Of London, Lithuania And A Popular Tree

A recent story in the London Free Press shows just how powerful Canadian trade-marks are becoming throughout the world – causing a country half a world away to drop a tree design that it had recently chosen to be the symbol for its latest tourism campaign. A similar tree design is the subject of an Official Mark Request advertised by the Canadian Registrar of Trade-marks at the request of the City of London, Ontario, known primarily, until now, as a centre for the insurance industry in Canada and as a University town. The design appears prominently on the City of London’s website.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

Canucks Unveil New Logo

Only in a Canadian city, would the unveiling of a new logo for the local hockey team be the subject of such anticipation and discussion – particularly as the start of the season is over a month away. Today, before 8,000, yes 8,000 fans inside General Motors Place in downtown Vancouver, on one of the rare sunny and warm days the city has seen this summer, the Canucks finally unveiled their new jerseys to the adoring throngs.

Though nothing is showing up on the Canadian Intellectual Property Office online trade-marks database yet, no doubt, applications to register the new logo as a trade-mark have already been filed at the Canadian Intellectual Property Office.

EcoDensity and the Mayor

An Article in the Vancouver Sun this past weekend raises questions about why the Mayor of the City of Vancouver has applied to register in his own name, the mark ECODENSITY for a housing density initiative that is funded and run by the City. The Mayor indicates in the story that he filed the proposed use application a few days before the initiative was publicly unveiled in order to stop others from doing so.

As the mark was not used by the City at the time the Mayor’s application was filed, the City would have been unable to properly request at that time, that the Registrar give public notice of the City’s adoption and use, as a public authority, of the mark as an Official Mark, pursuant to Section 9 of the Trade-marks Act. Official Mark requests are commonly submitted by all levels of government in Canada, including the City of Vancouver itself, to protect what they consider to be their proprietary marks.

An alternative to filing an application in the Mayor’s own name, would have been to file the proposed use application in the name of the City, as such an application doesn’t require prior adoption and use by the City. It’s also not clear why, now that the City has publicly started promoting its EcoDensity Plan, it has not submitted an Official Mark Request to the Registrar.

In a follow up story today, the Vancouver Sun reports that Vision Vancouver, the opposition civic party, will request an extension of time to oppose the Mayor’s application on or before the deadline to do so.

Rare Look Into The World Of Domainers

A recent CNN article shines a spotlight on the rarely seen world of top professional domainers, and the tactics they’ve created to capture their sizable portions of cyberspace. The story includes details on the workings of Cameroon’s .cm country code domain, so valuable because of its resemblance to the .com top level domain. Interesting to note that several of the domainers profiled in this article live here in Vancouver or other parts of British Columbia.

.CA Domain Hits 20 Year Milestone

20 years ago today, the Internet Assigned Numbers Authority (IANA) delegated the .CA domain to John Demco, then of the University of British Columbia (UBC) Computer Sciences Department. The Vancouver Sun reports that, on May 14, 1987, the commercialization of the Web wasn’t on Demco’s or anyone else’s radar – in fact the Web as we know it wasn’t even in existence. Demco operated the .CA domain for 13 years on a volunteer basis, charging no fees for .CA domain registrations.

Today, the .CA domain is the 13th most popular country code domain in the world, with over 837,000 registrations, Demco is a director of one of the largest .CA Registrars and the Canadian Internet Registration Authority has responsibility for the .CA Domain, which it took over from UBC in 2000.

8,500 Trademark Lawyers Under One Roof?

As Michael Atkins of the Seattle Trademark Lawyer recently reported, the International Trademark Association (INTA) held its annual meeting in Chicago last week. More than 8,500 trademark professionals were under one very large roof of the McCormick Place Convention Centre. Authors from the Canadian Trademark Blog were also in attendance, running from meetings to receptions to educational sessions, from morning ’til (late) night and occasionally taking in some of the great sights of the Windy City, typically while taxiing from one venue to the next.

As well as a great opportunity to meet with those trademark professionals who do such a great job of protecting our client’s interests in other countries, it was interesting to see the home base of some very well known marks, such as WRIGLEY’S, OLD NAVY, SEARS and of course all the great sports teams such as the CUBS, WHITE SOX, BEARS, BULLS and BLACK HAWKS.

Not surprisingly, the issues highest on everyone’s radar relate to protection of trademark rights on the Internet, with the rapidly developing area of keyword advertising being a very hot topic.

Rebranding Costs Lead To Short Circuit

U.S. based Circuit City has put its Canadian chain of stores up for sale, citing, among other reasons, the tens of millions of dollars it was forced to spend in re-branding. Circuit City acquired the chain of stores formerly known as Radio Shack in Canada three years ago. Following completion of that transaction, they were forced to change the name of the stores to The Source by Circuit City. As well as the large re-branding costs incurred, other reasons cited for the sale include increased competitiveness and shrinking margins in the consumer electronics business, difficulties in changing the focus of the types of merchandise offered and Circuit City’s own difficulties in the U.S. market.