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.
In response, the blogosphere took umbrage with what it saw as an unjustifiable attempt to, in one blogger’s words, “hijack the netbook industry using registered trademarks.” A grassroots campaign followed, including the development of websites geared towards “saving” the term from Psion’s exclusive use, and battles ensuing on Wikipedia between detractors and supporters of Psion’s efforts.
The battle escalated with Intel’s February 16 decision to initiate a US Federal Court action against Psion, together with Dell’s February 19 decision to file a petition in the USPTO to cancel Psion’s U.S. NETBOOK registration. Psion has since counter-sued Intel–the owner of netbook.com, which resolves to this Intel page–for cybersquatting, unfair competition and unjust enrichement.
In Canada, the question of whether or not Psion’s NETBOOK registration would survive a challenge hinges around questions of distinctiveness. As regular readers of the Canadian Trademark Blog know, distinctiveness in relation to a trademark means that the mark actually distinguishes the wares or services in association with which it is used by its owner, from the wares and services of others, or has adapted so as to distinguish them.
Only a distinctive trademark will allow a consumer to identify the source of the goods. Loss of distinctive character means the loss of protectability of the trademark in question. The owner loses the exclusive right to the use of the mark, and the mark becomes publici juris.
While the debate rages on online, we will not actually know the status of Psion’s rights in Canada unless it attempts to exercise them against a third party, or some third party challenges the registration. While we are unaware of any Canadian court actions that have been initiated to expunge Psion’s registration for lack of distinctiveness, we do know that a competitor, the Taiwanese computer manufacturer Micro-Star Int’l Co., Ltd. (“MSI”) has filed a trademark application for WIND NETBOOK.
It is conceivable that Psion will rely upon its registration to oppose MSI’s application if and when it is advertised. While an Opposition Board has no jurisdiction to amend or otherwise challenge a registered trademark, the questions about the distinctiveness of Psion’s trademark will pose certain challenges to it, should it decide to oppose MSI’s application.
We will keep you posted on material developments in this dispute as they unfold.
