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Intellectual Property

Drake can still claim victory in trademark flap: Kulish

Entertainer Drake can still sing a happy song despite a split decision in the court battle over the use of ‘6IX’ as a trademark, Toronto intellectual property lawyer Taras Kulish tells AdvocateDaily.com.

Kulish, a senior associate with Steinberg Title Hope & Israel LLP, says the recent trademark dispute resulted in the Toronto rapper winning the right to continue to make and sell merchandise with the ‘6IX’ brand. However, Drake was unable to stop a local DJ from using it as his moniker with respect to his entertainment services. 

The DJ claimed he has called himself 'DJ 6IX' since 2000 while lawyers for Drake countered that his company, October’s Very Own (OVO) had used it since 2014 for merchandise in reference to an upcoming album, Views from the 6IX, which was later changed to Views.

“Here is an issue over a new expression that has come into the vernacular. It came up from the underground scene to be part of mainstream culture,” Kulish says. “So it’s difficult to prove or disprove that it belonged to someone. In this case, the Trade-marks Opposition Board took the Alexander the Great approach with each side tugging at this Gordian Knot  so that they both walked away with a piece of it.”

The DJ can claim a partial victory because he can continue to use the moniker for his music services and he can put the logo on give-away promotional merchandise — but he can’t sell those items, says Kulish.

“Drake partially won because his company can continue to use '6IX' on merchandise,” says Kulish. “But in my view he also avoided a public relations hit because he didn’t put a small DJ out of business.”

Drake, who recently won a Grammy for best rap song with God’s Plan, learned how vital "due diligence” is when it comes to trademarks, says Kulish.

“It’s an important lesson for anyone who has a trademark or wants to get one,” he says. "You don’t want to start a business by using a name without registering the trademark.” 

For example, Kulish says automakers trademark their brands not only with respect to vehicles but, with respect to goods such as clothing, watches and luggage. This can prevent any upstart from infringing on their brand cache by creating merchandise such as caps and T-shirts without a licensing agreement.

In fact, that was illustrated in a Federal Court of Appeal case involving a car manufacturer's trademark, he says.

"A luggage maker had a line of tote bags and bagged marketed under the Jaguar name,” says Kulish, adding the company had registered the name Jaguar for some of its products in 1981 and extended it to more products three years later.

At the time, the car manufacturer, which had held a registration for automobiles since 1945, did not oppose the move.

It became an issue in 1991 when the automobile company applied to register the name in association with its own line of small accessories, such as wallets.

The luggage manufacturer sued the carmaker, claiming prior use and registration of the name in association with their line, and stating they’d never heard of the automaker until 1990.

"The car company ultimately won because the court ruled it was an infringement and that the manufacturer had long been established and was a ‘famous mark’ by 1980,” Kulish says.

Still, the case took 14 years to wind through the courts before the car company succeeded in striking down the luggage company’s word mark, he says, and the lesson again is to always register a trademark early and be vigilant about researching who else might be using it. 

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