Canadian Trademark Blog

Maintained by Clark Wilson LLP

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

The Need for Proper Evidence of Trademark Use

By In Case Law, Protection & Enforcement

A previous blog commented on the importance of proper evidence of use when the registered owner of a Canadian trademark is faced with a potential expungement pursuant to section 45 of the Trade-marks Act.

Curb v. Smart & Biggar, on appeal to the Federal Court from a decision of the Registrar is a further illustration.  Mike Curb, a well-known American record producer was the registered owner of CURB RECORDS for use in association with wares described as “audio and audio-visual recordings; printed materials, namely posters; clothing, namely t-shirts and caps” and services described as “entertainment services provided by pre-recorded and live music; and the production, publishing and distribution of audio and audio-visual recordings”.  On the basis of the Affidavit evidence filed by the Senior Vice-President of Curb Records, the Registrar concluded there was use in association with audio and audio-visual recordings, but insufficient evidence of use in association with the other wares and all the services during the three years preceding the section 45 request. Read more

JAVACAFÉ: Clearly Descriptive in the French Language

By In Case Law, Registration, Uncategorized

Following up on an earlier blog posting, we note that the Supreme Court of Canada has refused leave to appeal from the Federal Court of Appeal’s decision in Shell Canada Limited v. P.T. Sari Incofood Corporation. 

The Court of Appeal earlier concluded that JAVACAFÉ when sounded as two words was clearly descriptive, in French, of the claimed wares, namely, coffee products.

Cybersquatter Targets MP Keith Ashfield

By In Domain Name Disputes, Domain Names, Trademark Oppositions

CBC News reported recently that Conservative MP Keith Ashfield registered the domain name keithashfield.ca during the 2008 election.  When Mr. Ashfield failed to renew the registration, it was quickly scooped up by an apparent cybersquatter.  Cybersquatters (as they are commonly known), often register famous names or trade-marks in order to benefit from the associated goodwill to drive traffic to their websites.  Often these websites are “pay-per-click” sites which generate revenue for the cybersquatter.

The website now resolves to a site offering details on how to get prescription drugs without a prescription.  Exactly who holds the domain name is unclear, as this information has been privacy protected by the registrar, Namespro Solutions Inc., at the request of the owner. Under the current CIRA privacy policy, personal information of owners who are individuals is permitted to be cloaked, even if the domain name links to a commercial site. Read more