Trademark  Decisions

Registrar’s decision refusing to register LIGHTRECYCLE & DESIGN unreasonable, but the proposed mark was still found to be clearly descriptive
Product
Care Association v. Canada (Attorney General), 2015 FC 284

Product Care Association had applied to register a proposed trade​mark for LIGHTRECYCLE & DESIGN. The examiner found this was “clearly descriptive” of the services it would be associated with, namely, a recycling programme for lights and dissemination of information in the field of recycling lighting products. The proposed mark was rejected.

On appeal to the Federal Court, new evidence was led that identifies some of Product Care’s members, dictionary definitions of LIGHT, and Google searches, but this was not found to have affected the decision made by the Registrar. Thus the appeal was assessed on the reasonableness standard.

The Federal Court found the Registrar’s analysis to be unreasonable, but still found that the proposed mark could not be registered for being clearly descriptive. The Court found that “light” can also refer to the weight of an object, and so it was found to be unreasonable
to conclude that the word portion of the trademark proposes use in recycling light bulbs. However, considering the mark as a whole, including the lightbulb design element, the Court found the mark clearly descriptive and not registrable.

Copyright  Decisions

Downloads of ringtones and ringbacks are not a communication to the public subject to a Tariff
Rogers Communications Partnership v. Society of Composers, Authors and Music Publishers of Canada, 2015 FC 286

This was a dispute over a tariff requiring Rogers to pay royalties to SOCAN in respect of ringtones and ringbacks (Tariff 24) as a communication of a musical work to the public. Tariff 24 had previously been the subject of litigation between the parties, with SOCAN being the successful party. Rogers argued that the Supreme Court’s 2011 decisions relating to downloads of musical  works and downloads of video games containing musical works overturned the earlier litigation and would apply to ringtones as well.

The Court held that although the Federal Court of Appeal had already decided this issue in earlier litigation, the Board always has the power to vary its royalty decisions. In effect, the Court found that a decision of the Board is never really final.

Following the SCC jurisprudence, the Court held that the download of a ringtone was a reproduction, not a communication, of a musical work. This meant that Tariff 24 became unenforceable after the SCC 2011 decisions. Royalties paid before the change in the law were not required to be repaid and SOCAN was not found to have been unjustly enriched, because there had been a juristic reason for the payments.

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Authors

Chantal Saunders 
CSaunders@blg.com
613.369.4783

Beverley Moore 
BMoore@blg.com
613.369.4784

Adrian J. Howard 
AJHoward@blg.com
613.787.3557

Expertise

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Intellectual Property Litigation
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