Survey On Preparation For New gTLDs

A survey is now being conducted by World Trademark Review (WTR), seeking input from marketing and trademark professionals as to their views on how industry is preparing for the impact of the new generic top level domains (gTLD) that ICANN (the Internet Corporation for Assigned Names and Numbers) appears to be pushing forward with.    The survey is supported by a number of domain name and brand protection service providers, trademark owner associations and professional marketing associations.

As previously reported on this blog, ICANN proposes to expand beyond the current gTLDs, of which there are 21, including .com, .org and .net.  Under the proposed expansion, any company will be permitted to set up its own domain registry under any term –  for example .cars, .honda, .mapleleafs, .canucks and pretty much anything else will be possible.  This development obviously has huge implications for all brand owners.

WTR’s survey is intended to provide a sense of how well prepared brand owners are for this coming change.

First Canadian Decision on Keyword Advertising

The British Columbia Supreme Court recently issued the first Canadian Court decision dealing with the use by one party of another party’s trademarks in keyword advertising.  The case involved a defendant, Vancouver Career College (Burnaby) Inc. (VCC), that provides post-secondary career training services under different business names and trademarks.  As part of its internet marketing strategy, VCC, like numerous other businesses, uses keyword advertising, whereby VCC pays search engines such as those provided by GOOGLE and YAHOO! for links to its websites to appear as “sponsored links” or “‘sponsored results” alongside the search engine’s normal search results.  In order to use keyword advertising, VCC selected certain keywords to describe its website, including the business names and trademarks of various VCC competitors.

The plaintiff, the Private Career Training Institutions Agency (Agency) is a provincial regulatory agency charged with overseeing career training institutions that operate throughout the Province of British Columbia.  Acting on complaints received from other career training institutions in the Province, the Agency sought an injunction against VCC’s practice of using the names and trademarks of those other institutions in VCC’s keyword advertising program, on the basis that such use was false, deceptive or misleading.  The Court held that VCC’s keyword advertising program was not false, deceptive or misleading and therefore no injunction was granted.

While framed as a false, deceptive or misleading advertising complaint, rather than a trademark infringement or passing off claim, the Judge in his reasons specifically referenced trade-mark and passing off concepts when looking at the issue of what is confusing or misleading in the context of alleged improper advertising.  The Judge found that what the defendants were doing did not amount to false, deceptive or misleading advertising.  The Judge also held in his reasons that: “I also accept VCC Inc.’s argument that its practice of using Keyword Advertising is no different than the time-honoured and generally accepted marketing practice of a company locating its advertisement close to a competitor’s in traditional media (e.g., placing its Yellow Pages advertisement next to or in close proximity to a competitor’s telephone number  in the same directory so that potential customers of that competitor discover there is another company offering a similar product or service and that they, the consumer, have a choice).”

The Agency has until June 28, 2010 to file an Appeal of the decision, should it choose to do so.

.CA Dispute Resolution Consultation Now Open

The Canadian Internet Registration Authority (CIRA) has initiated a consultation on the CIRA Domain Name Dispute Resolution Policy (CDRP).  The CDRP has been in place since 2002 and is intended to be a quick, relatively low cost arbitration forum for disputes over .CA domain names.  The stated purpose of the consultation is to solicit feedback from interested parties as to the effectiveness of the CDRP and whether it continues to meet the needs of its stakeholders. 

The consultation consists of a number of questions about the process itself, the tests that a complainant must meet, the remedies provided and the like.  Interestingly, the consultation notes that over the 8 years the CDRP has been in place, there have only been 149 decisions rendered, with the high water mark occurring in 2008, when there were 30 decisions.

The consultation is open from June 9 to September 17, 2010.

Feud Over Family Name Spills Into Federal Court

In a recent decision of the Federal Court Trial Division, the registration of the mark STENNER was expunged on the basis that it was not distinctive. 

STENNER was registered as a trademark in the Canadian Intellectual Property Office (“CIPO”) in 2005.  The Application, filed in 2003, was objected to by the CIPO Examiner on the basis that the mark was primarily merely the surname of an individual.  That objection was overcome when the Applicant provided sufficient evidence of secondary distinctiveness – i.e. evidence that the mark was recognized as the source of the Applicant’s financial services and newsletters, as much or more than than it was recognized as a surname.  The Application was not opposed by anyone.

