Psion Capitulates In Netbook Battle

Following up on a story we reported earlier this year, Mississaugua, Ontario-based Psion Teklogix appears to have resolved its trademark dispute with Intel Corporation by undertaking to withdraw all of its NETBOOK trademark registrations.  As regular readers of our blog will recall, Psion’s registrations for NETBOOK were being challenged in a number of jurisdictions, including Canada, by Intel and others on the bases of non-use and non-distinctiveness.

While the Psion press release makes no specific reference to the terms of settlement, it seems likely that Intel persuaded Psion to formally abandon the NETBOOK brand by providing a cash payment to the Canadian company.  It is not clear to what extent, if any, Dell Inc. – who had joined Intel in attacking Psion’s registrations – was a formal part of any such settlement.

The news of the settlement is not particularly surprising: Psion had a long and expensive row to hoe defending the various actions in the jurisdictions in which it was under attack, let alone asserting its rights around the world to stave off allegations of non-distinctiveness / genericide.  Moreover, Intel and Dell no doubt both had more resources to apply to the case than Psion did.  Given all of that, the cost-benefit analysis pushes one to settlement pretty quickly. Read more

Breweries Battle Over Ontario

In yet another Canadian trademark dispute involving alcoholic beverages – seems to be a bit of a trend lately – Ontario based Brick Brewing Co. Limited has issued an announcement that Labatt Brewing Company Limited has commenced an action in Canada’s Federal Court against Brick, alleging that Brick’s RED BARON trademark infringes Labatt’s BRAVA trademark.  While these marks, taken by themselves, seem quite different, the dispute focuses on the similarities between the labels and packaging used with these products, along with the similarity of the bottles.

In an interesting side bar, Labatt has a significant ownership interest in Ontario’s “The Beer Store” which is by far the largest retail channel for beer in Canada’s most populous province.  As such, Labatt indirectly receives fees from Red Brick in order to display its RED BARON lager in a lobby display program at The Beer Store, as well as fees to sort RED BARON bottles, which are non-industry standard.  Brick argues that because of the set up of The Beer Store, where more popular brands such as those sold by Labatt are featured more prominently, consumers generally have to ask for Brick’s products, such as RED BARON, by name, thereby lessening any likelihood of confusion.

Counterfeit Goods: Another Substantial Award of Damages

This blog previously reported on Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd., which, along with Louis Vuitton Malletier S.A. v. Yang and Microsoft Corp. v. 9038-3746 Quebec Inc., evidences a recent trend toward substantial damage awards in counterfeit goods cases. The April 2009 decision in Microsoft Corp. v. PC Village Co. Ltd. follows the approach taken in these cases and appears to confirm the courts’ commitment to cracking down on the sale of counterfeit goods in Canada.

In this most recent case, Microsoft Corporation brought an action for copyright and trademark infringement against corporate defendants known as PC Village Markham and PC Village Downtown, which were computer retailers in the Greater Toronto Area. The action was also brought against two employees that worked in sales at these stores. Evidence provided by the plaintiff’s investigators showed that both retail locations engaged in selling computers with unlicensed Microsoft software loaded onto the hard drives. The individual defendants served a Statement of Claim, but did not file it and proceeded to negotiate a settlement which was never finalized. Microsoft then brought a motion for default judgment. Read more

Payless to Pay More?

Collective Brand Inc., operator of the well-known US discount shoe retailer Payless ShoeSource, is again under attack from German-based sporting apparel manufacturer adidas. In a landmark US decision last spring, adidas persuaded an Oregon jury that Payless had wilfully infringed adidas’ trade mark and trade dress in various sneaker designs, and was awarded over $300 million in damages and disgorged profits. This award represented what was thought to be the largest ever US trademark verdict. On appeal, the award was later reduced to just over $65 million – still, a significant award and an important victory for adidas.

Flush from its win against Payless in the US, adidas has elected to try to repeat its success in Canada. Earlier this month, Adidas AG and Adidas Canada Ltd. filed a claim against Collective Brand Inc. in Federal Court. In Canada, adidas’ action will hinge on Payless’ alleged infringement of the rights adidas enjoys in the well-known 3 Stripes Design, and particularly the rights afforded adidas from these three trademark registrations.

If adidas is successful, it is not likely to be awarded damages anywhere near the amounts it secured in the US; nonetheless, the case will be of interest to both trademark lawyers and sneakerheads alike. We’ll keep all of you posted on material developments.

Yee Shall Seek… Declaratory Judgment

Updating our previous post on the ROYAL CHINET trademark, the Nova Scotia Supreme Court in CKF Inc v. Huhtamaki Americas Inc. has confirmed “that declaratory relief is specifically available in the context of intellectual property disputes”, notwithstanding that such relief is not expressly provided for in the applicable act. In this case, the Plaintiff launched an action in Nova Scotia seeking, among other things, a declaratory judgment that it as an unconditional owner of certain trademarks in Canada. The Defendant, which commenced its own actions against CKF with respect to the same trademarks in Ontario and Maine, applied to strike CKF’s action on several bases, including that the Court could not grant CKF the declaratory relief it was seeking.

Finding that it had inherent jurisdiction to make the declaratory judgment sought, and that the declaration was not purely “hypothetical” or “speculative” since it related to an actual dispute between parties, and was practically necessary for the resolution of this dispute, the Court refused the Defendant’s application to strike.

Proving Trademark Infringement: Absent a Defendant

Whether infringement of a trademark and depreciation of goodwill can be established turns on the facts, even if a defendant fails to file a defence or show up at trial. At least the Plaintiffs in a recent Federal Court decision, Salam Toronto Publications and Mohsen Seyed Taghavi v. Salam Toronto, Inc. et al. did not have to pay the Defendants’ costs.

In the absence of a defence and given proof that the Defendants had been properly served, the Court determined that the action was a proceeding in default of defence”, which meant every allegation in the Statement of Claim had to be treated as if it had been denied and the Plaintiff had to demonstrate on a balance of probabilities that the claims were made out.

In Farsi, “Salam” is a word meaning “hello” or “welcome”. The Plaintiffs had been publishing a current affairs newspaper since October 2000 and the Plaintiffs’ trademark, SALAM TORONTO, was registered in 2004 for use in association with wares, namely, newspapers and magazines. The Plaintiffs’ business name, “Salam Toronto Publications” was registered in 2001. The Plaintiffs also had domain names, salamtoronto.net and salamtoronto.ca. Read more

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