Maintained by Clark Wilson LLP

Social Networking & Anne of Green Gables

Anne of Green Gables is widely regarded as a Canadian cultural icon. The wholesome image of the redheaded Anne with a straw hat and pigtails is synonymous with Prince Edward Island, the location of the book written over 100 years ago by L.M. Montgomery. The province jointly owns the Anne of Green Gables trademark with the heirs of L.M. Montgomery and have even established the “Anne Authority” to ensure that Anne’s image is properly protected.

According to a recent news report, a new Canadian children’s website, www.annesdiary.com, has come under wrath for using the unauthorised image of Anne to provide a social networking site for girls between the ages of 6 – 14. The website features an avatar in the likeness of Anne, claiming to be inspired by the much loved Anne of Green Gables novels. A spokesman for the website said that the trademark holders were approached but declined to give their permission to use the Anne image. Prince Edward Island Development Minister said that it takes violations of the trademark very seriously and would pursue the matter vigorously.

Despite the controversy, many parents will welcome the new website because it claims to be one of the most secure websites for children in the world. The site takes the protection of web content for children very seriously and is secured by the use of a biometric fingerprint sensor. According to the website, once a child has enrolled on the site, only they can access their online secure bedroom and diary. Members receive a fingerprint reader using a one-time authentication code thereby registering their identity on the secure database. The fingerprint matrix itself is encrypted and transmitted securely across the Web to authenticate users. Even if someone gets a hold of the fingerprint matrix, it will be undecipherable and unusable to them.

Parents may also use the secure option to register their child on the site by providing details of a Sponsor who is able to verify the age and identity of the child. In order to be eligible, a Sponsor must be known to the child, be a resident of the country in which the registrant lives, and be a recognised professional from the website’s list. Parents must provide an e-mail mailing address and telephone number where a sponsor can be contacted for verification.  Sponsors are e-mailed a one-time Authentication Code which they must use to activate the child’s Anne’s Diary account. This code is used when the child first registers her fingerprint to initialize her account.

A spokesperson for the website said they would wait to hear from the Anne Authority before deciding on the next step.

Premier’s Blogger Battle

Canadian domain name aficionados and Albertan politicos of all stripes have had a chuckle over the edstelmach.ca story the last few days. In case you missed it, popular Alberta blogger Dave Cournoyer (who blogs at daveberta.ca) was threatened by lawyers for Alberta Premier Ed Stelmach, who were agitated that Cournoyer had registered the edstelmach.ca domain name.

Stelmach’s lawyer, a specialist in family and criminal injury issues, claimed that Cournoyer had registered the name in “bad faith” (which would open up a claim under CIRA’s Domain Name Dispute Resolution Policy) and also accused Cournoyer of “misappropriating” Stelmach’s personality, which led Cournoyer to quip: “I’m not sure where Ed Stelmach’s personality is, but I certainly didn’t take it.”

However, in a development under the heading “turnabout is fairplay”, on Wednesday the domain daveberta.com was purchased by Calgary-based financial advisor Andrea Kirby. For a brief period on Thursday, the daveberta.com site was directed to the Wikipedia page for weasels.

For more coverage, including Michael Geist’s comments about the Premier’s poor chances of success, see the list of links at see daveberta.ca.

POM-POM Survives Section 45 Scrutiny

We recently reported on a number of section 45 decisions, the purpose of which is to remove “deadwood” or outdated registered trademarks from the Register. In such proceedings, the burden of proof is on the registered owner of the trademark to demonstrate “use” during the previous three year period in order to maintain the mark on the register.

In the recent Federal Court of Appeal case of Brouillette Kosie Prince and Orange Cove-Sanger Citrus Association, the applicant (the party challenging the registration) appealed the decison of the Registrar with respect to a proof-of-use proceeding. The applicant objected to the quality of the evidence submitted by the respondent (the owner of the registration) both before the Registrar and before the Federal Court of Appeal. The respondent was a grower member of Sunkist Growers, a cooperative that assists in the distribution of its members’ products including invoicing such products to buyers on behalf of its members. The Registrar maintained the registration of the respondent’s mark POM-POM on account of its appearance on packaging when the wares were sold to Canadian distributors. The Federal Court held that it was not necessary for the mark to be seen by the consumers who purchased the wares from the respondent’s customers and the Court of Appeal agreed with this conclusion.

The Federal Court of Appeal held that it need only decide on the issue de novo when additional evidence is adduced that would materially affect the Registrar’s finding of fact or the exercise of his discretion. If new evidence added nothing of significance, but was merely repetitive of existing evidence, the issue was whether the Registrar’s decision could survive a probing examination. As the evidence submitted on the appeal did not raise any new issues, the case was dismissed given the reasonableness of the Registrar’s decision in maintaining the registration of the POM-POM mark.

World of Webkinz

Webkinz, the little stuffed animal toys which may be activated through a code to enter the on-line Webkinz world, are drawing more and more children and tweens into the realm of virtual reality. In the past, many companies have been reluctant to charge children for website access for fear of alienating parents. But the Toronto based Canadian company Ganz may have solved this problem through the powerful brand that is the Webkinz cuddly toy and on-line environment.

Visitors to the free Webkinz website  spent more than one million hours there in November, with the average child clocking up an average of two hours per visit. However, in order to fully access the Webkinz world, parents must pay approximately $15 for a Webkinz real-world pet toy which children may then “adopt” and care for on-line. Users give each toy a gender and a name and can spend “kinz cash” to buy food, clothes and furniture or even to take neglected pets to a virtual doctor.

