Maintained by Clark Wilson LLP

London Olympic Brand Under Fire

We recently reported on concerns that the Vancouver Organizing Committee for the 2010 Olympic Games has regarding ambush marketing.  Ambush marketing occurs when persons who are not properly licensed, market their wares and services in a manner which suggests a connection with the Games, often resulting in trade-mark infringement of protected Olympic marks.

Now it appears the that London Organizing Committee for the 2012 Olympic Games may face the opposite problem. The official emblem for the 2012 Olympics, which is a coloured jagged design based on the date 2012, was unveiled on Monday. However, animated footage promoting the brand launch had to be quickly removed from the organizers’ website amid fears it could trigger epileptic fits. The particular footage showed a diver diving into a pool which had a multi-colour ripple effect. The emblem itself, which cost £400,000, is also attracting the wrong kind of attention. Only two days after its launch, nearly 50,000 people had signed an on-line petition to have the logo scrapped, describing it as “ridiculous” and “an embarrassment to London”. The UK Daily Mail newspaper called it “the work of a painting chimp”.

There was controversy when the symbol for the Vancouver Games was first introduced, but that was mild in comparision.

DIRT SHIRT Airs Dirty Laundry

In Coastal Culture Inc. v. Wood Wheeler Inc., Coastal appealed a decision of the Registrar rejecting its opposition to the registration of the trademark DIRT SHIRT by Wheeler.  Wheeler applied to register the trademark DIRT SHIRT based upon use in association with its wares and services since May 1997.  Coastal opposed on the basis that Wheeler’s alleged use of the DIRT SHIRT mark was based on prior use of the marks P.E.I. DIRT SHIRT and THE ORIGINAL P.E.I. DIRT SHIRT.Coastal submitted that Wheeler should not be able to remove components of its trade-mark in order to rely on the date of claimed first use.  Coastal further submitted that the words “THE ORIGINAL P.E.I.” and “P.E.I.” formed the first part of the trademarks and were a dominant part of those marks.  Wheeler submitted that the DIRT SHIRT mark was the dominant feature on its wares, in spite of the addition of the words “P.E.I.” and “THE ORIGINAL” and submitted that this minor deviation did not constitute non-use of the mark, and should not disentitle it to registration. 

The Federal Court agreed with Coastal, granted the appeal and refused Wheeler’s application to register the trade-mark DIRT SHIRT.  Although the Federal Court accepted that the words THE ORIGINAL may be a minor variation of the alleged mark, it held that there was no evidence that Wheeler ever sold wares with the DIRT SHIRT mark, absent P.E.I.  The Federal Court concluded that the word P.E.I. had always been an element of the alleged mark, and thus the use of the trade-mark DIRT SHIRT, as a standalone mark, was not established.

Rare Look Into The World Of Domainers

A recent CNN article shines a spotlight on the rarely seen world of top professional domainers, and the tactics they’ve created to capture their sizable portions of cyberspace. The story includes details on the workings of Cameroon’s .cm country code domain, so valuable because of its resemblance to the .com top level domain. Interesting to note that several of the domainers profiled in this article live here in Vancouver or other parts of British Columbia.

Recent Trademark Court Decisions

There were three recent trademark decisions from the Canadian courts that readers may find of interest:

Expungement Allowed – In Candrug Health Solutions Inc. v. Thorkelson, Candrug and Pharmawest commenced identical applications and sought expungement of the respondent’s trade-marks in Federal Court. The proceedings were consolidated and Candrug discontinued its application. Therefore, Pharmawest was the sole applicant.

The respondent had applied and been issued registration in May 2003 for the trade-marks CANADA DRUGS and CANADADRUGS.COM. The respondent had disclaimed the exclusive right to use the words “Canada” and “Drugs” apart from the trade-marks. The Federal Court agreed with the applicant and expunged the trade-marks CANADA DRUGS and CANADADRUGS.COM on the basis that they were both clearly descriptive and deceptively misdescriptive under section 12(1)(b) of the Act. The respondent was unable to discharge his onus under section 12(2) to show the marks had acquired distinctiveness as of the date the application was filed. Therefore, the marks were not registrable and were ordered expunged.

Damages Reduced on Appeal – In 2703203 Manitoba Inc. v. Parks, the Nova Scotia Court of Appeal allowed an appeal in part and reduced the quantum of damages for copyright infringement, passing-off and interference with contractual relations awarded by the trial judge. The Court of Appeal upheld the trial judge’s finding that the appellants infringed the respondent’s copyright in the publication, Coffee News, by producing and distributing the publication, Flying Cow, in the form they did.

Witnesses at trial testified that the first several issues of the Flying Cow were published by the same printer as Coffee News and were identical in every respect including design, format, and quality and colour of the paper. Only the editorial content and the mast-head were different. The Court of Appeal also paid considerable deference to the trial judge’s advantage of seeing and hearing the witnesses and upheld the trial judge’s conclusion that the respondent was entitled to damages from the appellants for passing-off.

Referring specifically to the testimony of several witnesses, the trial judge concluded that the appellants had devised a strategy of lies and deceit in producing Flying Cow as practically identical to Coffee News, with the objective being to cause confusion so that advertisers, distributors and readers may be persuaded that the two publications were sister editions rather than competitors.

