Law Times

LAW TIMES COVERING ONTARIO'S LEGAL SCENE | FEBRUARY 11, 2019 5 www.lawtimesnews.com BY AIDAN MACNAB For Law Times SNOOP Dogg's logo could be counter to Cannabis Act mar- keting rules, says David Lipkus, a partner at Kestenberg Siegal Lipkus LLP and trademark agent. The Toronto Maple Leafs have opposed a trademark owned by celebrity Snoop Dogg's cannabis brand, but apart from its alleged similarity to the team's logo, the brand, on its own, may also fail to be com- pliant with Canada's regulations governing the marketing of can- nabis products, say IP lawyers. The Cannabis Act prohibits marketing that appeals to mi- nors or has a direct or indirect endorsement or testimonial. "That, to me, is celebrity en- dorsement," says Lipkus. "I don't know how that issue will be overcome by the appli- cant." Neil Milton of Milton IP in Ottawa says there has been a "crazy f lood" of people register- ing cannabis marks, but these marks have little value given the regulations, which prevent companies from displaying them nearly anywhere. "Our current cannabis leg- islation essentially shuts down your ability to use these trade- marks. You can't market and advertise with it," he says. "So, are you going to spend hundreds of thousands of dol- lars on a brand that you can't even really use? You can't put it on a billboard. You can't adver- tise it. You can't sponsor a film festival. All you can do is put it in four-point font on a package that's behind a counter." Filed to the Canadian In- tellectual Property Office in June 2016 by Calvin Broadus (known as Snoop Dogg) using Bennett Jones LLP as an agent, the logo in question is a seven- pointed, neon-green marijuana leaf with capitalized white text reading "LEAFS BY SNOOP" within. Following the approval of a trademark, it is advertised in the trademarks journal and the public is given 60 days to oppose the application. Maple Leaf Sports Entertain- ment sought an extension of time to consider filing an oppo- sition and filed its opposition in September 2018. Lorne Lipkus, a founding partner at Kestenberg Siegal Lipkus LLP, says that if LEAFS BY SNOOP gets past the can- nabis advertising regulations, the trademark issue will rest on whether the logo is "confusingly similar" to the Toronto Maple Leafs logo to a "casual consum- er." "The test involves whether a casual consumer — somewhat in a hurry — is going to look at that and associate the source of the product to someone that has a registered trademark, in this case being the Toronto Maple Leafs," he says. "It's a very low threshold," he says. "Is it likely to cause confu- sion in the mind of the average consumer? Interesting question, here, is whether the average consumer is sober or stoned," says Milton. This dispute is the first of many involving trademarks where a company will take is- sue with their brand resem- bling that of a cannabis product, which they believe will give the consumer a negative reaction because of the association with a formerly illegal drug, he says. MLSE is arguing that its grammatically incorrect spell- ing of "Leafs" is unique, as well as the fact that the word ap- pears against a leaf-shaped background. David Lipkus says the combination of the spelling and position of text on a similar background is the "key issue" to whether consumers can be ex- pected to wrongly assume the Toronto Maple Leafs are some- how associated with this canna- bis product. Snoop Dogg also registered another mark — the word mark "LEAFS BY SNOOP" — which MLSE is also opposing. Another identical word mark, registered in October 2016, was made by Craig Lewis of Sainte-Anne-de- Bellevue, Que. and was volun- tarily abandoned. The marks were filed at dif- ferent times. On the logo, Snoop Dogg has until October to file a coun- ter statement, and on the word mark, he has already done so. For the latter, MLSE has until April 14 to file evidence. David Lipkus says the "real battle" over this trademark dispute will be- gin once both parties have filed their claims and will see the evidence on which the other is relying. David Lipkus predicts either the dispute results in a resolu- tion between parties or Snoop Dogg and his brand will aban- don the trademark. If the fight goes the distance, the entire opposition proceed- ing could take up to three years to complete and then it can be appealed to the Federal Court and then the Federal Court of Appeal if the parties remain un- satisfied. "This can be a very, very lengthy, expensive battle be- tween the parties," he says. LT David Lipkus says musician Snoop Dogg's logo could be counter to federal Cannabis Act marketing rules. 'Flood' of people registering cannabis trademarks Leafs in dispute with Snoop Dogg NEWS Visit gpllm.law.utoronto.ca Questions? gpllm@utoronto.ca Master the law. Canada's leading law school offers a graduate degree in four unique streams: Business Law Canadian Law in a Global Context Innovation, Law and Technology Law of Leadership Apply today. Untitled-1 1 2018-05-10 10:52 AM

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