Time to Get Out the Garbage: Trademark Office Publishes Draft Practice Notice on Cancelling Bogus Official Marks

Canada’s trademark regime is peculiar in more way than one, including because of the existence of a peculiar type of mark called an “Official mark”. This type of registration is a kind of super mark that CIPO may grant to public authorities, a legal concept that has evolved over time, including to curb the use of this type of mark by organizations , and even business, that do not qualify.

To make a long story short, though “public authorities” aren’t necessarily governmental entities per se, jurisprudence confirmed they must somehow qualify as such, by virtue of being controlled (controllable) by the government and having activities that benefit members of the public. Though the Trademarks Office (the “TMO”) now checks against this definition when issue public marks, it did not always do so and, as a result, our trademark is cluttered with these super marks, quite a few of which are legally invalid.

The problem is made worse by the fact the TMA does not provide a time limit for public marks, so that once granted they remain on the register indefinitely, in principle.

A new section the Trademarks Act (the “TMA”) now seeks to provide some relied as to this issue, by providing us with a section akin to Section 45 through which we may get rid of deadwood on the register, and which allows easily challenging dubious official marks. In essence, the TMA now provides that anyone may challenge a bogus official mark, by flagging it for the TMO, which may then strike it from the register if it was indeed obtain without right by the entity at issue.

Recently, CIPO published a draft practice notice that sets out how submitting such a request to cancel an official mark registration will work in practice. The procedure set forth in the practice notice would require the person objecting to a registered official mark to notify the TMO, pay fees, and provide some sort of evidence that the entity holding the official mark isn’t actually a governmental (or government-related) entity. If, after inquiring, it appears the mark is indeed anomalous, then the TMO may cancel it outright.

So, we’re finally getting a way to scrap bogus official marks that have been cluttering the register for years and years. Not a moment too soon if you ask me, especially given how broad the protection afforded by the TMA to official mark is, by protecting them automatically in any and all classes of products and services, in effect!

After 3 Years of the New Trademarks Act, Registrants Should Beware of Use Requirement More Than Ever

As you may remember, in June 2019, Canada enacted a whole new version of the Trademarks Act (the “TMA”) and which did away with lots of the requirements that applicants previously has to contend with. Case in point: since then, applicants wishing to register their marks in Canada no longer have to show (or even claim) they actually used their marks, merely that they want to register them.

Unsurprisingly, this lead to more than a few organizations and businesses filing applications for marks that may not have been registrable prior to 2019, back when the Trademarks Office (the “TMO”) was concerned with confirming owners actually has used their marks in Canada. As a result, the Canadian register is now filling up with more marks, part of which do not relate to trademarks that are actually being used in association with the actual products and services listed in the application. Welcome to Canadian trademark law in 2022!

Fortunately for us, one thing the TMA still does contain (about use) is a provision granting anyone the right to question whether any given registered mark was actually used in Canada, as defined by the TMA. In essence, “expungement” proceedings, described in Section 45 of the TMA, provide that anyone who pays the applicable governmental fees may trigger an inquiry by the TMO about whether the owner of the registration at issue can demonstrate it in fact used the mark in Canada, during the previous 3 years, in association with the types of products and services listed in the registration at issue. Failing to do so, the TMO can expunge (strike) the registration from the Canadien register. Now that the new TMA has been in force for 3 years, those who wish to get rid of certain recent registrations (i.e. the applications of which were filed around 2019) may start doing so in the upcoming months and years. Consequently, it seems more than likely we’ll be seeing an uptick of the number of expungement proceedings in Canada. After all, given how cheap this is, compared to actual court proceedings, it remains one of the best tool at our disposal when confronted with a trademark registration we may want to get rid of.

Though Canada’s registration system did away with lots of formalities meant to confirm applicants actually used their marks, the use requirement is alive and well in Canada. Whatever the TMA may say, the legal basis for the existence of trademarks (registered or not) does remain “use”, in Canada. As such, though a registration is useful, it’s important to understand that our jurisdiction is not like others where registration is what creates rights in a trademark. Though one may obtain a Canadian registration without use, keeping it may be trickier. Registrants beware!

Artificial Intelligence – Very Real Creations: AI as a Generator of I.P.?

With an over-expanding array of applications that rely on artificial intelligence (“AI”), we’re finding more and more ways to use them, sometimes to unexpected results. In fact, some AI applications can now even create new things in ways that are not dependent solely on choices and manipulations by human creators and operators. Yes, in today’s world, IA can now create things on its own, leaving the law to wonder what to do with that new reality. Can our legal system deal with creation of inventions or works of authorship by machines (or rather AI)?

That very question is now being asked in most jurisdictions worldwide, as we collectively try and deal with an uncomfortable realization that, maybe, we as humans are not the only ones capable of creating intangible creations that may worthwhile to protect as intellectual property (“I.P.”). Indeed, this is happening as to works like texts, images and music, and even as to what would be considered inventions, had a human been the creator. When such a creation comes about as a result of the operation of an IA program, should we acknowledge it or, instead, sweep it under the rug and hold that the humans responsible for the initial execution are the akin to the authors or inventors? We should note that this issue exists as to copyrights (as in the case of that painting) but also does for industrial designs and inventions.

A good example of that trend is the Canadian Intellectual Property Office (“CIPO”) on-going consultations as to whether we should recognize the possibility of AI acting as actual creators of other types of I.P. such as patentable inventions or works of authorship. It may be that we do what to open that door, or maybe we just want to avoid the whole mess and stick with the status quo. The jury is still out on that one… for now.

Recently, CIPO may have creaked the door opened, as it allowed the registration of copyrights to a certain painting, the authors of which are presented as a human and, yes, an IA application. To my knowledge, this is a first in Canada though it has happened elsewhere, such as in India last year as to that very painting.

So, according to Canadian copyright registration No. 1188619, the co-authors of the painting at issue are an individual named Ankit Sahni, on the one hand, and “Painting App, RAGHAV Artificial Intelligence”, on the other hand. The work of joint-authorship is thus presented on the Canadian register as resulting from the combined creative work of two entities (for lack of a better term), one of whom (which?) is a computer program.

It is not yet clear how the law can/would/will deal with this kind of factual situation, including as to what the rules are when a “thing” is named like as an author (or an inventor, if it gets to that), including who the I.P. belongs to off-hand, who can be seen as the co-author (or co-inventor) and why, whether the IA could have been named as the sole author (or inventor), etc. One could also consider to extent to which an AI application must be identified as a creator when it as involved -the same as when a human creator is involved, etc. When IA considered more than a mere tool for a human creator? As you can imagine, the potential questions abound.

Though the idea may seem simple, allowing us to consider IA as a creator or inventor does (will) lead to all sorts of consequences that we collectively would do well to think through, before proceeding.

At any rate, IA creating stuff is an inescapable reality that, one way or an other, we collectively have to deal with. Unfortunately, as every jurisdiction makes these kinds of decision without necessarily paying heed to what is being done elsewhere, we may very well end-up with an I.P. legal system that is even more messy than it currently is, as down the line some countries may allow IA as creators and some may not. As I was writing above, every jurisdiction is currently grappling with these questions.