Foreign Protection

Red Cross Lawsuit Settled

By In Foreign Protection, Protection & Enforcement

In an earlier post discussing the protection of the Red Crystal in Canada, we noted that the American arm of the Red Cross movement had been sued by Johnson & Johnson over its licensing of the iconic red cross emblem to for-profit companies for use on commercial products.

In a pair of court decisions–one released last November and in a second released in in mid-May–the court dismissed the bulk of Johnson & Johnson’s claims that the American Red Cross could not use the symbol in commercially competitive activities.

On Tuesday, the parties announced that they had settled the outstanding matters in their dispute. Though the terms of settlement were not released, both the American Red Cross and Johnson & Johnson will continue to use the emblem in conjunction with their endeavors.

Trademark Statistics: The Year in Review

By In Foreign Protection, Protection & Enforcement, Registration, Trademark Oppositions

The Canadian Intellectual Property Office released its 2006-7 Annual Report earlier today. The report contains some interesting information:

  • over 45,000 applications were filed in the twelve month period ending March 31, 2007, reflecting a 4% increase over the previous year
  • Canada remains the most common country of applicant origin, with nearly 20,000 applications filed; the US placed second, with over 14,700 applications, while applicants from Germany, France and the United Kingdom rounded out the top 5
  • 90% of Canadian trade-mark applications were filed online; prior to 2004, only 20% of applicants were using the e-filing system
  • despite the addition of several new Examiners, turn-around times remained the same as in the previous year, and an examination backlog of approximately 20,000 files remains to be addressed
  • the number of Statements of Oppositions filed continued to decline, with just over 1100 filings; however, the number of Section 45 (cancellation) notices issued increased slightly over the previous year.

The full report is available here.

Of London, Lithuania And A Popular Tree

By In Foreign Protection, Protection & Enforcement, Registration

A recent story in the London Free Press shows just how powerful Canadian trade-marks are becoming throughout the world – causing a country half a world away to drop a tree design that it had recently chosen to be the symbol for its latest tourism campaign. A similar tree design is the subject of an Official Mark Request advertised by the Canadian Registrar of Trade-marks at the request of the City of London, Ontario, known primarily, until now, as a centre for the insurance industry in Canada and as a University town. The design appears prominently on the City of London’s website.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

8,500 Trademark Lawyers Under One Roof?

By In Foreign Protection, Protection & Enforcement

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.

Glen Breton vs. Scotch Whisky – Round 1

By In Foreign Protection, Protection & Enforcement, Trademark Oppositions

In a follow up to our posting of December 20, 2006, the Trade-marks Opposition Board has now sided with the Nova Scotia distiller of GLEN BRETON whisky.  In the Opposition Board’s view, members of the public who purchase GLEN BRETON whisky will not be confused into thinking that they are buying Scotch Whisky.  The Scotch Whisky Association has indicated that it will appeal the decision to the Federal Court, so stay tuned for Round 2.

900,000th Mark Registered Under International Trademark System

By In Foreign Protection, Registration

A recent press release from WIPO (the World Intellectual Property Organization) heralds the 900,000th registration under the International Trademark System, commonly known as the Madrid Protocol or system.

The Madrid system allows an applicant from a signatory country to potentially obtain protection for its mark in up to 77 member countries and the European Union by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). An International Registration obtained through the Madrid system can be maintained and renewed through a single procedure at WIPO.

The system is designed to provide a cost-effective and efficient way for trademark owners to secure protection for their marks in multiple member countries through the filing of one application. While there are debates about how well the Madrid system attains that goal, it certainly gives applicants from member countries another powerful option for international trade-mark protection strategies.

Unfortunately for many Canadian trademark owners (namely those without a presence in a Madrid protocol signatory country), this option is not available to them because Canada, alone among most developed (and many developing) countries is not a signatory to the Madrid Protocol, nor is it likely to be for at least several years. The recent accession of both the U.S. and the EU to the Madrid system has awoken the Canadian Intellectual Property Office (“CIPO”) to the need for Canada to seriously consider joining, but the process is moving very slowly. In 2002, CIPO published an analysis of the issues that need to be addressed in order for Canada to acede to the Madrid Protocol and in 2005 CIPO solicited comments from Trade-mark professionals as to the proposed modernization of Canadian Trade-mark law, including adherence to Madrid. The issue has gained little public attention and given the other priorities of the minority governments in Canada of the past several years, it’s likely to languish for several more years.