Maple Melee Meets End?

There is an update available to an earlier story we blogged concerning an ongoing dispute between American Clothing Associates SA and the Office for Harmonisation in the Internal Market (OHIM).  We previously reported that a mark integrating Canada’s well-known maple leaf symbol could not be registered in the CTM because it contained the maple leaf, and accordingly improperly connoted an association with Canada.

In a decision released July 16th, the European Court of Justice dismissed American Clothing Associates’ appeal of this decision, and concluded that the maple leaf emblem was indeed protected as a state emblem.

Good coverage of the decision is available at German Trademark Law In A Nutshell – and thanks to Chris of GTLIAN for alerting us to the decision’s release.

Maple Leaf Melee

A recent CTM case concerning an iconic Canadian symbol caught our attention.

The dispute between American Clothing Associates SA and the Office for Harmonisation in the Internal Market (“OHIM” – the body that administrates the Community Trademark System) focuses upon the Canada’s well-known maple leaf symbol–stylized versions of which appear as part of our own logo, above.

The case considers the extent to which national symbols are afforded protection under the Community Regulation 40/94 and under the Paris Convention.  American Clothing Associates SA (“ACA”) originally sought to register a logo made up of the Maple Leaf symbol, with the letters RW located beneath, for use in association with both goods and services.

OHIM’s examiner refused the initial application concluding that the mark as a whole would improperly connote an association with Canada.  ACA appealed and lost again, the Appeal Board noting that the inclusion of the RW element in the mark did not avoid the application of Article 6ter of the Paris Convention which prohibits the use of marks incorporating State indicia without consent. Read more

Window of Opportunity: Extra savings on CTM applications until May 1, 2009

While not, strictly speaking, a Canadian trade-mark issue, many Canadian trade-mark owners will be interested in this limited time opportunity to save money while obtaining protection for their marks in the European Union.

The official fees for European Union Community Trade-mark (“CTM”) applications are being reduced by about 40% (from EU 1,600 to EU 900).

In addition, applicants who apply before May 1, 2009 can save an extra EU 150, because while the final registration fee (EU 850) has already been eliminated, the minimal increase in filing fees (from EU 750 to EU 900) does not take effect until May 1, 2009.

We encourage trade-mark owners considering CTM applications to act quickly to take advantage of the extra savings available before May 1, 2009.

Psion’s NETBOOK Trademark Under Fire

The dispute over Psion’s NETBOOK trademark registrations has crept further into the mainstream, following recent decisions by Dell and Intel to take legal action against Psion in the US.

For those of you who missed it, Psion is a mobile computing device manufacturer whose head office is located in Mississauga, Ontario, Canada. Psion holds registrations for the trade-mark NETBOOK in Canada, the US, in Singapore, Hong Kong and in the CTM system.

In December, Psion sent letters to manufacturers and retailers in an attempt to “affirm” its NETBOOK trademarks. To this end, the letters requested the recipients to stop using NETBOOK to describe ultra-portable laptop computers.  Psion followed up with similar correspondence to journalists and bloggers in January. Read more

Trade-marks Act Amendments: Put Down That Glass of Canadian Burgundy!

On December 31st, while many readers (and writers!) of the Canadian Trademark Blog were likely raising a glass to celebrate the New Year, long-awaited amendments to the Canadian Trade-marks Act quietly came into force.  The changes pertain to Section 11.1 of the Act which deals with geographic indications.  In particular, the amendments eliminated several terms from a list of wine names that had been deemed generic, and accordingly available for use by anyone, in Canada.

The amendments were motivated by an agreement struck in 2003 between the Canadian government and the European Community concerning trade in wine and spirits.  Under the terms of that deal, the Canadian government agreed to amend the Trade-marks Act to gradually eliminate the use of certain European wine and spirit names on Canadian labels, thereby opening the door to European producers to apply for the protection of these names as geographical indications in Canada. Read more

Red Cross Lawsuit Settled

In an earlier post discussing the protection of the Red Crystal in Canada, we noted that the American arm of the Red Cross movement had been sued by Johnson & Johnson over its licensing of the iconic red cross emblem to for-profit companies for use on commercial products.

In a pair of court decisions–one released last November and in a second released in in mid-May–the court dismissed the bulk of Johnson & Johnson’s claims that the American Red Cross could not use the symbol in commercially competitive activities.

On Tuesday, the parties announced that they had settled the outstanding matters in their dispute. Though the terms of settlement were not released, both the American Red Cross and Johnson & Johnson will continue to use the emblem in conjunction with their endeavors.

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.