UDRP Decisions UP, CDRP Decisions Down

The National Arbitration Forum (NAF), a leading dispute resolution service provider for domain name disputes, reports that the number of dispute resolution proceedings it handled involving domain names rose significantly in 2006, with a 21% increase over the number of disputes that it handled in 2005. The majority of cases involved domain names with the popular .com, .net, .org top level domains, which are handled under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Contrast that with the situation in Canada, where the number of CDRP (Canadian Internet Registration Authority Domain Name Dispute Resolution Policy) decisions in 2006 handled by all dispute resolution service providers involving the .ca country code top level domain actually fell from the number of such decisions in 2005, despite the continuing and increasing growth in the number of .ca domain name registrations.

Keep in mind that NAF also handles disputes over other less popular top level domains, such as .biz, .info, .pro and .mobi, as well as a number of country code domains, including .us, .tv and .cc (but not .ca domain names), which may account for some of its increased activity, however the bulk of its work continues to be disputes under the UDRP.

Update on CIRA’s new WHOIS Policy

From the Minutes of the Canadian Internet Registration Authority (CIRA) Board of Directors Meeting held January 30, 2007:

“6. Update on WHOIS

K. von Arx updated the Board of Directors on the WHOIS implementation plan noting that staff had finalized the amendments and additions to CIRA’s Policies, Rules and Procedures necessary to implement the WHOIS privacy protections for individual Registrants. The technical implementation of the WHOIS, namely ceasing to display personal information of individual Registrants in the WHOIS, cannot proceed until the technical staff has time to analyze the amount of work required. The analysis will be prepared by March 2007 once the Membership Authentication project and changes to the Election software are completed.” 

See our posting of August 22, 2006 which discusses the proposed changes to CIRA’s WHOIS policy and the implications of those changes. From the above Board minutes, it sounds like this will become reality in the next few months.

Parodies of Canadian Trademarks

An earlier blog reported that the organizers of the Beijing 2008 Olympic Games have threatened legal action against pranksters who mock the Olympic brand through the use of spoofs or parodies on the Internet.

We do not propose to comment on trademark law in China. However, a review of the Canadian law indicates that in the Canadian trademark context, legal actions against pranksters poking fun, even with malice, are not likely to be successful. The Canadian Trade-marks Act is of little assistance if the pranksters do not use the marks for a commercial purpose or if the marks have been humourously altered to the extent that it is apparent to the average person that the parodies are not the work of the trademark owners.

In bringing an action the trademark owner must prove that there has been, pursuant to section 22 of the Trade-marks Act (the “Act”), a depreciation of the goodwill attaching to the owner’s registered trademark. Given the wording of section 22, there must also be commercial use of the mark.

In the leading case of Cie Générale des Éstablissements Michelin-Michelin & Cie v. C.A.W. – Canada (1996), 71 C.P.R. (3d) 348 (F.C.T.D.) (“the Michelin case”), the defendant attempted to unionize the workers of Michelin North America (Canada) and handed out pamphlets to employees parodying the Michelin corporate logo, namely the Michelin Tire Man, a beaming marshmallow-like rotund figure composed of tires. The pamphlets depicted a broadly smiling Michelin Tire Man with arms crossed, his foot raised, seemingly ready to crush underfoot an unsuspecting Michelin worker together with the caption, “Bob, you better move before he squashes you”.

The Court held that handing out pamphlets to recruit members into a trade union did not qualify as a commercial activity (i.e. use in association with wares or services) under section 4 of the Act. Moreover, the use of the trademark as a parody could not be said to depreciate the goodwill of the registered mark under section 22 because the menacing depiction was not likely to confuse the average customer that the altered mark originated with the registered owner. It is worth noting, however, that the plaintiffs were successful with their claim of copyright infringement in respect of which the Court ruled that parody was not a form of criticism, a defense to copyright infringement under what is now Section 29 of the Copyright Act.

