Canada: Views About Drake's 6IX Trademark Dispute

Last Updated: February 5 2019
Article by Tara Parker

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., and 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.

The author would like to thank Amalia Berg, Partner, and Daniel Seidman, Articling student-at-law, for their assistance in preparing this article.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions