David, Goliath And Reverse Confusion

Microsoft is once again at the forefront of a trademark infringement dispute , though this time the David in the story is on a bit weaker ground – it sells construction management software under the FOREFRONT brand and MS recently announced it will begin selling security software under that same brand – so clearly the claimed goods are different, but the marks are identical and there could be overlap in the channels of trade. Reading between the lines, the earlier user here is worried about reverse confusion, which occurs where a later user floods the market with its brand, subsuming the earlier user’s more modest reputation.

Though an established cause of action in the U.S., it’s only recently been recognized as being actionable in one Canadian case – however, in that case the A&W fast food chain was unable, on the facts, to prove that it had a cause of action against McDonalds in a battle of their respective CHICKEN GRILL and CHICKEN McGRILL sandwiches.

Only in Canada? .CA Whois Policy will create more uncertainty for Trade-mark owners

Still catching up on press releases received over the last few weeks. The Canadian Internet Registration Authority (“CIRA”) is pushing ahead with implementation of its new Whois Policy despite resistance from trade-mark owners and other IP rights holders. Once implemented (likely in late fall of 2006), an individual Registrant of a .CA domain name will be able to cloak their identity unless they opt to disclose it. This is so, even if the .CA domain name links to a commercial website. Disclosure can be forced only in certain limited circumstances, pursuant to a court order, search warrant and the like.

Trade-mark or other IP rights owners who believe an individual Registrant is cybersquatting or otherwise infringing their rights will have no way to find out who that individual is, to contact them directly to try to work out a settlement or to properly assess the likelihood of a successful dispute resolution proceeding (called a CDRP proceeding). CIRA have rejected their own Consultant’s recommendation that CDRP Complainants should have access to the identity of an individual Registrant, subject to various safeguards.  CIRA’s suggested solution is to permit a Complainant to file rebuttal evidence on the issue of legitimate interest, in response to the evidence, if any, filed by an individual Registrant on that issue. Filing additional evidence on the issue of bad faith will require permission of the dispute resolution panel.

A potential Complainant under this new system will have a risky and expensive decision to make – whether to commence a CDRP proceeding without a crucial piece of information – the identity of the individual Registrant – and risk finding out only after the Registrant files his or her evidence (this requires that the Complainant first submit its Complaint and evidence and incur the fees inherent in doing so) that he or she indeed has a legitimate interest in the domain name – which if the Complainant had known from the outset, the CDRP might have been avoided altogether.

Interesting to note that CIRA’s new Whois policy doesn’t contain the commercial purpose exception that applies to .co.uk domain names, which permits Nominet to release the Whois details even if the Registrant is an individual – not to mention that it’s also an opt out system.

In a related development, CIRA is currently seeking public input on how to implement its new Whois policy and is seeking to hire a consultant to complete a review of the CDRP process and recommend options for change.

Top 100 Brands

It seems appropriate to kick off a new trade-mark blog with some commentary on the recent BusinessWeek Online/Interbrand Top 100 Brands 2006

Not surprisingly, with 7 out of the top 10 and 51 out of the top 100, U.S. brands dominated the list, though a bit less than I thought they would – after number 70, European brands clearly dominate, though the value of those brands is much less than many of the higher ranked U.S. heavyweights. Also, the methodology used by Interbrand necessarily led to a more international result – the criteria used disqualified VISA, CNN and WALMART.

Technology brands dominate the top 6 and then are more evenly distributed farther down the list. No Canadian brand even made the list. I suppose Canada could get an honourable mention for eBay at no. 55 – the founder of that business being a transplanted Canuck.

Probably the most significant thing to note is the actual monetary value attributed to these brands – a whopping $67 billion to #1 ranked COCA-COLA for example. Helps to explain why trade-mark owners and their lawyers are so quick to enforce any perceived harm to their brands.

As advertised – here we go…

Welcome to the Canadian Trademark Blog. Our goal here is to mix three different perspectives on Canadian Trade-marks — solicitor, litigator, and trade-mark agent; while still drawing connections and pointing out issues relating to technology, IP & privacy law.

We hope to maintain our Canadian focus, or at the very least, add a Canadian spin to things. However, trade-mark issues don’t always have set boundaries, so it’s not likely we will either. We will be seeking stories & information that reflect trends in the law, and how that might effect our daily practice. That doesn’t mean we won’t highlight the latest CIPO announcement, or trade-mark dispute in the newspaper (we will), just that our commentary will also target the bigger picture.

Stay tuned for our first postings.