Neil Melliship

Liberals’ Shift To Green Hits Trademark Roadblock

By In Branding, Protection & Enforcement

Canada’s federal Liberal Party, the official opposition to the ruling Conservatives, has been sued by a Toronto environmental consulting and supply company called Green Shift Inc. for alleged misappropriation of that company’s corporate name and trademark, GREEN SHIFT. CBC is reporting that the owner of Green Shift Inc. registered the company name in 2001 and is seeking $8.5 million for “general and special damages” and a further $250,000 for aggravated and punitive damages. The lawsuit also seeks a Court injunction to stop the Liberals from using or displaying the words “Green Shift” or any other trademark or domain name that is similar to that used by Green Shift Inc.

Under leader Stephane Dion, the Liberals have made environmental issues a major thrust of their platform for the next election, which "pursuant to fixed date election legislation" will be held on or before October 19, 2009. As a part of their initiative, the Liberals recently launched “The Green Shift”, the details of which are set out at the website www.thegreenshift.ca

Green Shift Inc. claims that it provides consulting services to different governments across Canada, and that in order to continue doing so it needs to be seen as neutral in its political affiliations. The company claims that the Liberals’ adoption of the words “Green Shift” is its causing clients, potential clients and the general public to erroneously conclude that the company has aligned itself with the Liberal party. Read more

New .CA Whois Policy Now In Place – With A Twist

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

In a recent post, we reviewed the pending changes to the .CA Whois policy. On June 10, 2008, those changes were implemented. The biggest change is the cloaking of most of the Whois information for individual registrants, regardless of whether the domain names of such registrants are being used for commercial, unlawful or other purposes. In response to concerns of both law enforcement officials and the owners of intellectual property rights, CIRA has also implemented special procedures to permit the disclosure of personal information about individual .CA Registrants, provided various requirements are met.

For intellectual property owners, those requirements are numerous, including that the Requestor must have a good faith “Dispute” (as defined) in process with the Registrant, the Requestor must agree to provide CIRA with whatever supporting documentation CIRA may require from time to time, the Requestor must have attempted to send a message to the Registrant through the Interested Party Contact Procedure no less than 14 days prior to this request with no resolution of the Dispute.

The term “Dispute” is exhaustively defined and requires that a Requestor reasonably believe in good faith that a Registrant’s domain name and/or its content (presumably this reference to content is to content of a website that the domain name in question links to, rather than the content of the domain name itself) infringes the Requestor’s registered Canadian trademark, copyright or patent or registered Canadian (Federal or Provincial) corporate, business or trade name. A Dispute can also involve the use of the Requestor’s personal information without their knowledge or consent to commit identity theft.

CIRA Announces Formal Revisions To Implement New WHOIS Policy

By In Domain Name Disputes, Domain Names

The Canadian Internet Registration Authority has issued a news release announcing revisions to a number of its policies, rules and procedures, which are required to formally implement its new WHOIS Policy. These revisions will become effective on June 10, 2008. As reported in an earlier posting, the changes to the .CA WHOIS Policy will permit individual registrants of .CA domain names to not publicly disclose their WHOIS information.

Round 2 Won By Scotch Whisky Association

By In Case Law, Protection & Enforcement, Trademark Oppositions

As a follow up to earlier postings on the ongoing battle between the Scotch Whisky Association (the “Association”) and the Canadian distillers of GLEN BRETON single malt whisky, the Association is reporting today that it has won its appeal to the Federal Court of Canada.

The Trade-marks Opposition Board denied the Association’s opposition to the application by Glenora Distilleries of Nova Scotia to register the mark GLEN BRETON, on the basis that, in the Opposition Board’s view, Canadians would not be confused by the use of the word GLEN in the mark, such that they would think they were purchasing Scotch Whisky. The Association appealed that decision to the Federal Court.

During the appeal, the Association produced evidence that GLEN BRETON was misdescribed in various retail outlets, newspaper articles, pricelists, menus and websites as a Scotch Whisky and the Federal Court agreed with its submissions that Canadian consumers would likely be confused that they were purchasing a Scotch Whisky when that was not the case.

Stay tuned for Round 3 of this battle, as CBC reports that Glenora Distilleries is already planning to file an appeal of the Federal Court decision.

Our Blogging Team Is Growing

By In Uncategorized

We’re pleased to welcome two new contributors to the Canadian Trademark Blog, namely Niamh Pollak and Jeffrey Vicq.

Niamh was called to the Bar in Ireland in 2004 and more recently in British Columbia. As an associate with Clark Wilson LLP’s Technology and Intellectual Property Practice Group, her practice will focus on trademark and copyright law, domain name disputes, intellectual property licensing and digital media.

Jeffrey recently completed an LLM at the University of Ottawa with a concentration in Law and Technology, before which he practised for a number of years with another Vancouver law firm. He’s a registered Canadian Trademark Agent and his practice at Clark Wilson LLP will focus on intellectual property and privacy law issues, including trademark prosecution, computer hardware and software licensing, distribution, outsourcing, maintenance and purchase contracts.

With two more contributors we hope to be able to deliver more content to our readership.

Best wishes for the holiday season!

City and Mayor Settle Up

By In Registration, Trademark Oppositions

In our posting of June 25, 2007 we reported on an application by the Mayor of the City of Vancouver to register the mark ECODENSITY in his own name. The application raised a few eyebrows because on the face of it, the program that the mark related to appeared to be one that the City had funded and it wasn’t clear why the Mayor would be filing an application in his own name rather than in the name of the City.

Following the advertisement of that application, the City of Vancouver Councillor’s Office filed an Opposition. According to the Canadian Intellectual Property Office online database, matters seem to finally have been resolved between the City and its Mayor, as the application has now been assigned to the City. As one of our readers has noted, the open question now is whether that application, which was based on proposed use, or any resulting registration will be valid, if in fact the Mayor, as he claimed in a news report at the time, never had the intention to use the mark himself.