Product Care Association v. Canada
(Attorney General), 2015 FC 284 Product Care Association had applied to register a proposed
trademark 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 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. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Trademark Decisions
Registrar's decision refusing to register LIGHTRECYCLE
& DESIGN unreasonable, but the proposed mark was still found to
be clearly descriptive
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
ARTICLE
25 March 2015
Registrar’s Decision Refusing To Register LIGHTRECYCLE & DESIGN Unreasonable, But The Proposed Mark Was Still Found To Be Clearly Descriptive (Intellectual Property Weekly Abstracts Bulletin – Week of March 23, 2015)
Product Care Association had applied to register a proposed trademark for LIGHTRECYCLE & DESIGN.