Canadian Trademark Blog

Maintained by Clark Wilson LLP

Can’t Stop, Won’t Stop: CIPO Changes Section 45 Procedures

By In Legislation, Registration

It’s been a busy year for CIPO, and the organization is yet again amending some of its practices.  This time it has s. 45 in its sights.

As regular readers know, s. 45 of the Trade-marks Act provides a mechanism by which an interested party can seek to summarily expunge a registered trade-mark for three years of non-use.  CIPO sought public input on a proposed changes to s. 45 practice earlier this year, and last week introduced its new practice notice, which is slated to come into effect on September 14, 2009.

Like the recent changes to Opposition proceedings, the changes to s. 45 practice appear aimed at streamlining the process.  Most notably, the planned changes limit the extensions of time available for the submission of evidence.  The current standard is an extension of three months with additional extensions available on consent or if exceptional circumstances are shown.  The new standard provides for one extension of four months, and establishes that grants of additional extensions will be rare: neither the the consent of the parties to additional extensions, nor the parties’ engagement in settlement discussions  will be seen by the Office as sufficient reason to provide additional time. Read more

Trademark Clearinghouse To Help Combat Cybersquatting?

By In Domain Name Disputes, Domain Names, Famous Marks, Protection & Enforcement

A story earlier this week reported that the Internet Corporation for Assigned Names and Numbers (ICANN) – the organization charged with oversight of the Internet, including the creation of new generic top level domains (gTLD’s) – is considering setting up a centralized database of trademarks to help combat cybersquatting and other negative domain name registration practices.  The proposed IP Clearinghouse would be a depository for trademarks and provide unified rules for trademark holders to block domain name registrations that include use of such trademarks, unless the applicant can prove that its proposed use will be legitimate.

This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.

Ch-ch-ch-ch changes!

By In Legislation, Protection & Enforcement, Registration

Following up on one of our earlier posts, the Canadian Intellectual Property Office recently adopted a couple of revisions to its examination practices.

Since June 17, the Office has been providing six month periods to respond to Examiner objections, as opposed to the four month window previously provided.  In addition, the Office is no longer issuing ‘doubtful case’ or ‘courtesy letters’ – those letters that were sent to trade-mark applicants identifying co-pending applications for allegedly confusing marks having a later entitlement date.

This latter change reinforces the importance of both having watch services in place, and regularly reviewing the Trade-marks Journal for the advertisement of marks of interest.

Act Quickly to Prevent Use of Your Trade-marks on Facebook

By In Domain Names, Protection & Enforcement

The social networking website, Facebook, Inc. announced on June 9 that it will allow users to personalize their URLs (web addresses) with a unique user name (ie: facebook.com/username).  As of Saturday, June 13, 2009, users can select one username for their personal profiles (and administrators can select one username for each Page).

In an attempt to deter username squatting, Facebook has put several restrictions in place: (1) only users who had accounts as of June 9 are eligible to register a personalized username (those who registered after must wait until June 28), (2) only one username can be selected per personal profile, (3) usernames are not transferable to other accounts, (4) Facebook can remove or reclaim any username at any time for any reason, and finally (5) Facebook will maintain a list of “reserved” usernames of certain trade-marks which will not be available for registration.

This last stipulation may be of particular interest to trade-mark owners.  Facebook has provided trade-mark owners with a form to submit their trade-marks for inclusion on a list of “reserved” usernames which will not be available for registration.  The form asks for a trade-mark registration number which suggests that Facebook only plans to protect registered trade-marks.  It is also unclear whether the form is intended to be used for Canadian (and other) trade-mark registrations, as well as US registrations.

Although there is also a mechanism for reporting infringement of intellectual property rights by a username that has been issued, a proactive approach is likely more efficient.   If you would like to take full advantage of Facebook’s list of  “reserved” usernames, you will have to act quickly: username selection opens to account holders this Saturday, June 13.

We should note, just to add a bit of perspective to this, that Myspace, Twitter and other social networking websites already permit personalized usernames and don’t have similar restrictions in place about the use/reservation of third party trademarks.  So far, such practices don’t appear to have led to widespread abuses or infringement of third party trademark rights.

…and then quickly wanes.

By In Legislation, Protection & Enforcement, Registration

An update to the post below: the Supreme Court of Canada announced this morning that the Scotch Whiskey Association has been unsuccessful in obtaining leave to appeal before the Court.  A panel of three judges dismissed the Association’s leave request, with costs.

As such, the decision from the Court of Appeal will stand: Glenora Distillers will be permitted to register its application for GLEN BRETON.

Whiskey War Waxes On

By In Case Law, Protection & Enforcement, Trademark Oppositions

In several earlier posts, we’ve tracked the ongoing battle between Glenora Distillers and the Scotch Whiskey Association respecting the propriety of Glenora’s use of the word GLEN in its trademark GLEN BRETON.   Most recently, the Federal Court of Appeal found that Glenora was able to use GLEN without misleading Canadian consumers into thinking its product originated in Scotland.

News today that this brouhaha may not be over quite yet: it appears that the Scotch Whiskey Association has sought leave to appeal to the Supreme Court of Canada.

Stay tuned!

Free iPhone Bike App Sparks Dispute

By In Branding, Domain Name Disputes, Protection & Enforcement

The Montreal Gazette and La Presse each recently reported on the decision by the Stationnement de Montréal (“SdM”) to assert intellectual property rights against the developer of an iPhone application which pinpoints the locations of public-use bicycles made available for rental by the SdM.

Sparko.ca developed a free iPhone application called BixiMobile, together with a supporting webpage located at www.biximobile.com, to assist online users with finding Bixi bike locations throughout Montreal. The application launched on Sunday; by Tuesday, Sparko had received a cease-and-desist letter from Stationnement de Montréal’s counsel directing the company to withdraw the application, and hand over the domain.  Perhaps more interestingly, it appears SdM have additionally directed Sparko to hand over the code that supports the iPhone application. Read more