• Goodbye Floppy Disk, Hello Streaming Video: Trademark Evolution, Part 2
  • March 7, 2018 | Author: Richard Stobbe
  • Law Firm: Field Law - Calgary Office
  • Technology certainly evolves. Can a trademark do the same?

    In the world of intellectual property rights, a registered trademark can live on for a hundred years or more. If you registered a trademark in the 1800s, it could still be valid today. But will the underlying product be delivered to customers the same way?

    The mark CARTER’S, registered in Canada in 1899, for “Stationer's supplies, namely pens, inks, marking pens,” is still a registered mark in Canada today. This is a product category that has proved durable over the decades, despite all the advances in technology. In other cases, whole product categories can disappear altogether, as with this wonderfully ornate Copenhagen Design mark which was registered in 1878 in association with “snuff”:

    Or the modern S-design brand of the Stone Straw Corporation which was registered as a trademark in 1950 in association with paper rolls for ticker tape and teletype. Let’s face it: Some shifts in technology cannot be survived.

    In Trademark Evolution: Part 1 (When Trademarks Change) we looked at the changes that happen to the trademark itself, as a brand shifts over time to respond to consumer tastes, fashion, or style.

    However, even if a brand remains unchanged over time, technological advances can change how the product is delivered to consumers in association with that brand.

    • In Canada, the court recognized this concept in the 1980s in the decision in BMB Compuscience Canada Ltd v Bramalea Ltd. (1988), 22 CPR (3d) 561 (FCTD). In that case, BMB applied to register the mark NETMAIL in association with a computer program. But the NETMAIL product was not sold as a physical object, and courts have recognized that software vendors can experience “unique difficulties” when attempting to associate a trade-mark with its software, since there is no label, packaging or hang-tag, as with other types of goods. The court in BMB Compuscience was prepared to take a flexible approach and permit a software vendor like BMB to demonstrate “use” of its mark for the purposes of the Trade-marks Act where the brand was shown on a computer screen during product demonstrations.

    This concept was more recently applied in Davis LLP vs. 819805 Alberta Ltd., 2016 TMOB 64, a Section 45 challenge to the registered trademark BIBLIOTECA. The mark BIBLIOTECA was registered in association with certain software “goods”. The goods were described as “Computer software, namely a computer database containing information for use in the field of building design and construction.” However, during the relevant period, the database was accessed by customers as part of an online service, without the sale of any tangible or physical product. The BIBLIOTECA decision adopted the reasoning in BMB Compuscience to allow the trademark owner to demonstrate “use” of the mark in ways that reflected technological changes in the way this product was delivered to customers.

    • In the United States, the USPTO is running a pilot program to allow amendments to identifications of goods and services in trademark registrations due to changes in technology, including many cases where floppy disks and cartridges are being updated to reflect online streaming. For example, the mark PHOTODISC, owned by Getty Images, was originally registered in association with stock photography “contained in digital format on CD-ROMs.” Through the amendment process, Getty Images is proposing an amendment to reflect the changes in how its stock photo products are delivered: “in digital format on electronic or computer media or downloadable from databases or other facilities provided over global computer networks, wide area networks, local area networks, or wireless networks…”

    Perhaps the best reflection of this is the US registered mark for THE MARCH OF TIME, used in association with newsreels and originally registered in 1935. Embedded in the original trademark application is a description of the technological breakthrough of allowing motion pictures to be broadcast with sound: “motion picture films for use in connection with synchronized apparatus for simultaneously reproducing coordinated light and sound effect.”

    Sadly, this piece of history is now being replaced with the bland description “Providing non-downloadable online videos featuring historical newsreel.”

    Snuff, ticker tape, and synchronized apparatus for simultaneously reproducing light and sound, is now replaced with vaping, texting and non-downloadable online videos.