900,000th Mark Registered Under International Trademark System

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.

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Protected Poppies

In Edmonton, the local branch of the Royal Canadian Legion is concerned about the sale of white poppies with the word “peace” in the middle. The red poppy has come to symbolize Remembrance Day, when Canadians honour their war dead.

The Legion has had its poppy design registered as a trade-mark since 1948. The poppy design is also protected by federal legislation (s. 15 of the the Royal Canadian Legion Act, S.C. 1948, c. 84, as amended by S.C. 1980-81-82-83, c. 179) which provides that the poppy design as depicted is a mark of the “dominion command” and a registered trade-mark under the Trade-marks Act.

Anti-war activists are offering white poppies with the word “Peace” for sale in Edmonton, claiming that such poppies have been sold as a peace symbol since 1933. The Legion is alleging infringement of its trade-mark rights and arguing that the sale of such poppies politicizes the Legion’s symbol of sacrifice.

Domain Tasting Turning Sour?

Will a “re-stocking fee” end domain name tasting?

As many know, top-level domain name registrar agreements with ICANN provide for a five-day grace period before the registrars have to pay for the domain names that have been registered with them.  This policy was instituted to protect customers who may have made a mistake in a registration (such as a spelling error), allowing them to get a full refund. However, domainers (many of them registrars) have taken advantage of this loophole by registering thousands of the expiring domains that are released every day and using the grace period to see if a domain is likely to generate revenue greater than the $6 registration fee. If it appears that a domain doesn’t generate sufficient traffic to warrant monetization, the domain is returned within the five-day grace period for a full refund. If the domain does appear to attract traffic, it’s linked to pay-per-click advertising.

While the operators of the registries are spending time and effort to process these temporary registrations, they aren’t complaining as they likely benefit from access to the increased credit deposits they hold on behalf of their many registrar clients that are participating as domain tasters. Trademark owners are the primary critics of the current system, as they allege that it creates a secondary market for marks that might otherwise be registered to them and propagates cyber and typo-squatting.

PIR, the registry which oversees the .org domain names, recently requested an amendment to its registry agreement to charge an excess deletion fee of five cents for every domain registered with it that is returned within the five-day grace period “…when the number of such deleted registrations is in excess of nintety percent (90%) of the total number of initial registrations…”. ICANN posted PIR’s request for such amendment for public approval and was to vote on the amendment, among other agenda items, at its October 18, 2006 meeting. The vote has, for unspecified reasons, been tabled until ICANNS’s November 18, 2006 board meeting. Considering that such an amendment is controversial and could affect the revenues received by ICANN from new domain registrations if it’s applied to the other more commercial registries (including the .com registry), it is not surprising that ICANN is perhaps still considering the amendment carefully.

The grace period for cancellation of .ca domain names is seven days. The Canadian Internet Registration Authority’s (“CIRA”) policy states that the Registrar submitting a cancellation request is responsible for ensuring the request is “made legitimately and in good faith, only to correct typographical error(s).” As well, a registrar is only permitted to submit a limited number of cancellation requests. There has been talk of CIRA requiring registrars to complete forms for each cancellation request but there’s nothing more concrete at this point.

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors