What Is A Trade-mark?

Posted by Tarek Elneweihi on Jun 26, 2015 2:45:00 PM

TradeA trade-mark is a word, a symbol, a design (or a combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace. In other words, it is legal and business tool that allows you to have a unique identity in the marketplace.

 
Trade-marks come to represent not only actual wares and services, but also the reputation of the producer. As such, they are considered valuable intellectual property. A registered trade-mark can be protected through legal proceedings from misuse and imitation.tarek

A trade-mark can be any special element used to promote and distinguish your business and the services and products you sell. This means that a trade-mark could be a logo, a name, a slogan, colours, packaging or sounds.
 
You can also trade-mark a description that is not typically associated with a product or service so along as the description is not misleading and original coined terms that don’t have a dictionary definition.
 
Business and company names that are too descriptive, using words or practices that are commonly used do not usually qualify and make for weaker marks in any event.
 
Examples of well-known trade-marks include the CBC logo, Molson’s “I am Canadian” slogan, and the Vancouver Canucks logo and name that appears in the player’s jerseys.
 
As you well know, these logos, names and slogans become synonymous with each brands identity

Who can register a trade-mark?

Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trade-marks Act and Regulations.

Should you register a trade-mark?

Just as a marriage can be registered officially or remain common-law, so can a trade-mark. That means a trade-mark exists and you have legal rights around it as soon as you start using it. But, a common-law trade-mark does not offer the same legal protection as a registered trade-mark and so it is highly recommended that you register your trade-mark to ensure that you have the greatest legal protection and avoid legal issues down the road.

Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. If you wish to apply for a trade-mark in other countries, you must apply to the country in which you seek registration. 

Registration is prima facie, or “at first sight” evidence of your ownership. In a dispute, the registered trade-mark owner does not have to prove ownership of the trade-mark as it is initially assumed that the registered trade-mark is indeed the owner. It is the responsibility of the person or entity challenging your use of the trade-mark to prove that it is in fact the owner, which is difficult to do if the person or entity is not the registered owner. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it.

Consider this scenario: For the past five years you have been operating a highly successful ice cream emporium under the word “Northpole” in your home town of Nova Scotia. You have never heard of another Northpole and you have never bothered with trade-mark registration. Meanwhile, an Ontario firm has registered the trade-mark “Northpole” to identify its growing chain of spaghetti diners and home brand tomato sauce. While conducting research for a Maritime expansion plan, the Ontario firm discovers your store and serves you with a lawsuit. Depending on the facts established with the Court, this may result in a court order preventing you from using the word “Northpole.” This development couldn’t come at a worse time, since you were just planning to expand your own business. The situation could have been avoided if you had solidified your clear rights to the trade-mark through registration.

Keep in mind also that a registered trade-mark is a valuable asset for business expansion through licensing franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.

How to file an application to register a trade-mark

To apply for a trade-mark registration, an application is filed together with the appropriate documentation and fee to the Canadian Intellectual Property Office (CIPO). The application undergoes stringent examination to ensure it meets the requirements of the Canadian Trade-marks Act

Trade-Mark agents

Preparing a trade-mark application and following through on it can be a complex task, particularly if a third party challenges your right to the mark. You may file on your own, but it is highly recommended that you hire a trade-mark agent to do so on your behalf.

In order to become a trade-mark agent, a Canadian resident must have worked in the field of trade-marks for at least 24 months, and have passed the qualifying examination. A resident of Canada who is a barrister or solicitor, or a notary in the Province of Quebec, may become a trade- mark agent by passing the qualifying examination or working in the area of trade-mark law for at least 24 months.

An experienced, competent trade-mark agent who is well-briefed can save you problems caused by such obstacles as a poorly-prepared application or inadequate research. If you intend to register marks in other countries, the use of a trade-mark agent is even more strongly recommended.

