Olympic Trademark Legislation

The Canadian government has now come forward with new legislation to prevent unauthorized persons from marketing their wares and services in association the 2010 Olympic and Paralympic Winter Games. As noted in an earlier blog, similar legislation has been introduced prior to other Games, including legislation introduced by Italy prior to the 2006 Turin Winter Games.

The Olympic and Paralympic Marks Act (Bill C-47) received a first reading in the House of Commons on Friday, March 2, 2007. Most importantly, section 3 of the Act prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that resembles an Olympic or Parlympic mark. Note the reference to “in connection with a business”. Schedules 1 and 2 of the Act set out lists of the Olympic and Paralympic trademarks.

There are exceptions to this prohibition, including, of course, use by the Canadian Olympic Committee and Canadian Paralympic Committee and persons acting with their consent, but also excused are owners or licensees of marks that were being used prior to March 2, 2007.

Section 3(5) of the Act specifically allows for use of the Olympic trademarks in news reports and “for purposes of criticism”.

Section 4 of the Act prohibits anyone from promoting or otherwise directing public attention to a business in such manner as to lead the public into believing that there is a connection with the COC or CPC. A court must take into consideration the use of a combination of the expressions set out in Part 1 of Schedule 3 of the Act (Games, 2010, Twenty-ten, 21st, Twenty-first, XXIst, 10th, Tenth, Xth, Medals) or a combination of an expression in Part 1 of Schedule 3 with any of the expressions in Part 2 of Schedule 3 (Winter, Gold, Silver, Bronze, Sponsor, Vancouver, Whistler).

Potential remedies include injunctions (in respect of which irreparable harm need not be proved), damages, punitive damages, publication of corrective advertisements and destruction of wares.

The Act includes a “sunset clause” such that Schedule 2 is repealed on December 31, 2010. In the interim, and assuming the legislation is passed, it will be interesting to monitor just how effective the legislation proves to be.

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Access To WHOIS Information To Be Restricted?

A story on law.com today states that the Internet Corporation for Assigned Names and Numbers (ICANN), which controls the registries for domain names with the popular .com, .net and .org top level domain extensions, will likely be voting in September on a proposal to limit the public availability of WHOIS information. This proposal has sparked a battle between trademark owners and their legal representatives on the one hand, who favour more disclosure, and privacy advocates on the other, who favour less disclosure.

The ICANN council is considering three options: Continue to let domain name owners’ personal, technical and administrative contact information be viewed by all Internet users; display only the name and country of an owner and allow that person or entity to designate additional information for a point of contact; or keep the current system and allow owners to cloak contact information only if there’s a risk to a registrant’s personal safety.

 See our post of February 27, 2007 for details on the status of the proposal to restrict public access to WHOIS information of registrants of .ca domain names.

UDRP Decisions UP, CDRP Decisions Down

The National Arbitration Forum (NAF), a leading dispute resolution service provider for domain name disputes, reports that the number of dispute resolution proceedings it handled involving domain names rose significantly in 2006, with a 21% increase over the number of disputes that it handled in 2005. The majority of cases involved domain names with the popular .com, .net, .org top level domains, which are handled under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Contrast that with the situation in Canada, where the number of CDRP (Canadian Internet Registration Authority Domain Name Dispute Resolution Policy) decisions in 2006 handled by all dispute resolution service providers involving the .ca country code top level domain actually fell from the number of such decisions in 2005, despite the continuing and increasing growth in the number of .ca domain name registrations.

Keep in mind that NAF also handles disputes over other less popular top level domains, such as .biz, .info, .pro and .mobi, as well as a number of country code domains, including .us, .tv and .cc (but not .ca domain names), which may account for some of its increased activity, however the bulk of its work continues to be disputes under the UDRP.

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