual was sentenced to 60 days in jail.  However, that sentence was deleted on appeal.
• In the recent case of R. v. Hirani (2010), 2010 BCPC 205 (B.C. Prov. Ct.), the Canadian Border Services Agency intercepted shipping containers which contained knock-offs of Chanel, Prada and Gucci bags. Undercover officers later attended at the store to which the goods were destined and nabbed the perpetrator.  The accused pled guilty and was fined $4,000, but avoided anything more serious. Jail time was technically part of the sentence, but was served in the community.

Related Reading:

• Copyright Infringer Hit with Fine  
• First Conviction Under Anti-Camcording Law

Calgary – 08:00

One company files a Canadian trade-mark application for IREWARD based on “proposed use” for a customer loyalty program. In other words, they intend to use it, but haven’t yet launched their service. However, they know that when they do start using the mark, they’ll benefit from their October 15th filing date.  A month later, unaware of the first mark, another company files an application for IREWARDS, a mark that is virtually identical, also for a customer loyalty program. This time, it’s based on actual use of the mark.  They have a November 16th filing date, meaning that they arrived at the trade-marks office one month later than the competing mark.

So, who wins?

Both marks were filed in 2001. After a lengthy battle, the decision in Indigo Books & Music, Inc. v. Preferred One Inc., 2010 TMOB 100 (CanLII) was recently handed down.  Indigo (a Canadian retail book store chain) was the later applicant for the IREWARDS mark. They commenced substantial use of their mark immediately, expending millions of dollars in advertising, merchandising and promotion.  Preferred One, the original applicant for the IREWARD mark never commenced use of their mark. Indeed, they put their program on hold when they found out that their opponent was a powerful national retailer.  This proved to be fatal to their mark.  Indigo eventually won the case since they could show that Preferred One’s mark was confusing with their mark as of the date of the opposition in 2004, by which time Indigo’s IREWARDS brand was firmly established across Canada.

Lessons for business?

• Search With Caution: Indigo conducted trade-mark searches before they filed. But their searches did not disclose Preferred One’s earlier IREWARD mark, since that application had not yet been indexed by the trade-marks office database. There is a lag of several months before marks will show up on search results. Thus, it is important to remember that searches are important, but not perfect due to this lag time at the trade-marks office.
• Invest in Your Brand: This case was really determined by the business realities of Indigo’s brand investment. If they had not invested so heavily in the promotion of their mark, they would not have been able to show distinctiveness at the relevant date.

Calgary – 08:00 MST

 

When parties are negotiating a new business deal – maybe an investment, joint-venture, research or a pilot project – they often agree to joint ownership of the resulting intellectual property, as an easy starting point.  Let’s look at one case involving trade-marks. 

Trade-mark law in Canada is clear that each trade-mark should have one owner.  That means one company, one person, one entity can own the mark… or, if there are two people who co-own a trade-mark, they must apply to register the mark as a partnership.  In JAG Flocomponents N.A. c. Archmetal Industries Corporation, 2010 FC 627 (2010), two companies entered into a contract in which they agreed to co-ownership of the mark FUSION. This flowed from the catch-all clause in their agreement that: “Any new products, designs, patents, inventions, calculations, and other intellectual property which arise directly or indirectly pursuant to or in consequence of this agreement shall be deemed to [sic] equally owned by the parties hereto.”  The FUSION mark was part of the “other intellectual property” caught by the agreement.

After a falling-out, one company registered the FUSION mark in its own name.  After a court battle over ownership, the court decided that the registration should be expunged. Since the parties agreed to co-ownership of the mark, the trade-mark application by one party rendered the registration invalid. 

Lessons for business?

• Beware of catch-all “joint ownership” clauses, as they should be carefully considered. Should any of the intellectual property be jointly owned? And if so, think through the implications of each situation. Important rights will flow from jointly owned patents or trade-marks, for example.
• As a practice point, a material misrepresentation in a trade-mark application (in this case, that little detail about joint ownership was left out) can result in expungement of the mark.  

Calgary – 09:00 

Trade-marks can appear almost anywhere. But you have to be able to see them at the point of purchase for the brand to function as a trade-mark under Canadian law. Take this example. A purveyor of fine bathroom tissue tried to registered the floral pattern at left as a trade-mark. It’s the design that’s embossed onto a popular brand of “hygienic paper products” (that’s legalese for toilet paper). A competitor complained, saying the design was confusing with its own registered trade-mark – the floral design at right.

In the recent case of Scott Paper Ltd. v. Georgia-Pacific Consumer Products LP , 2010 FC 478, the court examined the competing trade-mark claims and decided that marks must be seen to develop a reputation and to be distinctive of their owner. In this case Georgia-Pacific’s mark (the one at right) was not visible to consumers through the packaging.  Since it was not visible at the point of purchase, it could not function as a trade-mark, regardless of how many times people saw the mark after purchase when they opened the packaging to use the product.

