Jeffrey Vicq

Psion Capitulates In Netbook Battle

By In Protection & Enforcement, Registration

Following up on a story we reported earlier this year, Mississaugua, Ontario-based Psion Teklogix appears to have resolved its trademark dispute with Intel Corporation by undertaking to withdraw all of its NETBOOK trademark registrations.  As regular readers of our blog will recall, Psion’s registrations for NETBOOK were being challenged in a number of jurisdictions, including Canada, by Intel and others on the bases of non-use and non-distinctiveness.

While the Psion press release makes no specific reference to the terms of settlement, it seems likely that Intel persuaded Psion to formally abandon the NETBOOK brand by providing a cash payment to the Canadian company.  It is not clear to what extent, if any, Dell Inc. – who had joined Intel in attacking Psion’s registrations – was a formal part of any such settlement.

The news of the settlement is not particularly surprising: Psion had a long and expensive row to hoe defending the various actions in the jurisdictions in which it was under attack, let alone asserting its rights around the world to stave off allegations of non-distinctiveness / genericide.  Moreover, Intel and Dell no doubt both had more resources to apply to the case than Psion did.  Given all of that, the cost-benefit analysis pushes one to settlement pretty quickly. Read more

Maple Leaf Melee

By In Case Law, Foreign Protection

A recent CTM case concerning an iconic Canadian symbol caught our attention.

The dispute between American Clothing Associates SA and the Office for Harmonisation in the Internal Market (“OHIM” – the body that administrates the Community Trademark System) focuses upon the Canada’s well-known maple leaf symbol–stylized versions of which appear as part of our own logo, above.

The case considers the extent to which national symbols are afforded protection under the Community Regulation 40/94 and under the Paris Convention.  American Clothing Associates SA (“ACA”) originally sought to register a logo made up of the Maple Leaf symbol, with the letters RW located beneath, for use in association with both goods and services.

OHIM’s examiner refused the initial application concluding that the mark as a whole would improperly connote an association with Canada.  ACA appealed and lost again, the Appeal Board noting that the inclusion of the RW element in the mark did not avoid the application of Article 6ter of the Paris Convention which prohibits the use of marks incorporating State indicia without consent. Read more

Ch-ch-ch-ch Changes? CIPO’s Client Consultations Continue

By In Legislation, Registration, Trademark Oppositions

The Canadian Intellectual Property Office has engaged in a number of client consultations recently.  Considering changes to Section 45 practice, changes to practice before the Opposition Board – even changes to the method by which it publishes practice notices – CIPO has been soliciting client and stakeholder views.  (On the Opposition point, CIPO’s changes to practice before the Board came into effect on March 31, 2009.)

CIPO is now engaged in a new consultation – this one concerning three separate issues.  The first concerns deadlines for responding to Examiner reports.  CIPO is proposing to extend the deadline for responding to such reports from four to six months.

The second concerns deadlines for responding to CIPO’s requests for outstanding information concerning transfers.  Here, CIPO is proposing doing away with such deadlines altogether, though of course the transfer will not be effected it CIPO’s records until all required materials have been provided. Read more

CIPO Releases Its Plan

By In Legislation

The Canadian Intellectual Property Office recently released its 2009-2010 Business Plan to the public. The Plan is designed to direct CIPO toward its goal to “be a leading intellectual property office that is recognized for excellence in its products and services while strengthening Canada’s innovative capacity through ongoing quality improvement and continuous development of employees.”

For trademark practitioners, owners and other stakeholders, the Plan contains a few interesting tidbits:

  • the Trade-mark Opposition Board plans to establish a new service standard of four months from the date of a hearing for the issuance of final decisions of the Registrar in both section 45 and opposition cases;
  • the Board also plans to use 2009 to create an action plan relating to the goal of making section 45 and opposition case decisions available online;
  • similarly, CIPO as a whole will use 2009 to assess activities and determine requirements related to planned support of:
  • the online filing of extension of time requests for the Trade-marks Opposition Board;
  • the online filing of extension of time requests at the examination stage for trade-marks;
  • certain enhancements to the electronic application filing system for trade-marks; and
  • the electronic transmission of examiner’s reports and trade-mark correspondence.

The Trade-marks Branch also plans to conduct a feasibility assessment related to the prospective implementation of a program to assist unrepresented owners seeking trade-mark protection, similar to programs currently offered by each of UK’s Intellectual Property Office and IP Australia.

Payless to Pay More?

By In Case Law, Famous Marks, Protection & Enforcement

Collective Brand Inc., operator of the well-known US discount shoe retailer Payless ShoeSource, is again under attack from German-based sporting apparel manufacturer adidas. In a landmark US decision last spring, adidas persuaded an Oregon jury that Payless had wilfully infringed adidas’ trade mark and trade dress in various sneaker designs, and was awarded over $300 million in damages and disgorged profits. This award represented what was thought to be the largest ever US trademark verdict. On appeal, the award was later reduced to just over $65 million – still, a significant award and an important victory for adidas.

Flush from its win against Payless in the US, adidas has elected to try to repeat its success in Canada. Earlier this month, Adidas AG and Adidas Canada Ltd. filed a claim against Collective Brand Inc. in Federal Court. In Canada, adidas’ action will hinge on Payless’ alleged infringement of the rights adidas enjoys in the well-known 3 Stripes Design, and particularly the rights afforded adidas from these three trademark registrations.

If adidas is successful, it is not likely to be awarded damages anywhere near the amounts it secured in the US; nonetheless, the case will be of interest to both trademark lawyers and sneakerheads alike. We’ll keep all of you posted on material developments.

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.

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