 

 


Tarek Elneweihi

    • Associate
    • Musician and music producer handling litigation files and entertainment contract
    • Called in BC (2013)
    • tarek@arenaltman.com

 ALTMAN & COMPANY | Business and Entertainment Law Suite #202 – 2245 West Broadway Ave., Vancouver BC V6K 2E4 | 604-563-1191 | info@arenaaltman.com | http://www.arenaltman.com/

Tags: Altman & Company, Trademark, How to trade-mark, Tarek Elneweihi, Trade-Mark, What is a Trade-Mark

Blurring the Lines of Music Infringement Law - Three Perspectives in One

Posted by Jeff Young on Jun 17, 2015 12:59:23 PM

Jeff_YoungFor many years of my life, I have had the pleasure of enjoying three simultaneous careers. I am a senior member of the Bar of British Columbia, Canada focusing on entertainment law, I am a member of the State Bar of California, USA, regularly dealing with my colleagues in Hollywood, and I am a music producer and composer with a current co-write on the radio and a cue on a currently airing TV show. Very rarely does a legal case affect me in all three of my careers at once. The recent music infringement lawsuit between the Marvin Gaye estate vs Robin Thicke and Pharrell Williams over the songs Got to Give It Up (by Gaye) and Blurred Lines (by Thicke/Williams) does exactly this. As a result, I thought it would be interesting to present my commentary from all three of these perspectives, separately.

From the American lawyer’s perspective

The general understanding among attorneys practicing music law in America is that a composition infringes on another when there are substantial similarities between the melodies of one song versus that of another. The precedent setting cases have all generally ruled that similarities in chord progressions and general rhythmic feel – or as some would call it, the “groove” – does not constitute infringement. You need to have melodies that sound alike. In fact, mere similarities in the groove of a song is usually considered a genre. There is no copyright in a genre and there is no copyright in a chord progression.

In comparing Blurred Lines and Got to Give It Up, there is clear evidence that Thicke and Williams meticulously copied the groove of Got to Give It Up. There are also some similarities in the bass line of the two songs, but those similarities do not seem substantial. On a pure legal analysis, it would not seem like this was a case of infringement. However, the case went to a jury, who may have been influenced by the apparent bad attitude and demeanor of Robin Thicke in court. Also, no one in the public has seen the musicologist reports that stated that there was in fact compositional infringement, not just a copying of a feel, groove or genre. Furthermore, jury decisions only decide individual cases based on fact. No reasons are delivered and technically, no legal precedent is set. The message to any disgruntled music creator is that regardless of the existing law and established precedents, if you take an infringement case to a jury, you may still win if you can convince them there was some form of copying, regardless of what aspects were copied and what the legal precedents say to the contrary.

What does the American music lawyer typically say when asked by a client who wants advice on what they can do before going into the recording studio? Prior to this decision, the advice given would be that the client can copy a feel, groove or genre, but you cannot copy melody lines, hooks (or lyrics, if any). Following this advice, the client is told that they will likely going to avoid a lawsuit because prior cases have held that it is reasonable to assume that we are all influenced by the feel, groove and genre of the music that we listen to and like, and that alone does not amount to an infringement. Now, while the American attorney can still technically say that the law really hasn’t changed, he or she will now have to further advise the client that any disgruntled music creator can still file a lawsuit, choose a jury trial, and convince the jury that there is infringement anyways – particularly if that client isn’t liked by the jury.

I have always believed that certain issues such as music copyright infringement should not be submitted to juries because juries lack the legal training necessary to make the correct legal decision. There is a tendency to ignore established law and go with what seems intuitively right based only on the facts, and decide accordingly, sometimes even when the judge’s instructions are otherwise. That leads to bad law. Juries in America are not obliged to give reasons, so we will never be able to tell if they understood what the law really was to begin with. This kind of uncertainty is scary. Really scary.

From the Canadian lawyer’s perspective

Canadian music lawyers will likely never face a case like this one. Music infringement cases are not decided by juries in Canada. They will be decided by judges who must provide legal reasons that at least can be appealed if the reasons appear incorrect. Also, an American trial jury decision with no reasons provided has no legal weight as precedent in Canada. So as a Canadian music lawyer, if a client asks me how to avoid infringement, I would still advise that you can copy a feel, groove or genre, but avoid copying melody lines (and lyrics, if applicable) and you are likely going to avoid a lawsuit because we are all influenced by the feel, groove and genre of the music we listen to and like the most. However, most clients that come to me in Canada don’t just want a Canadian hit. Their dream is to have a hit in America on American radio. Therefore, it would not make sense for Canadian lawyers to completely ignore the Blurred Lines decision. In other words, while this decision has no formal effect on Canadian law, it will likely have some effect on Canadian music creators, especially those whose creative works cross the border, and it would be unwise for a Canadian entertainment lawyer to not point that out.

