Trademark Statistics: The Year in Review

The Canadian Intellectual Property Office released its 2006-7 Annual Report earlier today. The report contains some interesting information:

  • over 45,000 applications were filed in the twelve month period ending March 31, 2007, reflecting a 4% increase over the previous year
  • Canada remains the most common country of applicant origin, with nearly 20,000 applications filed; the US placed second, with over 14,700 applications, while applicants from Germany, France and the United Kingdom rounded out the top 5
  • 90% of Canadian trade-mark applications were filed online; prior to 2004, only 20% of applicants were using the e-filing system
  • despite the addition of several new Examiners, turn-around times remained the same as in the previous year, and an examination backlog of approximately 20,000 files remains to be addressed
  • the number of Statements of Oppositions filed continued to decline, with just over 1100 filings; however, the number of Section 45 (cancellation) notices issued increased slightly over the previous year.

The full report is available here.

Canadian Intellectual Property Office News

Good news from the Canadian Intellectual Property Office: in an announcement posted to their website yesterday, CIPO advised that it will soon be making information concerning the status of both Section 45 proceedings and Opposition proceedings available online.

Currently, CIPO’s database provides limited information to the public respecting Trademark Opposition proceedings, setting out only the names of the Opponent and their counsel, and the date the Opposition was filed. The situation for Section 45 (or summary cancellation) proceedings is worse for those, the database indicates only the name of the Section 45 Requestor and their counsel, and does not even indicate when the Section 45 request was issued. In neither case is information about the current stage of the proceeding available through the database; for a member of the public to get such information they would have to perform a manual review of the physical file located at CIPO’s office in Gatineau, Quebec.

The addition of further information relating to these proceedings will permit interested third parties to make better informed decisions concerning the mark(s) at issue, allowing them to consider the impact such proceedings may have on their own interests. While CIPO has a long way to go before matching the standards set by the USPTO Trademark Office and its excellent Trademark Document Retrieval system, this step is an important one and CIPO should be applauded.

Amendment to Trade-marks Act: the Red Crystal Comes to Canada

Though normally a somewhat staid corner of trademark law, prohibited marks have garnered a lot of attention of late particularly as a result of the Olympic and Paralympic Marks Act, which we commented on in several previous posts. However, the Trade-marks Act itself has been recently amended to add a new entrant to the list of prohibited marks.

Bill C-61, titled “An Act to amend the Geneva Conventions Act, An Act to incorporate the Canadian Red Cross Society and the Trade-marks Act” came into force on January 31, 2008. This Act was introduced to account for recent changes in the Red Cross Movement the term used to refer to work performed by the International Federation of the Red Cross and Red Crescent Societies and the International Committee of the Red Cross.

Over the last decade, efforts have been underway to find a single symbol devoid of any religious, political, ethnic or other connotation that could be used by all nations engaged in the Movement’s humanitarian work. The Red Crystal is the result, and the Trade-marks Act has now been amended to add the Red Crystal to the list of marks whose adoption is prohibited by section 9. The Red Crystal joins the Red Cross, the Red Crescent and the now little-used Red Lion and Sun in the list of emblems that have been used by a variety of nations in humanitarian efforts over the last several centuries, and that are now protected by section 9 of the Act.

The addition of this mark to the prohibited list will be sure to catch the eye of video-game developers several of whom raised the ire of the Canadian Red Cross years ago by depicting the familiar Red Cross emblem in their games. But gamers aren’t the only ones attracting legal trouble from use of the Red Cross emblem: in 2007 the American arm of the Movement found itself in hot water when it was sued by Johnson & Johnson over its licensing of the emblem to for-profit companies to be used on commercial products, notwithstanding that the licensing revenues it received were directed toward humanitarian aid projects.

We’ll keep you posted on developments related to the Red Crystal.

Canadian Trademark Registrations Expunged

Following up on a case we first told you about in March 2007, Canada’s Federal Court of Appeal recently delivered its judgement in the case of Cheap Tickets and Travel Inc. v. Emall.ca Inc.

Disputes between these parties have been underway for some time. In 2002, Cheap Tickets obtained Canadian trademark registrations for CHEAP TICKETS and CHEAP TICKETS AND TRAVEL & DESIGN for use in association with a range of travel agency and other ticketing-related services, claiming use in Canada dating back to July 1997. Emall obtained the domain name cheaptickets.ca in 1999.

In 2003, Cheap Tickets tried to use the CDRP to stop Emall from using the cheaptickets.ca domain. This effort failed, so in late 2004, Cheap Tickets took to the courts, commencing a trademark infringement action against Emall in the Supreme Court of British Columbia.

Likely tired of Cheap Tickets’ attacks, Emall commenced an action in the Federal Court of Canada to expunge Cheap Tickets’ trade-marks. And the Federal Court obliged: concluding that the marks were clearly descriptive of the character or quality of the services in association with which they were registered, the Court expunged Cheap Tickets’ trademarks.

On appeal to the FCA, Cheap Tickets made a variety of arguments: that their marks were not “clearly descriptive” but rather “merely suggestive;” that their marks had acquired distinctiveness at the time applications to register them were filed; that the Design mark contained unique and distinct visual elements, entitling it to remain on the Register.

Again, all of Cheap Tickets arguments failed. The Federal Court concluded that no errors of fact or law could be found in the Trial Division’s judgement; accordingly, Cheap Tickets’ appeal was dismissed.