Lessons for business?

• There are many design elements that can function as a trade-mark to distinguish you from competitors… from the brand displayed on the package to designs embedded into the product itself.
• When reviewing trade-marks in your business, ensure that your packaging strategy dovetails with your brand strategy. In this case, the packaging may have changed over time to “hide” the trade-mark.
• Get advice on your brand-protection strategies and watch your competitors – in this case, the complaint failed and Scott Paper’s design (the one at left) was allowed to proceed to registration. However, this case also illustrates that Georgia-Pacific was vigilant about brand protection in a competitive business.

Calgary – 08:00 MDT

India recently granted its first “sound mark” to Yahoo Inc., in a development that brings India’s trade-mark registration system in line with the US, the EU, Australia and other trade-mark registries around the world. (Click here to listen the audio clip of the Yahoo yodel).

What about Canada? Although sound marks are not expressly prohibited by the Canadian Trade-marks Act, there has only been one successful registration of a sound mark in Canada (the MUSICAL NOTES DESIGN mark, which has since been expunged for failure to renew). The practice of the Canadian Intellectual Property Office (CIPO) has been to consistently refuse applications for sounds marks due to the procedural requirement that marks be visual in nature. This is not mandated by the definition of a “trade-mark” in the Trade-marks Act itself, but the Act does refer to the requirement of submitting a “drawing” of the mark, and court decisions have confirmed this. “A ‘mark’ must be something that can be represented visually” : Playboy Enterprises Inc. v. Germain (1987), 16 C.P.R. (3d) 517 (F.C.T.D.).  The MGM lion’s roar, which was the subject of a Canadian “sound mark” application in October, 1992 (Application No. 714314), is still before the office eighteen years later, having gone through various extensions, refusals and appeals.  It might be Canada’s longest-running application.

Is it finally time to permit sound marks in Canada? CIPO is considering some non-traditional marks – such as holograms – that can be depicted visually. Future amendments to the Trade-marks Act will probably permit registration of sound marks and other non-traditional marks in Canada, though these changes won’t likely be introduced for several years.  Listen for changes.

Related Reading: Registering Sound as a Trade-mark

Calgary – 10:00 MT

 

ipblog.ca will be taking a break over the summer. We’ll be back in the Fall to pick up developments such as:

• Canadian Copyright Reform (with Parliament breaking for the summer, there will be no further Parliamentary debate on Bill C-32 until September);
• The US Supreme Court’s decision in the Bilski case (relating to patentability of business methods and software);
• Changes to the Canadian rules in assessing patentability for “computer-implemented inventions”;
• The Canadian Intellectual Property Office’s plans to expedite the examination of so-called “green technology” patent applications;
• Developments in licensing, trade-marks, internet law and trade-secret law.

Have a good summer. 

Calgary – 09:00 MT

The trade-mark Moto Mirror is registered in Canada for use with truck and automobile mirrors. However, the owner of the mark did not actually manufacture the mirrors. In a series of licensing agreements, the owner of the mark authorized other companies to make and sell the mirrors under the Moto Mirror brand.  This is common enough, and is permitted under Canadian trade-mark law, as long as the owner maintains the required degree of control over the “character or quality of the trade-marked wares”.  So what degree of control is required?

In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP (March 9, 2010), the Federal Court of Canada reviewed this question.  The Court has reinforced the concept that indirect control will satisfy the requirement, and indicated that: “What is required is that the registrant be able to control product quality through the exercise of its contractual rights vis-à-vis the intermediary which, in turn, is entitled to control product quality under contract with the sub-licensee. So long as there is a continuity of quality control that can be effectively maintained by the registrant under the chain of contracts no special conditions or language are required.”

Lessons for business?

• When licensing trade-marks, make sure you get legal advice to ensure your license agreements are properly drafted;
• The court was clear that “no special conditions or language are required” as long as it is clear that the owner controls product quality through the chain of contracts.

Calgary – 08:00 MT

 

Can you get a trade-mark for .doc, .pdf or other file extensions?  The makers of AutoCAD software are pursuing trade-mark protection over the file extension .dwg (referring to “drawing”), which is the file format for the AutoCAD software product. In the US case Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 WL 5218009 (N.D. Cal. December 31, 2009), the Court has made it clear that file extensions are functional and thus cannot be protected as trade-marks.

What about in Canada? Autodesk is also pursuing trade-mark protection for the DWG mark in Canada, and the application has been allowed.  No Canadian decisions have considered the specific question of claiming trade-mark rights over a file extension.  However, Canadian law accords with US law on the topic of functionality.  In the Supreme Court’s famous decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), (the Lego case), the Court denied trade-mark protection for the shape of Lego building blocks on the grounds that the shape of the blocks is purely functional in nature, and thus cannot be protected as a trade-mark.

Calgary – 08:00 MT