What is the result for Canada? Well, we now have one single jury in America rendering a decision (a decision involving their own interpretation of music law that they do not have to provide reasons or account to anyone else for) likely affecting the future behavior of most of the music creators in another country for a long time to come, even though the laws of their own country does not require them to behave that way. Bizarre.

From the Producer’s and Composer’s perspective

In the film industry, scripts are reviewed, potential infringements are identified, and the resulting clearance reports get sent to entertainment lawyers to review and to render opinions as to whether changes to the scripts are needed. This is all part of the “errors and omissions” process that because of the history of lawsuits in that industry, has become common and standard, if not virtually mandatory. Basically, the lawyers have to tell the filmmakers what is allowed on the screen, or not.

This “clearance process” also happens, in a lesser degree, with books. Literary publishers often retain lawyers to engage in a “libel read” of a book to identify possible legal risks before the book is released, and sometimes, risky portions of the book are edited out.

If the results of the Blurred Lines case continue in future jury decisions in this manner, the state of legal uncertainly may become such that major labels releasing records may become so concerned that they will have to adapt a similar process for the music industry. After all, this case resulted in verdict of over $7 million!

In other words, the “clearance reports” will have to be done by qualified musicologists who will review the entire album and identify potentially infringing phrases or “hooks”, and then submit those musicology reports to entertainment lawyers who will then render opinions on what can be left in and what has to be removed.

If this sounds ridiculous, I would remind you that I’m sure this seemed as ridiculous to filmmakers and book authors of past eras, but lawsuits in those industries have now made clearances commonplace. Basically, lawyers will have to tell the music producer what is allowed on the records, or not.

I’m not sure I would ever like this – even if I’m the lawyer clearing my own work!

As a composer, I am often asked by film directors to create “sound-alikes”, especially when the film is independently made and there is no budget to license a major hit song. A “sound-alike” is a music cue that copies a feel, groove or genre, but does not copy melody lines (or lyrics, if applicable) in order to avoid a lawsuit. Now, in view of the Blurred Lines case, this approach may not work anymore. Some questions that arise for the music composer: Is it reasonable to force all of these independent films to only license the hit music track when the director is only looking for a similar feel, groove or genre? How will these multi-million dollar awards affect the future careers of upcoming composers if they are living in fear of lawsuits for everything they try to create with an established feel, groove or genre?

In Conclusion

The Blurred Lines this decision introduces significant uncertainty into music infringement laws. This uncertainty is aggravated by the fact that juries are not required to render reasons for their decisions.

It is my understanding that Thicke and Pharrell have filed an appeal of this decision. I sincerely hope that the appeal will succeed at least in part – specifically, from the point of getting clarity on the legal principles involved.

I am much more concerned about that than which side winds up with the $7M. I just want the lines of music infringement law to be less blurred!

--------------------

JEFF YOUNG
- The Lawyer's Lawyer
- Educator and formerly practiced in-house with VANOC and UBCP
- Music Producer, composer and expert snowboarder
- Called in BC (1988) and California (2010)

Jeff Young, J.D. | Barrister & Solicitor | Trademark Agent (Canada and US) jy@arenaltman.com | Direct: 604.563.1192 Member Law Society of British Columbia, Canada | Member State Bar of California, USA (inactive) ALTMAN & COMPANY | Business and Entertainment Law Suite #202 – 2245 West Broadway Ave., Vancouver BC V6K 2E4

Tags: music insurance, E&O Insurance, Altman & Company, Jeff Young Lawyer, Entertainment Law, Marvin Gaye Lawsuit, Music Infringement, Film E&O, Jeff Young Attorney, Music Infringement Laws

Recent Posts

Posts by Topic

see all