March 2009

Trademark Statistics: Another Year in Review

By In Uncategorized

The Canadian Intellectual Property Office released its 2007-8 Annual Report a few weeks back.  A few highlights:

  • over 47,500 applications were filed in the twelve month period ending March 31, 2008, reflecting nearly a 5% increase over the previous year
  • Canada remains the most common country of applicant origin, with over 20,000 applications filed; the US placed second, with over 15,400 applications, while applicants from Germany, the United Kingdom and France rounded out the top 5
  • despite the addition of 24 new Examiners, turn-around times between filing and first exam increased by approximately 1.6 months per application, with the average turn-around time being 6.8 months
  • the number of Statements of Opposition filed increased by 25%, reversing declines seen in the previous three years
  • in contrast, the number of Section 45 (cancellation) notices issued fell to its lowest point in three years
  • interestingly, there was a 41% increase in the total number of trademark assignments filed with the Office.

Further details can be found in the full report, available here.

Yee Shall Seek… Declaratory Judgment

By In Case Law, Domain Name Disputes, Protection & Enforcement, Trademark Oppositions

Updating our previous post on the ROYAL CHINET trademark, the Nova Scotia Supreme Court in CKF Inc v. Huhtamaki Americas Inc. has confirmed “that declaratory relief is specifically available in the context of intellectual property disputes”, notwithstanding that such relief is not expressly provided for in the applicable act. In this case, the Plaintiff launched an action in Nova Scotia seeking, among other things, a declaratory judgment that it as an unconditional owner of certain trademarks in Canada. The Defendant, which commenced its own actions against CKF with respect to the same trademarks in Ontario and Maine, applied to strike CKF’s action on several bases, including that the Court could not grant CKF the declaratory relief it was seeking.

Finding that it had inherent jurisdiction to make the declaratory judgment sought, and that the declaration was not purely “hypothetical” or “speculative” since it related to an actual dispute between parties, and was practically necessary for the resolution of this dispute, the Court refused the Defendant’s application to strike.

Second MP Falls Victim to Cybersquatter

By In Domain Name Disputes, Domain Names

We note an interesting development relating to our recent post on domain name squatting, Cybersquatter Targets MP Keith Ashfield. The Toronto Sun reports that Liberal whip Rodger Cuzner also let his domain name registration lapse, and was surprised to discover that his previously owned domain is now home to a dating and porn website.

This emphasizes once again the need for public personalities (including politicians), as well as trade-mark owners, to diligently manage their online presence.

Proving Trademark Infringement: Absent a Defendant

By In Case Law, Protection & Enforcement

Whether infringement of a trademark and depreciation of goodwill can be established turns on the facts, even if a defendant fails to file a defence or show up at trial. At least the Plaintiffs in a recent Federal Court decision, Salam Toronto Publications and Mohsen Seyed Taghavi v. Salam Toronto, Inc. et al. did not have to pay the Defendants’ costs.

In the absence of a defence and given proof that the Defendants had been properly served, the Court determined that the action was a proceeding in default of defence”, which meant every allegation in the Statement of Claim had to be treated as if it had been denied and the Plaintiff had to demonstrate on a balance of probabilities that the claims were made out.

In Farsi, “Salam” is a word meaning “hello” or “welcome”. The Plaintiffs had been publishing a current affairs newspaper since October 2000 and the Plaintiffs’ trademark, SALAM TORONTO, was registered in 2004 for use in association with wares, namely, newspapers and magazines. The Plaintiffs’ business name, “Salam Toronto Publications” was registered in 2001. The Plaintiffs also had domain names, salamtoronto.net and salamtoronto.ca. Read more

Psion’s NETBOOK Trademark Under Fire

By In Domain Name Disputes, Domain Names, Foreign Protection, Protection & Enforcement, Registration

The dispute over Psion’s NETBOOK trademark registrations has crept further into the mainstream, following recent decisions by Dell and Intel to take legal action against Psion in the US.

For those of you who missed it, Psion is a mobile computing device manufacturer whose head office is located in Mississauga, Ontario, Canada. Psion holds registrations for the trade-mark NETBOOK in Canada, the US, in Singapore, Hong Kong and in the CTM system.

In December, Psion sent letters to manufacturers and retailers in an attempt to “affirm” its NETBOOK trademarks. To this end, the letters requested the recipients to stop using NETBOOK to describe ultra-portable laptop computers.  Psion followed up with similar correspondence to journalists and bloggers in January. Read more