Ganz have now launched a line of accessories such as cosmetics and clothing items with codes that redeem a prize for the pets’ on-line avatars in order to ensure that the company capitalizes on children’s web time.

Judging A Wine By Its Label: A Trademark Issue

In Sociedad Agricola Santa Teresa Ltda. et al. v. Vina Leyda Limitada, the Federal Court considered what constitutes a place of origin for wine such that the place name cannot be registered as a trademark. At issue was section 12(1)(b) of the Canadian Trade-marks Act which states that a trademark is not registrable if it is “clearly descriptive or deceptively misdescriptive” of the “place of origin” of the wares or services.

Vina Leyda Limitada applied in 2001 to register LEYDA as a trademark and on the evidence before the Registrar in an opposition to such application, the Registrar allowed the application. The Sociedad appealed the Registrar’s decision under section 56 of the Act.

The Court allowed the appeal and held that LEYDA could not be registered. According to Harrington J., “Once the Registrar found as a fact, as he did, that Leyda is a wine producing region in Chile, as a matter of law he was required to conclude on the record before him that the opposition was well founded.” Of concern was the fact that if the registration stood the applicants, wine producers from the Leyda Valley, would not be able to refer to that fact on their labels or in their promotional literature and might be limited to calling their wine Chilean red or white. The judge also noted that “producers from a specific region want to promulgate their area in the belief that their wine is superior to the wine of that country as a whole”. A general appellation could lead a consumer to believe a wine is “plonk”.

In reaching his decision Harrington J. relied on a 1970 Supreme Court of Canada decision, Home Juice Co. v. Orange Maison Ltee, for the proposition that “a shrewd trader should not be permitted to monopolize the name of a foreign wine district in Canada by registering it as a trademark”. He also distinguished Prosciutto di Parma v. Maple Leaf Meats Inc. in which the Federal Court of Appeal refused to expunge the trademark PARMA since it had been used in Canada for 39 years and registered for 26. LEYDA had not been in use in association with wine in Canada at the time the application was filed.

On an appeal under section 56 the parties may introduce evidence that was not before the Registrar and the Sociedad put forward that “Vallee de Leyda” was an appellation of origin in Chile. This evidence was taken into account, but Harrington J. specifically noted that whether a name signifies a geographical area under section 12 of the Act and whether that area produces wine are not contingent upon a governement decree.

Finally, it is worth noting that Harrington J. may very well know something about wine. He not only references the origin of the word “plonk” (“There are different legends as to the origin of the word ‘plonk’. The one I prefer is that a Monsieur Plonque was the purveyor of cheap wine to British Troops in World War I.”), but he also begins his reasons stating, “One may not be able to judge a book by its cover, but one should know something about a bottle of wine from its label; the more the better.”

Turning Over A New …Sheaf?

Thanks for the warm welcome, all. For my first post, I thought it apropos to cover a story originating in the province of my birth, Saskatchewan.

A recent attempt by Saskatchewan’s new government to introduce a new provincial logo clearly demonstrates the need to have a clear and coherent branding strategy in place before rushing headlong down the path to change.

In early December, members of the province’s governing party, the Saskatchewan Party, announced their intention to change the province’s logo. In a move reminiscent of the Tory’s adoption of the Canada’s New Government slogan shortly after they took power in 2006, Saskatchewan’s new government decided that the iconic wheat sheaf symbol had to go. Deputy Premier Ken Krawetz criticized the logo, calling it “dated” and claiming it was no longer an accurate reflection of the province and its broad-based economic boom. (The logo was originally introduced by an NDP-led government under Allen Blakeney in the 1970s, though public notice of the province’s adoption of the sheaf was not issued until 1982.)

In a somewhat curious twist, Krawetz did not introduce a replacement for the sheaf; instead, he urged government ministries to use the province’s shield of arms or its coat of arms until a new logo was developed. Ironically, these marks each prominently depict three wheat sheaves.

However, Krawetz’s announcement was met with, to put it lightly, something less than broad-based enthusiasm. Despite a few local newspaper editorials plugging the proposal, it appeared Saskatchewanians were wildly unenthused by the change. Local call-in shows and newspaper editorial boards were flooded by citizens attached to the dear olde sheaf and unhappy with the use of their tax dollars to fund the new logo. (Some citizens, however, took the opportunity to take logo lemons and make lemonaid, proposing that a new au courant logo might include a genetically modified wheat sheaf, a nuclear power reactor, or a Saskatchewan Roughrider puffing a cigar. Personally, I’ve always been partial to this mark but admittedly, it may not be appropriate for the Premier’s letterhead.)

Five days later, after all of the wheat sheaf images were removed from the Government of Saskatchewan’s website, the government succumbed to public pressure and announced it had decided not to change the logo, at least for now. In a confusing and inadvertently humorous news release titled “Wheat Sheaf Logo To Be Retained: New Saskatchewan Government Listens To Public”, Krawetz stated that while he understood some Saskatchewanians were against the change, the logo change had never been a governmental priority, and that for those who oppose changing, it’s not really a matter of whether or not they like the wheat sheaf logo. It was a question of priorities. Whatever that means.

In any event, this story illustrates that altering a brand is a big step that should not be undertaken lightly, particularly when that brand includes a prominent symbol historically associated with the hopes and dreams of an entire province.