This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.

Since June 17, the Office has been providing six month periods to respond to Examiner objections, as opposed to the four month window previously provided.  In addition, the Office is no longer issuing ‘doubtful case’ or ‘courtesy letters’ - those letters that were sent to trade-mark applicants identifying co-pending applications for allegedly confusing marks having a later entitlement date.

This latter change reinforces the importance of both having watch services in place, and regularly reviewing the Trade-marks Journal for the advertisement of marks of interest.

As well, Corporate Knights has filed a trade-mark application for the phrase, which application remains pending.  Corporate Knigths claims that Maclean’s story encroaches upon its trade-mark rights and, as such, has apparently had its lawyers send a letter to Maclean’s demanding that all copies containing the story be pulled from circulation and destroyed, that Maclean’s print a retraction and pay Corporate Knights $4 million.  In response,  Maclean’s has pointed out the descriptive nature of the claimed trade-mark.

To increase pressure on Maclean’s (and in all likelihood to increase its own profile) Corporate Knights is using social media to highlight its story, having created a Facebook  group,  and is calling for the editor of Maclean’s to debate the editor of Corporate Knights regarding corporate responsibility.

Interestingly, we note that an online story on macleans.ca refers to “The Jantzi-Maclean’s Corporate Social Responsibility Report 2009″.

It will be interesting to see what response VANOC has to this, presumably unauthorized, use of its trademarks and copyright protected images by PETA.  Both the Copyright Act  and the Olympic and Paralympic Marks Act contain provisions permitting use of protected trademarks and works for purposes of criticism, however, in this case the criticism is of something seemingly unrelated to the 2010 Winter Olympic Games.

The PETA spoof website has already attracted criticism from the leader of the national Inuit organization in Canada.

In an attempt to deter username squatting, Facebook has put several restrictions in place: (1) only users who had accounts as of June 9 are eligible to register a personalized username (those who registered after must wait until June 28), (2) only one username can be selected per personal profile, (3) usernames are not transferable to other accounts, (4) Facebook can remove or reclaim any username at any time for any reason, and finally (5) Facebook will maintain a list of “reserved” usernames of certain trade-marks which will not be available for registration.

This last stipulation may be of particular interest to trade-mark owners.  Facebook has provided trade-mark owners with a form to submit their trade-marks for inclusion on a list of “reserved” usernames which will not be available for registration.  The form asks for a trade-mark registration number which suggests that Facebook only plans to protect registered trade-marks.  It is also unclear whether the form is intended to be used for Canadian (and other) trade-mark registrations, as well as US registrations.

Although there is also a mechanism for reporting infringement of intellectual property rights by a username that has been issued, a proactive approach is likely more efficient.   If you would like to take full advantage of Facebook’s list of  “reserved” usernames, you will have to act quickly: username selection opens to account holders this Saturday, June 13.

We should note, just to add a bit of perspective to this, that Myspace, Twitter and other social networking websites already permit personalized usernames and don’t have similar restrictions in place about the use/reservation of third party trademarks.  So far, such practices don’t appear to have led to widespread abuses or infringement of third party trademark rights.

As such, the decision from the Court of Appeal will stand: Glenora Distillers will be permitted to register its application for GLEN BRETON.

News today that this brouhaha may not be over quite yet: it appears that the Scotch Whiskey Association has sought leave to appeal to the Supreme Court of Canada.

Stay tuned!

Sparko.ca developed a free iPhone application called BixiMobile, together with a supporting webpage located at www.biximobile.com, to assist online users with finding Bixi bike locations throughout Montreal. The application launched on Sunday; by Tuesday, Sparko had received a cease-and-desist letter from Stationnement de Montréal’s counsel directing the company to withdraw the application, and hand over the domain.  Perhaps more interestingly, it appears SdM have additionally directed Sparko to hand over the code that supports the iPhone application.

To the extent that SdM is founding their claims on trade-mark rights, they are likely relying only upon common law trade-mark rights to the word BIXI: the SdM’s application to register BIXI (filed on the basis of proposed use) remains pending with the Canadian Intellectual Property Office.  Additonally, the SdM has a number of other pending applications and a handful of registrations, pertaining to the words “Stationnement de Montréal” and other related terms.

For now, the www.biximobile.com website has been taken down, and the parties are talking settlement.  We’ll keep you posted on developments in the dispute.

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.

The case is a reminder of the need for proactive and constant vigilance in policing one’s marks.  Long gone are the days when trade-mark applicants could make a filing, then “get it and forget it”.  If owners expect these increasingly valuable assets to be available to them over the long term, it is necessary to invest resources in using them, asserting them, and defending them.  Psion appears to have waited too long in this case, and on the face of it, their delay appears to have backfired.

More coverage of the story is available at the World Trademark Review.

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.

ACA appealed yet again, and this time was partially successful.  The Court of First Instance concluded that Article 6ter of the Paris Convention applied only to goods and not to services. As such, the ACA’s application was not prohibited as to services.  Perhaps unsurprisingly, appeals of that decision were filed by both parties–by the ACA, as to the application of Article 6ter, and by OHIM, that Article 6ter and the applicable Regulation applied only to wares.

