Drake’s “6IX” trademark dispute shows why trademark protection isn’t just about popularity. In Canada, first use, timing, and a clear trademark strategy can determine who actually owns the rights to a brand.
Your brand, logo, and design play a critical role in your corporate identity. They influence culture, recognition, and loyalty among customers and fans. But how do you protect these builders and symbols of brand identity? Often, it starts with 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?
The “6IX” dispute is a reminder that trademark law can produce unexpected outcomes when strategy and timing are overlooked. Here's what Drake's trademark problems can teach you...
Before getting into the details of the dispute, it helps to level-set on what a trademark actually does. A trademark allows customers to recognize your brand and distinguish it from others in the marketplace. It can be a name, logo, phrase, design, symbol, or even a sound, as long as it identifies the source of goods or services.
In practical terms, trademarks protect the brand elements people associate with your business. As that recognition grows, so does the value of the trademark itself.
In mid January 2019, October’s Very Own IP Holdings (“OVO”), a company of Toronto’s famous rapper Aubrey "Drake" Graham, lost its Canadian trademark over the use of the word “6IX” to Michael Di Cosmo, a little-known DJ who had been using "6IX" in connection with his own performances.
Drake popularized “the Six” (often stylized as "6IX”) as a nickname for his hometown Toronto, so it was shocking to many to discover that the outcome of the lawsuit was not in Drake’s favour.
Michael Di Cosmo was the first to file a trademark application for “6IX” covering 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 a wide range of clothing and products, wholesale and retail store services, as well as musical and entertainment services, and opposed Michael Di Cosmo’s trademark application.
|
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. |
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 changed significantly on June 17, 2019. Trademark applications no longer require applicants to declare a date of first use, and use is no longer required to obtain a registration. While this change simplified the application process, it also introduced new risks.
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.
|
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. |
Stratford helps organizations take a strategic, proactive approach to trademark protection as part of a broader intellectual property portfolio. If you have not reviewed your trademark strategy recently, it may be worth taking a closer look to ensure your brand is properly protected as your business grows.
You May Also Be Interested In: Canadian Trademark Law is Changing. Are you Ready?
|
A registered trademark agent in Canada, Kim Capiau is an IP Specialist with a unique combination of skills, education, and assets with a drive for success and a passion for Intellectual Property. Working with growing organizations for many years she’s honed her ability to be both creative and strategic with IP solutions and strategy implementation plans. She specializes in IP analytics and Trademark Strategy and Prosecution. Before becoming an IP specialist at Stratford, she practiced law in Belgium for 5 years. Kim holds an LLB and LLM in law from Belgium and followed trademark studies at McGill University. |
This article was published more than 1 year ago. Some information may no longer be current.