As reported in our recent Knowledge Bytes publication, today marks the beginning of the Sunrise period for the new .xxx domain. Owners of registered trademarks who are not part of the adult entertainment industry may and should apply to block their registered marks from becoming part of a domain name with the new .xxx generic top level domain. This Sunrise period is in effect until October 28, 2011. Different Registrars are charging different amounts for this service, so shop around.
The final round of the NHL Stanley Cup Playoffs is about to kick off here in Vancouver, with the hometown Canucks facing off for the first time ever in the playoffs against the storied Boston Bruins. Perhaps not surprisingly, local businesses in Vancouver are looking to capitalize on this historic event in different ways.
For example, the Vancouver Province is reporting that the Boston Pizza chain has temporarily (and wisely) rebranded itself as Vancouver Pizza, for the duration of the series.
Earlier in the playoffs, a local automobile dealership that was using the phrase “Go Canucks Go” and the team’s logo on the window of the dealership premises, received a cease and desist letter from the offices of the National Hockey League, demanding that the references to the CANUCKS word mark and logo be removed from their window.
No doubt as the series cranks up, other local businesses will find equally creative ways to get in on the action.
People for the Ethical Treatment of Animals (PETA) is in the news again for its cheeky ad campaigns, which sometimes use well known trademarks of other parties to garner exposure for its views on Canada’s seal hunt. We previously blogged about the use by PETA of an ad featuring the 2010 Winter Olympic and Paralympic Games mascots.
A recent Globe & Mail article reports that PETA had been distributing postcards in a number of bars in Toronto, with plans to roll out the campaign across the country. The postcards pictured on one side, a cartoon featuring a seal sitting at a bar and asking the bartender for “Anything but a Canadian Club”. The other side of the postcard featured a photograph of a hunter about to club a seal.
The North American distributor of Canadian Club Whisky didn’t see the humour in PETA’s cartoon and sent a cease and desist letter, claiming that the publication had caused degradation of Canadian Club’s corporate image and damage to its brand and trademark.
In response to the demand letter PETA agreed not to send out more postcards and to remove the cartoon from its website. Notwithstanding its compliance with the demand, a spokesperson for PETA argued that it had the doctrine of fair use on its side, to permit the use of trademarks for parody or satire. Unfortunately for PETA, fair use is a U.S. doctrine that doesn’t apply in Canada in the context of either copyright or trademarks.
In reasons issued late last year, the Federal Court of Appeal has upheld a decision to expunge a trademark registration obtained by Glaxo Group Limited (“Glaxo”) for two-tones of the colour purple as applied to the visible surface of an asthma inhaler. The decision raises interesting questions both about primary and secondary marks, and about the amount of evidence necessary to support a finding that a mark is distinctive.
By way of background, Glaxo registered its mark (depicted right, below) in May of 2007. A collection of generic drug manufacturers brought a Federal Court application to expunge the mark about 6 months later, alleging that the mark was not distinctive.
In its decision, the Federal Court concluded that for the mark to be distinctive the constituency of consumers for the inhaler (including physicians, pharmacists and patients) must relate the trade-mark to a single source, and thereby use the mark to make their prescribing, dispensing and purchasing choices. In market sectors where purchasing decisions are made by or on the advice of professionals, commercial distinctiveness of such marks will be inherently more difficult to establish: such persons will make purchasing or prescription decisions based on the specific properties of the product, and not on the packaging or marks associated with those products. Read more
The Globe and Mail is reporting on a dispute that has arisen between Vancouver’s Salt Tasting Room, which opened in 2006, and Toronto’s Salt Wine Bar, which opened in the summer of 2010. The owner of the Vancouver Tasting Room apparently appealed to the Toronto Wine Bar owners to change their name, but without success.
This dispute highlights the need for businesses, restaurant and otherwise, to register their trademarks in Canada and to register them sooner rather than later, since once a registration issues, it grants the registered owner the exclusive right to use that mark or one that is confusingly similar, throughout Canada in association with the claimed goods and services, even if that owner has only used its mark in one city or region of Canada.
In this case, the Vancouver owner waited until May of 2009 to file applications to register its SALT TASTING ROOM and SALT marks, even though it claims in both applications to have used those marks since July of 2006. Because of the timing of the start up of the Toronto restaurant and the current status of those applications, the position of the parties is murkier than it might otherwise be. What further muddies the waters are several prior registrations for marks in Canada that include the word “Salt” that are registered to other entities.
As another recent article notes, the restaurant industry is no stranger to trademark issues, including the lawsuit recently launched by the Wild Wing restaurant chain in Aurora, Ontario against Buffalo Wild Wings, a United States franchise operator that is expanding into Canada.
The fact that the Salt story involves restaurants in Vancouver and Toronto is also of interest, given that we are waiting to hear how the Supreme Court of Canada will rule in Masterpiece Inc. v. Alavida Lifestyles Inc. where one of the issues is the likelihood of confusion between similar marks used in two geographically distinct areas; in that case, in the context of the ability of an earlier user’s ability to block a later user’s application for registration.
The Canadian Intellectual Property Office (CIPO) sent out a reminder today, advising that pursuant to the Olympic and Paralympic Marks Act (OPMA), marks and expressions listed on Schedules 2 and 3 of that Act will expire on December 31, 2010. As a result, commencing on January 1, 2011, CIPO will no longer raise an objection pursuant to Section 12(1)(i) of the Trade-marks Act on the basis that an applied for mark consists of or so nearly resembles as to be mistaken for a mark or expresssion found in either of those Schedules.
As regular readers of this blog will recall, the Canadian government enacted this legislation well in advance of the 2010 Vancouver Olympic Winter Games (Vancouver Games), to provide the organizers of the Vancouver Games (VANOC) with another very useful tool in their fight against unauthorized use of numerous trademarks and symbols that are associated with the Olympics generally and more specifically those associated with the Vancouver Games. Schedule 1 to the OPMA, which sets out various Olympic marks that are not specific to any particular Olympic Games, will remain in force. Schedules 2 and 3 set out various marks and expressions that are specific to the Vancouver Games and as those games are now part of history, the need to protect those marks and expressions is no longer justifiable.
It was Schedule 3 in particular that raised the ire of some pundits, since it specified that a combination of words from Part 1 with words from Part 2 of that Schedule – including seemingly innocuous combinations of words such as “21st” or “Tenth”, with words such as “Winter” or “Whistler” – could be used as evidence in support of a finding that a person was promoting their business, goods or services in a manner likely to mislead the public into believing that there was an approval, authorization or endorsement by, or a business association with, the Canadian Olympic Committee (COC) or the Canadian Paralympic Committee (CPC). This, coupled with the ability of VANOC or the COC/CPC to obtain an interlocutory injunction without having to prove that they would suffer irreparable harm, made the effect of these provisions very far reaching.
In an update to a story we shared with you a few weeks ago, a report today that the organizers of the Quebec Winter Carnival and Maclean’s magazine have reached a settlement regarding Maclean’s use of the image of Bonhomme – mascot of the Carnival – as part of a cover image promoting an article on corruption in Quebec. While Carnival organizers confirmed the settlement and advised that they were “pleased”, specific terms of the settlement were not disclosed.