July 17, 2019
By Tamara Céline Winegust and Catherine Lovrics
Copyright and trademarks are separate intellectual property rights. Both rights can arise in a logo. Ownership of the copyright and trademark rights in the logo can differ — one person can own the copyright and another can own the trademark rights. Often, this possible split in title is overlooked by prospective trademark applicants.
In Canada, copyright arises automatically on creation of the work. The first owner is presumed to be the author, unless the work is made by an employee in the course of employment. So, if a logo is designed by a graphic designer that is not an employee, the graphic designer will own the copyright in the logo, unless there is a written agreement assigning copyright to the person using the logo—that is, the trademark owner. Because copyright and trademark are different rights, use of similar logos by two parties could give rise to copyright infringement claims, and those claims could stand independent from trademark infringement or passing off claims.
In a recent trademark opposition, a copyright claim was successfully relied on by the opponent to demonstrate that the applicant could not have been satisfied it was entitled to register the mark when the trademark application was filed. The decision follows a line of cases from the Opposition Board that suggest that if an opponent that can prove it is the copyright owner of an applied-for logo or that use of the logo would, prima facie, infringe the opponent’s copyright, it could result in a third party’s trademark registration being denied.
The decision suggests that, before filing a trademark application for a logo, the trademark owner should confirm it owns copyright in the logo, and may wish to consider registering copyright in Canada in the logo as an artistic work. The process to secure a copyright registration in Canada is straightforward and relatively inexpensive. Unless proved otherwise, the information in a Canadian copyright registration is presumed to be true. It can therefore assist with thwarting (or supporting) claims of copyright infringement in an opposition proceeding.
The Recent Opposition Board Decision
The Trademarks Opposition Board in Pablo Enterprise Pte. Ltd. v Hai Lun Tang, 2019 TMOB 54 (“Pablo”), recently refused a trademark application for a logo on the grounds of likely copyright infringement. The Opponent, by filing a copyright registration certificate as well as printouts of its website from the Internet Archive that showed the creation of the applied-for logo predated the trademark application date, was able to demonstrate a prima facie case that the applied for mark infringed the Opponent’s copyright. The decision suggests that trademark applicants would be well advised to clear title to copyright in a design for which they seek trademark protection.
In Pablo, the opposed mark and the logo for which copyright was claimed by the Opponent, Pablo Enterprise, appeared as below:
In the statement of opposition, Pablo Enterprises advanced a claim under section 30(i) of the Trade-marks Act that the Applicant, Hai Lun Tang, could not have been satisfied he was entitled to register the trademark because the mark was an “unauthorized copy” of Pablo Enterprises’ artistic work, and therefore its use would contravene the Copyright Act because it would be copyright infringement. In support, Pablo Enterprises filed a certified copy of its copyright registration for the artistic work (which issued in November 2016, about a year after the opposed trademark application was filed in December 2015), as well as two affidavits from employees of the Opponent’s trademark Agent. These affidavits respectively discussed the filing of the copyright registration and attached printouts from archived versions of the Opponent’s website dating back to 2011 that displayed the artistic work.
Section 30(i) of the Trade-marks Act requires an applicant to state that they are satisfied they are entitled to use the trademark in Canada. The jurisprudence has developed so that trademark applications can be denied under this section where there are facts to support such statement was untrue on the date it was made (i.e., the application filing date) — typically, because there is evidence of “bad faith” in filing or use of the mark would contravene a federal statute.
In this case, the Hearing Officer found that Pablo Enterprise’s evidence supported a prima facie case of copyright infringement, and that the Applicant provided no evidence to counter this conclusion. In particular, the date or first publication claimed in the Certified Copyright Registration, which was 2011, predated the application filing date by four years. This date was supported by printouts of archived versions of the Opponent’s website that displayed the artistic work from around that time. Based on the principle that copyright protection arises on the creation of the work (i.e., registration is not necessary), the Hearing Officer concluded that copyright protection in the work would have arisen before the 2015 filing date of the trademark application — even though the copyright registration was not obtained until afterward. Moreover, the applied-for mark was found to be a “substantial copy” of the artistic work, being comprised of the identical design component, and the same font being applied to the same word “PABLO” (even though it was positioned somewhat differently).
Of note, the Hearing Officer found the evidence from the Opponent’s agent’s employee including printouts of the Opponent’s archived webpages admissible for a limited purpose, namely that the affiant located archived versions of webpages displaying the artistic work because such printouts came from a third-party website—the Internet Archive—that other Opposition Board members and the Federal Court have accepted as giving a reliable representation of websites as they existed in the past.
Prospective Trademark Applicants and Owners should take note
The Pablo decision emphasizes that copyright ownership could have a part to play in the determination of entitlement to trademark rights in design marks. This is particularly important given that copyright ownership is treated differently in Canada compared to certain other jurisdictions, like the United States. Canada does not have a “work for hire doctrine”, nor does it recognize that a corporation could be considered the “author” of a work. Both these concepts are relied on by many entities in the United States to acquire and assert copyrights. In Canada, as noted, copyright ownership is first deemed to vest in its author, with a limited exception for works created by an employee in the normal course of their employment. Consequently, when an artist or graphic designer has been hired to design a logo that will be used as a trademark, prospective Canadian trademark applicants would be well advised to have a written copyright assignment from the artist to the applicant before filing the trademark application, to avoid any claims by the artist against trademark registration in the future. As noted, it may also be worthwhile to seek registration of the copyright, since, as shown in Pablo, the information contained there, with respect to ownership and creation date, would be presumed to be true, so could be used to support the trademark applicant’s entitlement to use the design mark (or, if challenging the application, to show the applicant’s lack of entitlement).
Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.