The Court of Appeal did, however, take issue with the trial judge’s calculation of damages as there was limited explanation or justification of how the amounts were arrived at. The Court of Appeal reviewed each amount and reduced the trial judge’s order of general damages from $139,000 to $70,500 and punitive damages from $100,000 to $40,000.

Challenging Official Marks – In See You In? Canadian Athletes Fund Corporation v. Canadian Olympic Committee the Applicant sought judicial review of the Registrar’s decision to grant the COC two official marks, SEE YOU IN BEIJING and SEE YOU IN VANCOUVER. The Applicant was incorporated in 1997 to raise money for Canadian athletes and had used marks such as SEE YOU IN ATHENS in the past and had applied to register the two marks at issue. The Federal Court agreed with the Registrar that the COC was a public authority since there was a significant degree of public control over it’s ongoing activities and the organization existed for the public benefit.

However, the Federal Court also concluded that a mere statement by the public authority that it had adopted and used a mark was not sufficient to prove that such adoption and use had actually occurred. A negative inference could be drawn from a failure to provide details regarding alleged adoption and use. Moreover, any such evidence must show an element of public display. Since the COC had not established adoption and use at the relevant time, the Registrar’s decision to publish notice of the adoption and use by COC of the marks as official marks was quashed. We understand that the COC is considering an appeal of this decision.

.CA Domain Hits 20 Year Milestone

20 years ago today, the Internet Assigned Numbers Authority (IANA) delegated the .CA domain to John Demco, then of the University of British Columbia (UBC) Computer Sciences Department. The Vancouver Sun reports that, on May 14, 1987, the commercialization of the Web wasn’t on Demco’s or anyone else’s radar – in fact the Web as we know it wasn’t even in existence. Demco operated the .CA domain for 13 years on a volunteer basis, charging no fees for .CA domain registrations.

Today, the .CA domain is the 13th most popular country code domain in the world, with over 837,000 registrations, Demco is a director of one of the largest .CA Registrars and the Canadian Internet Registration Authority has responsibility for the .CA Domain, which it took over from UBC in 2000.

8,500 Trademark Lawyers Under One Roof?

As Michael Atkins of the Seattle Trademark Lawyer recently reported, the International Trademark Association (INTA) held its annual meeting in Chicago last week. More than 8,500 trademark professionals were under one very large roof of the McCormick Place Convention Centre. Authors from the Canadian Trademark Blog were also in attendance, running from meetings to receptions to educational sessions, from morning ’til (late) night and occasionally taking in some of the great sights of the Windy City, typically while taxiing from one venue to the next.

As well as a great opportunity to meet with those trademark professionals who do such a great job of protecting our client’s interests in other countries, it was interesting to see the home base of some very well known marks, such as WRIGLEY’S, OLD NAVY, SEARS and of course all the great sports teams such as the CUBS, WHITE SOX, BEARS, BULLS and BLACK HAWKS.

Not surprisingly, the issues highest on everyone’s radar relate to protection of trademark rights on the Internet, with the rapidly developing area of keyword advertising being a very hot topic.

Wine Trademark Trends

We recently reported on the increased appearance of creative trademarks for wine, based on applications to the Canadian Trade-marks Registrar over the last few months. Thanks to the creative talents of wine marketing trendsetters like B.C.’s own Bernie Hadley-Beauregard of Brandever Strategies, this movement appears to be continuing.

Recent applications include some animal references such as SPEEDY TURTLE (Application No. 1,299,250), FOUR EMUS & Design (Application No. 1,280,221), CAT’S TAIL (Application No. 1,305,983) and RED KANGAROO (Application No. 1,277,928).

Many Canadian companies have taken the lead with some less traditional names for wine appearing as recently advertised marks in the Canadian Trade-marks Journal. They include: from Ontario, BARE NAKED (Application No. 1,302,240, but apparently opposed by Bear Naked, Inc.), and from Québec, SEXY LIZARD (Application No. 1,299,249) and LOST BIKINI (Application No. 1,299,255), giving new meaning to the phrase “in vino veritas“. Other applications showing a little more restraint include LITTLE BLACK DRESS (Application No. 1,282,547) and QUEEN OF HEARTS & Design (Application No. 1,300,388).

Despite the move to more creative wine brands, the more prevalent trend seems to be in favour of old world references. Many recent applications for trade-marks for wines in Canada refer to the foreign language names of origin, invoking images of warm Mediterranean climates and rambling vineyards and include: from France, TERRA DI CORSICA (Application No. 1,295,086), from Italy, BELLA TAVOLA (Application No. 1,293,966) and TORRAE DEL SALE (Application No. 1,303,138), from Spain, GRAN SANGRE DE TORO (Application No. 1,287,621), GRAN VIÑA SOL (Application No. 1,287,627) and MAS LA PLANA (Application No. 1,287,622), from Portugal QUINTA NOVA DE NOSSA SENHORA DO CARMO (Application No. 1,287,990), from Quebec, AMBROZZI DI CHANTIO (Application No. 1,264,858), from Argentina VALLE PERDIDO & Design (Application No. 1,295,840). ¡Salud!