Maintained by Clark Wilson LLP

Flattery is Still Infringement

A story in the Globe and Mail this week illustrates that the use of a popular logo may be a form of flattery to the owner, but the owner will still be concerned about infringement of its IP rights. Gordon DeRosa, after 21 years of public service, is again running for re-election to the Trail City Council, Trail being a community of 8000 in the interior of British Columbia. Mr. DeRosa’s election signs used the well known Energizer Bunny, and the slogan “Re-elect DeRosa, Still Energized”. The Eveready Battery Company, which owns an extensive trademark portfolio in Canada, sent a cease and desist letter to Mr. DeRosa, advising that the use of the Energizer trademarks constituted violations of the company’s IP rights. Mr. DeRosa has taken down his election signs.

If a lawsuit had ensued it might have been argued that Mr. DeRosa was not using any trademarks in association with wares and services since he was running for political office, but presumably Eveready would have succeeded on the basis of copyright infringement.

Canada™: Second Best?

Continuing on with the recent spate of brand rankings we’ve commented upon recently, news that Canada has been rated the second best global brand in the 2008 FutureBrand Country Brand Index. The Index purports to be a comprehensive study, combining the views of 2,700 business and leisure travelers from nine countries together with expert opinions and relevant statistics to determine the world’s brightest country-brands.

The winners? For the third year in a row, Australia. The United States was nipping at Canada’s heels to finish third, with Italy and Switzerland rounding out the top five.

Review of the report’s various categories suggests that Canada’s second place finish was largely the product of generally consistent rankings across the board, with bright spots to be found in such categories as “Ease of Travel” (where we finished third), “Outdoor Activities and Sports (where we also finished third), “Families” (where we finished first) and “Easiest In Which To Do Business” (where we finished first, just ahead of the US). Read more

The Perils of Insufficient Evidence in Trademark Cases

Whatever the advantages of not submitting certain evidence, such as expediency, complexity, or risk of ambiguity, the Federal Court of Appeal decision, Shell Canada Limited v. P.T. Sari Incofood Corporation demonstrates the significant risk of this course of action.

Shell Canada opposed the registration of JAVACAFE in relation to coffee products, arguing that it was not distinctive, but rather descriptive of the geographical source of the coffee products. Submitting various evidence regarding the definitions of the component words, the parties curiously omitted any evidence regarding the meaning of the word java in French. Noting this omission, the Registrar looked up the word in a 1968 edition of Larouse, discovered that it meant a type of dance, and concluded that Shell’s evidence fell short of its contention that a Canadian Francophone would associate JAVACAFE with coffee from the island of Java. Read more

Bank Brands Going Bust?

A few weeks ago, we reported on the results of Interbrand’s 2008 Best Global Brands Survey, observing that the survey’s big losers, year-over-year, were financial services companies.

Of course, conditions in that industry have deteriorated significantly since then, so it is no surprise to see that Wachovia Corp. announced a $23.9 billion-dollar quarterly loss earlier today – the largest ever for a bank. And it also comes as no surprise to see that a write-down tied to a loss of goodwill made up a significant part of that loss.

What is notable, however, is the sheer size of that goodwill write-down: set at approximately $18.8 billion dollars, the write-down is more than three times that total value attributed to the Royal Bank of Canada when it was awarded the title of Canada’s most valuable brand in a 2007 Brand Finance study. Read more

Comparing Apple to Apple

A report in the Globe and Mail tells the story of a small Vancouver Island school’s run in with tech heavyweight Apple Inc. in a dispute over the use of the school’s logo. Victoria School of Business and Technology (VSBT) reportedly adopted, three years ago, a logo featuring an apple with a silhouette of a mountain and the letters VSBT superimposed over top. VSBT’s apple has three bumps at the top of the apple, uses the colours blue, white and green quite prominently, and the apple is whole: no bite appears to have been taken out of it, as is the case with Apple Inc.’s well known logo. Apple’s logo, which is the subject of numerous registrations at the Canadian Intellectual Property Office (CIPO) and which has been in use for over 30 years, features a bite taken out of the right side, two bumps at the top and no letters or other figures superimposed on it. In the marketplace, the logo is often depicted in an off-white colour; historically, it also often appeared in stripes and other colours as well.

As is often the case in these disputes, the media is portraying the issue as pitting VSBT’s “David” against Apple’s “Goliath.” The school’s website states that “VSBT is the leading provider of computer and business training for government ministries, corporation and individuals,” and indicates that training is available on both IBM-style personal computers as well as Apple’s MACINTOSH-brand computer systems. At the time of writing, we could locate no record in CIPO’s online trademark database of an application to register VSBT’s logo. Read more

CIPO’s Electronic Services Outage

For those of us who have embraced – and perhaps take for granted – the ease and convenience of filing documents online with the Canadian Intellectual Property Office, the last two days have been trying ones. All systems of the Canadian Intellectual Property Office, including the Trademark Database as well as the Online Filing Portal, were offline from late in the afternoon on September 30th, until earlier this morning, October 2nd. (Even now, the site seems a little shaky: pages load properly one minute and are unavailable the next.)

Recently released trade-mark statistics (which we blogged about a few months back) indicate that just over 45,000 applications were filed in the last twelve-month period for which stats are available. Of these, 90% were filed online. Crunching the numbers, that works out to be approximately 110 applications filed online, each day. Read more

Latest Olympics Trademark Dust Up Is Of Anthemic Proportions

A Canadian Press Story today reports that the Vancouver Organizing Committee for the 2010 Winter Olympic Games (VANOC) has recently filed applications with the Canadian Intellectual Property Office (CIPO) to register the phrases WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as trademarks. These applications are filed based on proposed use in Canada in association with a lengthy shopping list of goods and services. They also claim priority from earlier filed European Community Trademark (CTM) applications, filed with the Office for Harmonization in the Internal Market (OHIM) in March of 2008. Interestingly, the CTM applications are filed in the name of Filemot Technology Law Ltd. and not VANOC.

Canadian readers will immediately recognize WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as phrases from “O Canada”, the Canadian national anthem. Copyright buffs out there might already know that the anthem was long ago placed in the public domain by the Government of Canada pursuant to the National Anthem Act. Read more