Readers of this blog who read our posting on November 23, 2006, may be interested in an article published on BCRELinks.com, the portal site of our firm’s Commercial Real Estate Practice Group, which discusses in more depth the trademark issues that Real Estate Developers should be aware of.
Circuit City continues to encounter trademark problems in Canada with its chain of retail consumer electronics stores. When Circuit City purchased the chain of 870 plus stores from Radio Shack 18 months ago, it was forced to incur substantial costs to re-brand them as The Source by Circuit City. Now, a smaller chain of photo shops called Foto-Source Canada Inc. has applied to the Federal Court of Canada seeking an order that Circuit City cease using The Source as part of its name.
Foto-Source contends that it adopted the slogan “Get it right, from the source” in 1994. Both parties have filed applications to register their respective trademarks in Canada but neither application has been published for opposition yet.
The Scotch Whisky Association is battling a Cape Breton distiller of whisky over its use of the word Glen in its trademark. The Association, which represents the owners of well known brands such as Glenfiddich, Glenlivet and Glenmorangie, is concerned that consumers will assume that Glen Breton Rare single malt whisky, produced by Glenora Distillery, is a scotch whisky.
The Association argues that the word “Glen” is too closely linked to scotch whisky for anyone other than Scottish producers to use. “Scotch Whisky” itself is a designation that is protected under the federal Trade-marks Act for use only with whisky produced in Scotland.
The Canadian distillery, which has applied to register the mark GLEN BRETON, argues that Cape Breton, where it is based, has very strong Scottish roots because it was settled by the Scottish over 200 years ago. The region is riddled with towns and villages that contain the word “Glen”, which means a place at the base of highlands or mountains. The Association has opposed the GLEN BRETON trademark application. Lawyers for both sides recently presented oral argumentsÂ and a decision of the Opposition Board is still months away.
Canadian based Research in Motion is suing Samsung over its use of the mark BlackJack in association with a recently launched smart phone device. The Samsung smart phone competes directly with RIM’s BlackBerry Pearl smart phone. In the lawsuit, filed in California, RIM argues that the BlackJack name will cause confusion with consumers who are familiar with the established BlackBerry brand, as well as constituting false designation of origin, unfair competition and trademark dilution.Â Interestingly, both devices are offered on Cingular’s network in the U.S.
According to the GlobalGeek Podcast, Apple Computer apparently doesn’t object to use of the term “podcast” if it’s used to generically describe podcasting services. At first blush, this might be interpreted as a bit of a departure from Apple’s recently aggressive stance in terms of all things “POD” and “IPOD”. On the other hand, Apple may just be differentiating between generic use of the term podcast and use of that term as part of a third party trade-mark.
A recent press release from WIPO (the World Intellectual Property Organization) heralds the 900,000th registration under the International Trademark System, commonly known as the Madrid Protocol or system.
The Madrid system allows an applicant from a signatory country to potentially obtain protection for its mark in up to 77 member countries and the European Union by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). An International Registration obtained through the Madrid system can be maintained and renewed through a single procedure at WIPO.
The system is designed to provide a cost-effective and efficient way for trademark owners to secure protection for their marks in multiple member countries through the filing of one application. While there are debates about how well the Madrid system attains that goal, it certainly gives applicants from member countries another powerful option for international trade-mark protection strategies.
Unfortunately for many Canadian trademark owners (namely those without a presence in a Madrid protocol signatory country), this option is not available to them because Canada, alone among most developed (and many developing) countries is not a signatory to the Madrid Protocol, nor is it likely to be for at least several years. The recent accession of both the U.S. and the EU to the Madrid system has awoken the Canadian Intellectual Property Office (“CIPO”) to the need for Canada to seriously consider joining, but the process is moving very slowly. In 2002, CIPOÂ published an analysis of the issues that need to be addressed in order for Canada to acede to the Madrid Protocol and in 2005 CIPO solicited comments from Trade-mark professionals as to the proposed modernization of Canadian Trade-mark law, including adherence to Madrid. The issue has gained little public attention and given the other priorities of the minority governments in Canada of the past several years, it’s likely to languish for several more years.
Recent bidding for the hell.com domain name failed to live up to it’s owner’s hopes, with no one matching the $1 million (U.S.) reserve bid. In case you’re interested, the hell.ca domain name is taken and links to an active site, unlike hell.com, which apparently operates in a “private parallel web”.