The Michelin case was followed in British Columbia Automobile Assn. v. Office and Professional Employees’ International Union Local 378 2001, BCSC 156. This was another labour relations situation where the Court ruled that the use by the defendant of the plaintiff’s trademark for the non-commercial provision of information on the Internet did not constitute depreciation of the goodwill of the registered trademark even though one of the purposes of the website was to discourage members of the public from doing business with the plaintiff. The defendant was entitled to express its position and speak freely provided it did not violate section 22 of the Act and that “to accept the plaintiff’s argument, that the reference to an employer’s trade-mark to identify a Union site depreciates goodwill associated with that trade-mark would be a result that goes far beyond what Parliament intended by s. 22”.

An earlier case provides an illustration of a true commercial use. In Source Perrier (Société Anonyme) v. Fira-Less Marketing Co. Limited [1983], 2 F.C. 18 (T.D.), the defendant sold bottled water for $1.00 under the name “Pierre Eh”, a humourous reference to the Canadian Prime Minister at the time. The bottles were designed to resemble those used by the plaintiff, but included a disclaimer that the bottles were not to be confused with those of the plaintiff.  The Court found that this use led to depreciation of the plaintiff’s goodwill because the defendant’s commercial spoof of the plaintiff’s marks and image tended “to dilute the quality of the plaintiff’s trade-marks, to impair its business integrity established over the years, and to cause injury to its goodwill”.

Thus, trademark owners, before pursuing pranksters, will want to determine whether there is commercial use of a registered trademark, or, possibly, an infringement of copyright. Otherwise, the trademark owner may be forced to see (and live with) the humourous side of a prankster’s efforts.

Creating an Effective Brand

Vitamin.com posted an interesting article by Mike McDerment of freshbooks.com on how to create an effective brand.

One thing the article didn’t deal with, however, was the role of trademark due diligence in the brand creation process. Before committing to any new brand, appropriate clearance searches should be conducted. The best new brand in the world may not be of much use if it’s infringing on the rights of a competitor – at the very least, the cost of launching the brand could go up significantly – Apple’s launch of its iPhone brand is a classic example. Apple is fortunate enough to have the legal budget to fight those battles. Many businesses don’t.

iPhone Trademark Dispute Goes Canadian

In an update to our January 11, 2007 posting on Apple Computer Inc.’s troubles with it’s proposed iPhone trademark in the U.S. and Canada, Toronto based Comwave Telecom Inc. is continuing with it’s opposition to Apple’s application to register the iPhone mark in Canada on a proposed use basis. Even though Comwave filed its application to register the mark in Canada after Apple did, Comwave claims to have used its iPhone mark in Canada since 2000 in association with local and long distance telephone services and VoIP telephone services. Under Canadian trademark law, it appears to have the upper hand if it can prove its prior use claims.  

Comwave is also threatening to go after Cisco for promoting its iPhone products in Canada. However, if Cisco’s claims are true that it has no sales of those products in Canada at this time, Comwave’s threats appear to be more of a shot over the bow.

Glen Breton vs. Scotch Whisky – Round 1

In a follow up to our posting of December 20, 2006, the Trade-marks Opposition Board has now sided with the Nova Scotia distiller of GLEN BRETON whisky.  In the Opposition Board’s view, members of the public who purchase GLEN BRETON whisky will not be confused into thinking that they are buying Scotch Whisky.  The Scotch Whisky Association has indicated that it will appeal the decision to the Federal Court, so stay tuned for Round 2.

More Olympic Trade-mark Issues

Protecting the official trademarks of the Olympic Games is proving to be an ongoing challenge for the organizers of the Beijing 2008 Games, as well as the Vancouver 2010 Games. We reported some time ago regarding possible new Canadian legislation. Beijing organizers are now threatening legal action against pranksters that are using the Internet to poke fun at several of the official marks of the Beijing Games.

The website of the Vancouver Organizing Committee includes a 36-page list setting out the official marks of the Vancouver Organizing Committee and the Canadian Olympic Committee, including the Beijing Games marks that are currently being targeted. A portfolio of that size will likely generate some interesting new developments in trademark law as we draw closer to the 2010 Games.