Registration

Yes, Virginia, Santa Claus is Trademarked

By In Registration

We understood it to be well established (at least since 1897 and the New York Sun’s reply to Virginia’s letter) that there is indeed a Santa Claus.

Unfortunately, the Canadian Intellectual Property Office seems intent on ignoring this important fact. Paragraph 12(1)(a) of the Trade-marks Act specifically provides that a trademark is not registrable if it is “primarily merely the name or the surname of an individual who is living”.

However, our recent visit to the CIPO website reveals at least three registrations for SANTA CLAUS – for use in association with “soaps of all kinds”, “ribbons, bows, gift wrapping papers and paper tableware” and, of all things, “ornamental plants”. The existence of these registrations suggests that CIPO considers St. Nick to be a fictional character rather than a living person.

We are pleased to note that two other SANTA CLAUS trademark registrations have been expunged (for use in association with “ice cream” and “soaps, detergents and toilet preparations”) but interested to learn that Coca-Cola has gone so far as to trademark a picture of the jolly old elf.

Of course, it is now seven years since the USPTO created a stir by allowing one Stephen Bottomley (a Brit, no less) to register SANTA CLAUS on their database.

We’ll have to wait and see whether Santa Claus commences proceedings for the unauthorized use of his name and likeness. Of course, Santa could always move to Australia, where they have not yet gone so far as to register his entire name (although there is a SURFING SANTA and a SWINGING SANTA). But then again – Australia has no snow in December.

Real Estate Developers Embracing Trademark Protection?

By In Branding, Protection & Enforcement, Registration

A review of recent Canadian trade-mark filings indicates that some real estate developers in Canada are choosing to protect as trade-marks, not only their company or business names, but also the marks they have chosen for individual developments. Reflecting a more conservative industry, these trade-marks are not as edgy or creative as some of the new wine industry trademarks. However, in a competitive marketplace, this may change as developers start to see the benefits of distinguishing their projects from those of the competition and targetting specific categories of brand-conscious prospective buyers.

Recent applications and registrations include,

OSCAR (Application No. 1293873)
SPIRE (Registration TMA591399)
THE VINE (Registration No. TMA668332)
THE LAUREATES (Registration No. TMA565184)
ROUGE (Application No. 1294465)
COCONUT GROVE (Application No. 1294937)
NEW TIMES SQUARE (Registration No. TMA590427)
SOPHIA (Registration No. TMA666909)
MODE (Registration No. TMA648830)
UNIVERSITY HEIGHTS (Registration No. TMA649239)
YALETOWN PARK (Registration No. TMA627657)

The time may yet come when not every Canadian city has a PARK PLACE and a BAY TOWERS, although some of the above marks continue the practice of developers using names that are the same or similar to names used by other developers, either previously in the same geographic market or in different geographic markets.

A developer’s business or corporate name normally has a shelf life that’s longer than any single development. In many cases the name of the developer is featured as much (or more prominently) in the marketing of each development than is the name of the development itself. Because of this, the protection of such corporate or business names is likely as or more important than the protection of marks for specific development projects, particularly where the marks for development projects are not distinctive.

As creative marketers begin to shake up the industry with more interesting and distinctive marks for specific projects, the need to protect these distinctive project marks will no doubt increase.

900,000th Mark Registered Under International Trademark System

By In Foreign Protection, Registration

A recent press release from WIPO (the World Intellectual Property Organization) heralds the 900,000th registration under the International Trademark System, commonly known as the Madrid Protocol or system.

The Madrid system allows an applicant from a signatory country to potentially obtain protection for its mark in up to 77 member countries and the European Union by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). An International Registration obtained through the Madrid system can be maintained and renewed through a single procedure at WIPO.

The system is designed to provide a cost-effective and efficient way for trademark owners to secure protection for their marks in multiple member countries through the filing of one application. While there are debates about how well the Madrid system attains that goal, it certainly gives applicants from member countries another powerful option for international trade-mark protection strategies.

Unfortunately for many Canadian trademark owners (namely those without a presence in a Madrid protocol signatory country), this option is not available to them because Canada, alone among most developed (and many developing) countries is not a signatory to the Madrid Protocol, nor is it likely to be for at least several years. The recent accession of both the U.S. and the EU to the Madrid system has awoken the Canadian Intellectual Property Office (“CIPO”) to the need for Canada to seriously consider joining, but the process is moving very slowly. In 2002, CIPO published an analysis of the issues that need to be addressed in order for Canada to acede to the Madrid Protocol and in 2005 CIPO solicited comments from Trade-mark professionals as to the proposed modernization of Canadian Trade-mark law, including adherence to Madrid. The issue has gained little public attention and given the other priorities of the minority governments in Canada of the past several years, it’s likely to languish for several more years.