“My client, a Toronto-based music producer and DJ, has been using the name in association with DJ services as far back as 2000,” Simpson tells AdvocateDaily.com. “We ultimately succeeded with his trademark application for DJ services despite opposition from Drake's company, October's Very Own (OVO).”
Simpson says many people are familiar with the term "the Six" or "the 6" — which has become a moniker for the City of Toronto as coined by the Canadian rapper and entrepreneur in 2014.
“It may have come as a surprise that when OVO — which produces clothing, music and promotes concerts — tried to register the mark for various goods and services, they found someone already had this pending application,” he says.
Simpson, principal of IP and new media law boutique Shift Law, says the company opposed the application, presumably assuming it was going to be an easy matter because the term is strongly associated with the rapper.
“While my client wasn’t using the mark on the same scale as Drake or in the same context, this matter highlights that trademark rights are based on first use rather than how famous you are,” he says.
The opponent company pleaded that the mark “6IX” was not distinctive of the applicant’s services, but Trade-Mark Opposition Board Member Cindy R. Folz found there was a lack of evidence showing “6IX” used in association with DJ or other similar services.
Simpson notes this case is also a good example of the importance of evidence in opposition proceedings.
"They didn't have any evidence the mark was diluted, and they certainly didn't have any evidence that Drake had been using it before my client in association with DJ services. The company also made a number of arguments that my client’s use of ‘6IX’ had changed over the years, and some other technical aspects they didn't succeed with,” he says.
Simpson says OVO was successful in opposing his client’s use of the mark with respect to promotional goods such as T-shirts and other athletic apparel. However, he says there are often disputes and uncertainty around whether promotional items count as trademark usage.
“There was evidence that my client had been giving out T-shirts at shows with his name on it. As the law is right now, using a mark on collateral items to promote some other service is not trademark usage.”
He says the goods were used to promote another service so they lost on that point — although not because the rapper was using it but rather because you can't register for something you're not using.
“However, my client is now entitled to the exclusive use throughout Canada with ‘6ix’ in association with DJ services — and that is of some value,” Simpson adds.