Beyond serving as another example of the maxim “turnabout is fair play”, there are a couple of important lessons for both trademark owners and advisors arising from this case. For trademark owners, this case is a prime example of the perils of selecting and using trademarks that are strongly suggestive of the products and services offered in association therewith. Such marks, even if secured by a registration, typically enjoy a narrow scope of protection, are highly susceptible to attack, and should be avoided. In addition, if you have already registered trade-marks that “push the limits” of descriptiveness, consider if it is possible to file supporting applications for those marks on the basis of acquired distinctiveness. Had Cheap Tickets done so, or if they had been able to establish acquired distinctiveness at the time of their original filings, they likely would not have lost their registrations.

For advisors: remember that once judgment is rendered and an order made by a court, the Registrar of Trademarks will not tarry in acting upon it, unless a stay is in place. Though it filed an appeal, Cheap Tickets did not seek a stay of the trial judge’s expungement order; accordingly, the Registrar struck Cheap Tickets’ marks from the Registry before the order’s appeal period had even expired. Had a stay been obtained, Cheap Tickets’ registrations would have remained on the Registry through the appeal period, and could have been used to assert claims against third parties while it awaited its hearing before the Federal Court of Appeal.

Law Bloggers Unite

Jeffrey Vicq and Larry Munn, two of your hosts here at the Canadian Trademark Blog, had the chance to chat with other West Coast-based law bloggers at the recent Seattle Law Blogger Meetup, hosted by the talented Michael Atkins of Graham & Dunn. The event was a terrific success: good information about blogging effectively, as well as a few rounds of good cheer, were shared. Summaries of the event, as well as a few pictures, can be found at the (excellent!) blogs linked below:

  • Mike Atkins’ Seattle Trademark Lawyer Blog post here;
  • Dan Harris’ China Law Blog post here;
  • Avvo’s Avvo Blog post here;
  • Rod Stephens’ Employment Advisory Blog post here; and
  • Venkat Balasubramani’s Spam Notes post here.

Plans are under development for a second meeting sometime in the coming year, to be held here in Vancouver. Stay tuned.

Premier’s Blogger Battle

Canadian domain name aficionados and Albertan politicos of all stripes have had a chuckle over the edstelmach.ca story the last few days. In case you missed it, popular Alberta blogger Dave Cournoyer (who blogs at daveberta.ca) was threatened by lawyers for Alberta Premier Ed Stelmach, who were agitated that Cournoyer had registered the edstelmach.ca domain name.

Stelmach’s lawyer, a specialist in family and criminal injury issues, claimed that Cournoyer had registered the name in “bad faith” (which would open up a claim under CIRA’s Domain Name Dispute Resolution Policy) and also accused Cournoyer of “misappropriating” Stelmach’s personality, which led Cournoyer to quip: “I’m not sure where Ed Stelmach’s personality is, but I certainly didn’t take it.”

However, in a development under the heading “turnabout is fairplay”, on Wednesday the domain daveberta.com was purchased by Calgary-based financial advisor Andrea Kirby. For a brief period on Thursday, the daveberta.com site was directed to the Wikipedia page for weasels.

For more coverage, including Michael Geist’s comments about the Premier’s poor chances of success, see the list of links at see daveberta.ca.

Turning Over A New …Sheaf?

Thanks for the warm welcome, all. For my first post, I thought it apropos to cover a story originating in the province of my birth, Saskatchewan.

A recent attempt by Saskatchewan’s new government to introduce a new provincial logo clearly demonstrates the need to have a clear and coherent branding strategy in place before rushing headlong down the path to change.

In early December, members of the province’s governing party, the Saskatchewan Party, announced their intention to change the province’s logo. In a move reminiscent of the Tory’s adoption of the Canada’s New Government slogan shortly after they took power in 2006, Saskatchewan’s new government decided that the iconic wheat sheaf symbol had to go. Deputy Premier Ken Krawetz criticized the logo, calling it “dated” and claiming it was no longer an accurate reflection of the province and its broad-based economic boom. (The logo was originally introduced by an NDP-led government under Allen Blakeney in the 1970s, though public notice of the province’s adoption of the sheaf was not issued until 1982.)

In a somewhat curious twist, Krawetz did not introduce a replacement for the sheaf; instead, he urged government ministries to use the province’s shield of arms or its coat of arms until a new logo was developed. Ironically, these marks each prominently depict three wheat sheaves.

However, Krawetz’s announcement was met with, to put it lightly, something less than broad-based enthusiasm. Despite a few local newspaper editorials plugging the proposal, it appeared Saskatchewanians were wildly unenthused by the change. Local call-in shows and newspaper editorial boards were flooded by citizens attached to the dear olde sheaf and unhappy with the use of their tax dollars to fund the new logo. (Some citizens, however, took the opportunity to take logo lemons and make lemonaid, proposing that a new au courant logo might include a genetically modified wheat sheaf, a nuclear power reactor, or a Saskatchewan Roughrider puffing a cigar. Personally, I’ve always been partial to this mark but admittedly, it may not be appropriate for the Premier’s letterhead.)

Five days later, after all of the wheat sheaf images were removed from the Government of Saskatchewan’s website, the government succumbed to public pressure and announced it had decided not to change the logo, at least for now. In a confusing and inadvertently humorous news release titled “Wheat Sheaf Logo To Be Retained: New Saskatchewan Government Listens To Public”, Krawetz stated that while he understood some Saskatchewanians were against the change, the logo change had never been a governmental priority, and that for those who oppose changing, it’s not really a matter of whether or not they like the wheat sheaf logo. It was a question of priorities. Whatever that means.

In any event, this story illustrates that altering a brand is a big step that should not be undertaken lightly, particularly when that brand includes a prominent symbol historically associated with the hopes and dreams of an entire province.