The Federal Court found that the evidence established that the registered owner had used the STENNER mark on and off over the years, commencing in the late 1980’s, though rarely, if ever, as a standalone mark and periods of use had been punctuated by lengthy periods of non-use.  In the early 2000’s, the principal of the registered owner had a bitter falling out with his two children who were also in the financial services industry and who also used the STENNER name in association with the performance of their services.  That falling out had been the subject of a separate lawsuit, however the Court in those proceedings specifically declined to rule on the validity of the trademark registration for STENNER.

The application to expunge the registration for STENNER was based on various grounds, but the argument that won the most favour with the Federal Court was that the mark was no longer distinctive (assuming it ever had been), due to extended periods of non-use, lack of use as a standalone mark and the results of expert evidence on the recognition of the mark as a source indicator for the registered owner’s services.   The expert evidence put forward showed that the mark was recognized by virtually no one outside of the Lower Mainland of British Columbia and even within that region, the recognition factor was very low.  Also, the use of the same mark by the two children in the same industry and geographic area also pointed to a lack of distinctiveness.

In the end result, the Federal Court ordered the expungement of the registration for the STENNER mark.  There is no indication yet of whether an appeal will be filed, though the deadline for doing so is fast approaching.

When Prior Use is not Prior Use

In an update to an earlier post, the Supreme Court of Canada has recently granted leave to appeal in the case of Masterpiece Inc. v. Alavida Lifestyles Inc.    Both the Federal Court Trial Division and the Federal Court of Appeal held that, in a proceeding to expunge a Registration, the relevant date for determining whether there was confusion with a mark previously used in Canada is the date that the application was filed, and that likelihood of confusion at a point in the future is not a relevant consideration. 

In addition, both of the earlier decisions stated that in order for prior use of a mark in Canada to be grounds for successfully expunging a registration, such prior use must have occurred in the same geographic area where the applicant used its mark; otherwise there could have been no likelihood of confusion at the time the application was filed.   In coming to the latter conclusion, both Courts appear, at least with respect to an action for expungement of a registration, to have imported into the test for likelihood of confusion, the test for common law passing off.   Given this, the decision of the Supreme Court of Canada on this issue will be eagerly awaited by practitioners.

CIPO Seeks Consultation On More Proposed Changes

The Canadian Intellectual Property Office recently posted a consultation, requesting comments on three proposed changes to its Office practice.  The proposed changes are all relatively minor, but worth noting.

The first proposed change is that the Registrar will no longer require applicants to confirm that they are a “person” as defined in Section 2 of the Act.  Previously, the Examination Manual has required Examiners to seek confirmation from applicants where it’s not clear from the application that the applicant is a legal entity – for example if a individual files an application under a “doing business as” name rather than under their legal name.  Under the proposed Practice Notice, Examiners will no longer request clarification from the applicant and it will be up to the applicant to ensure that it complies with the Act in this regard.

The second proposed change is in relation to colour claims in applications.  The Act currently provides that unless an application is for a word mark not depicted in a special form (i.e. if the mark is anything other than a word mark in block letters), then the application must contain a drawing of the mark and if colour is claimed as a feature of the mark, the Regulations stipulate that the colour(s) must be described.  Rule 28 of the Regulations provides that if a description of the colour(s) as provided by the applicant is not clear, the Registrar can cause the applicant to provide a drawing of the mark, lined for colour in accordance with a chart that is set out in Rule 28.  This chart contains different lining specifications for all the basic colours but there is no indication of how (or whether) an applicant is to differentiate between different shades/hues of a particular colour – for example there is a specific line drawing for the colour “Blue” (horizontal lines) in Rule 28, but this would apply to light blue, dark blue and everything in between. Read more

Consultation by CIPO on Madrid and Singapore Treaties

The Canadian Intellectual Property Office (CIPO) recently launched a new consultation on possible Canadian accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Singapore Treaty on the Law of Trademarks (the Singapore Treaty).

This is not the first time CIPO has looked at the issue of Canada acceding to the Madrid Protocol.  Five years ago a similar consultation took place.   In response to a request for input, CIPO received feedback  from the Intellectual Property Institute of Canada and from the International Trademark Association, though no further action was taken by CIPO at that time.

According to CIPO’s backgrounder to the current consultation, the intervening five years have seen important trading partners such as the United States join both the Madrid Protocol and the Singapore Treaty.  As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices. Read more