What Drake can teach you about Trademark law

by: Kim Capiau

Your brand, logo, design is very important for your corporate image. It can be a driver of culture and an identity for your clients and fans. But how do you protect these builders and symbols of brand identity? By obtaining a trademark registration. Seems simple right? So how did mega-star Drake get caught up in Trademark legislation over “6ix” and lose the trademark to a small little-known DJ?

First, let’s explain what a trademark is. Trademarks are letters, digits, words, images, even sounds, symbols or a combination thereof, that you can use to distinguish your business’ goods or services from those of others.

In mid January 2019, October’s Very Own IP Holdings(“OVO”), a company of Toronto’s famous rapper Aubrey Drake Graham, lost his Canadian trademark over the use of the word “6IX” to Michael Di Cosmo, a little-known DJ. Drake popularized “the Six” (often written as the “6IX”) as a nickname for his hometown Toronto so it was shocking to discover that the outcome of the lawsuit was not in Drake’s favour. 

So, what happened and how could this happen in your organization?

Michael Di Cosmo (the little known DJ – at least that was the case before the law suit) was the first to file a trademark application for “6IX” for the goods clothing and DJ services with the Canadian Intellectual Property Office in 2014. OVO (Drake’s company), filed the same trademark at a later time, for wide range of clothing and products, wholesale and retail store services, as well as musical and entertainment services, opposed Michael Di Cosmo’s trademark application.

Awesome you filed the trademark application – but who used it first?!

When the case came before the Trademark and Opposition Board the balance tipped in Di Cosmo’s favour when he successfully proved that he has been using “6IX” continuously in his DJ performances since 2000 – which was unfortunate for Drake since it was before OVO did.

The Trademark and Opposition Board would not allow OVO to register this trademark for musical and entertainment services; however, it could still be allowed to use the “6IX” on everything from t-shirts to hoodies to hats. Di Cosmo still has the possibility to oppose OVO’s application but it remains to be seen whether he will do so.

How changes to the Canadian Trademark law coming this June could’ve benefited Drake – or made it worse.

In the “6IX” dispute, proof of the “date of first use” of the trademark was decisive for who will be able to register the Canadian trademark.

Canadian trademark law is going to change significantly on June 17, 2019 when applications will be simplified on the requirements surrounding “use”. In June, trademark applications will no longer need to identify a date of first use of the trademark. In other words, use will no longer be required in order to obtain a trademark registration in Canada. This simplification opens the doors for trolls and squatters to register a trademark and demand payment or threaten litigation against companies adopting similar trademarks. It could also apply to trademarks used by brand owners in other countries by forcing these owners to negotiate with the trolls when they enter the market in Canada.

These changes have the potential to make trademark searches more complex and costlier while leaving organizations open to an increase in litigation proceedings. All is not lost, as it will still be possible to oppose an application, and block registration, based on prior use of the mark.  Additionally, we’ll still have the ability to request cancelling a registered trademark from a third party based on non-use if the party fails to prove that they used the trademark in a period of 3 years after registration.

Don’t be Drake – Register your trademark promptly!

If you are using (or going to use) a logo and/or brand identifying mark in Canada it is important to file a trademark as soon as possible. Legitimate trademark owners who do not register their brands in Canada, risk having a troll register it first, especially in cases where a trademark has a reputation abroad but not in Canada.

Your intellectual property shouldn’t be a reactive process. Understanding how to proactively leverage your trademarks and other IP can be a huge competitive advantage. If you haven’t looked into an Intellectual Property Strategy, it may be worth considering.

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