February 5, 2019
If you represent Drake’s company, October’s Very Own IP Holdings (OVO), and you’re opposing registration of the trademark “6IX” by a local Toronto DJ, and you think it’ll be a slam dunk because Drake (the Raptors’ global ambassador) has been synonymous with the 6IX since the 2014 announcement of his original album title Views from the 6 — think again!
According to John Simpson, the lawyer representing Toronto DJ Michael Di Cosmo, “Just because Drake is a big deal and everyone thinks he’s the 6IX, that doesn’t mean the board (or a court for that matter) will take judicial notice of that fact — you still have to prove it.”
And that is precisely what OVO set out to do, when it opposed Di Cosmo’s application to register the “6IX” mark for both goods and DJ services before the Trademarks Opposition Board of the Canadian Intellectual Property Office (CIPO). CIPO released its decision in December 2018.
OVO opposed Di Cosmo’s application on two grounds: 1. “6IX” is not distinctive of Di Cosmo’s goods and services, and, 2. Di Cosmo did not use the mark in association with goods and services and therefore did not comply with s. 30(b) of the Trade-marks Act.
On the first argument, OVO’s team submitted some general evidence (including printouts of instances where “6IX” is mentioned on the Internet) to support the view that the term “6IX” is well understood in the Toronto area to mean the 416 area code; i.e., the city of Toronto. But the board was not convinced.
According to its decision, OVO had not shown that any third party “6IX” trademarks had become known in Canada sufficiently to negate the distinctiveness of Di Cosmo’s mark in association with DJ-related services. Di Cosmo presented evidence to the board which included flyers and advertisements distributed over the years, identifying him as “6IX” in relation to his live DJ performances and pre-recorded DJ mixes, long before Drake ever made the phrase famous.
The board found this evidence of Di Cosmo’s “use” with DJ services persuasive and, as a result, OVO’s opposition to the mark for lack of distinctiveness failed.
Unless OVO appeals, once Di Cosmo pays the $200 registration fee, he will have the exclusive right to use the “6IX” trademark throughout Canada in association with the performance and promotion of DJ services. (He can add the official ® symbol to his flyers!) And, importantly, he can prevent any use by Drake and others of the “6IX” mark in connection with DJ and related music services.
That said, this was only a partial victory for Di Cosmo because OVO successfully opposed Di Cosmo’s application on the second ground of opposition, convincing the board Di Cosmo’s depiction of the mark on branded goods such as T-shirts, hats and other items, did not constitute use under the Act.
In the board’s view, Di Cosmo’s free distribution of T-shirts and other promotional items to people who either attended a gig, entered a contest or “liked” his Facebook page, was not, technically, use of the mark with goods intended to make a profit within the “normal course of trade” as required under s. 4 of the Act and the relevant jurisprudence (See Bremont Watch Co. v. Bremont Homes Corp., 2016 TMOB 100; and Riches, McKenzie & Herbert LLP v. Cosmetic Warriors Limited, 2018 FC 63).
Notably, in this context (but likely too late to help Di Cosmo), the Act will be amended on June 17, 2019, to remove the requirement to “use” a mark before it can be registered. Although some worry that this change could lead to a rise in “trademark trolling” in Canada. For example, Brandster Inc. has already filed hundreds of applications in Canada covering all 45 classes of goods and services.
In the U.S., a company owned by Mike Lin, the self-proclaimed “Banksy of trademarks,” has filed applications (since abandoned) for “nasty woman” (inspired by Donald Trump’s comment to Hilary Clinton) and countless other marks relating to celebrities such as Kobe Bryant (“The Black Mamba”), Jay-Z (“99 Problems”) and Beyoncé (“Poison Ivy Park”), often forcing celebrities to litigate or negotiate to settle the trademark claim.
That said, if there’s an infringement, and trademark holders want to enforce their registrations, there will be a new requirement in the Act for registrants to show use of their marks within the first three years of registration.
While Di Cosmo is clearly not a troll — he was using the “6IX” mark long before Drake came on the scene — there may be some valuable lessons from his case. As any trademark professional will tell you: file your trademark application early, before use, include a “wish list” of goods/services in the application and check the registries regularly for “trolling” applications you may need to oppose.
As for OVO, instead of appealing the unfavourable portion of the board’s decision to the Federal Court, or simply accepting the limitation on its use of the “6IX” mark, OVO could buy Canadian trademark exclusivity from Di Cosmo.
For celebrities like Drake, it may be preferable to avoid pricey, protracted and public litigation when, for the right price, OVO could acquire the exclusive Canadian trademark rights, or a licence, that would allow the “6IX” mark to take its “rightful” place in Drake’s OVO empire, alongside his “6IX” branded T-shirts and caps, his “love-6IX” song lyrics and his much-cherished key to the City of Toronto.
This article originally appeared in the January 31, 2019 issue of The Lawyer’s Daily published by LexisNexis Canada Inc.
Author: Tara Parker