In mid-May, the European Court of Justice’s Advocate General issued a recommendation that the ACA’s appeal be dismissed and OHIM’s appeal be granted on the basis that Article 6ter of the Paris Convention should apply to goods, and the Regulation should apply to services.  On this approach, the RW and Design mark would accordingly be unavailable for use or registration by ACA.

We’ll keep you posted on new developments in this maple leaf melee.  If ACA loses again, we fully expect that it will seek whatever further appeals are vailable to it, given not only its actions thusfar, but the considerable number of marks it owns that integrate, in whole or in part, State indicia and stylized derivatives from the United States and Canada.

The Board analyzed the facts with respect to the criteria laid out in Section 6(5)  of the Trade-marks Act and also considered the issue of drug errors and whether or not Biofarma would actually use the PROTOS mark.   When considering the nature of the wares and the channels of trade for the two marks, the Board found that although the PREOS and PROTOS drugs would be administered in very different forms (PREOS being self injected and PROTOS being dissolved in a glass of water) and could be aimed at different groups of patients, the description of the wares in the applications for both drugs covered identical wares and were not limited as to physical form, dosage and mode of application.   The Board also found a “fair degree of resemblance” between the marks, rejecting the “microscopic analysis” by NPS regarding the differences in appearance and sound of the marks.   On the issue of possible drug administration errors, the Board held that this was not directly relevant to the issue of confusion.   In addition, the Board found that Biofarma was entitled to rely on its allowed application for PROTOS (which was in good standing) to oppose PREOS, despite uncertainty surrounding whether the PROTOS mark would ever be used in Canada.   Based on all the factors considered, the Board held that the PREOS mark was confusing with PROTOS.

NPS alleged that the Opposition Board had failed to take into account or give appropriate weight to some of the factors to be considered in determining confusion (as set out in the Trade-marks Act).   In particular, NPS argued that the Board had not adequately considered (1) the differences between the actual wares of the parties (as distinct from the description of the wares in the respective trade-mark applications), (2) the degree of care that would be taken by consumers of prescription drugs, (3) the differences in appearance and sound of the marks, (4) the remote chance of drug error, and (5) the likelihood that Biofarma would use a different mark, PROTELOS, rather than PROTOS for its product.

The Federal Court found that the Board’s treatment of each factor in the confusion analysis was reasonable.   In particular, the Court confirmed that the Board had adopted the correct approach in considering the scope of protection sought by the trade-mark application (rather than merely the narrower scope of the likely form of use of the wares) when looking at the possibility of confusion between the nature of the wares.   The Court also commented that even though the wares in this case were administered by physicians, consumer perceptions must still be included in the confusion analysis in prescription drug cases.   In addition, the Court reiterated previous findings that the probability (or in this case, improbability) of drug errors is not directly related to the likelihood of confusion as to the source of the wares.   As a result, the Court determined that the Board’s finding of confusion between NPS’ PREOS and Biofarma’s PROTOS was reasonable, and so dismissed the appeal.

In an interesting side bar, Labatt has a significant ownership interest in Ontario’s “The Beer Store” which is by far the largest retail channel for beer in Canada’s most populous province.  As such, Labatt indirectly receives fees from Red Brick in order to display its RED BARON lager in a lobby display program at The Beer Store, as well as fees to sort RED BARON bottles, which are non-industry standard.  Brick argues that because of the set up of The Beer Store, where more popular brands such as those sold by Labatt are featured more prominently, consumers generally have to ask for Brick’s products, such as RED BARON, by name, thereby lessening any likelihood of confusion.

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.

Finally, the third proposed change concerns “doubtful case” or “courtesy letters” - the letters CIPO sends to alert trade-mark applicants about co-pending applications to register allegedly confusing marks having a later entitlement date.  CIPO is proposing to discontinue the issue of such letters.

The consultation period ends June 11, 2009.

In this most recent case, Microsoft Corporation brought an action for copyright and trademark infringement against corporate defendants known as PC Village Markham and PC Village Downtown, which were computer retailers in the Greater Toronto Area. The action was also brought against two employees that worked in sales at these stores. Evidence provided by the plaintiff’s investigators showed that both retail locations engaged in selling computers with unlicensed Microsoft software loaded onto the hard drives. The individual defendants served a Statement of Claim, but did not file it and proceeded to negotiate a settlement which was never finalized. Microsoft then brought a motion for default judgment.

The Court agreed that Microsoft was entitled to a default judgment, having proved that the Statement of Claim was served, no defence was filed and having established on a balance of probabilities that infringement occurred. The Court then went on to award damages for copyright infringement. Microsoft chose not to seek additional damages for trademark infringement, depreciation of goodwill or loss of direct sales. When assessing statutory damages under section 38.1 of the Copyright Act, the Court considered several relevant factors. The Court held that the defendants’ practice of continuing to sell unlicensed Microsoft products after they were aware that doing so violated copyright law demonstrated bad faith. The Court also held that the defendants’ attempts to deceive investigators demonstrated improper conduct. Furthermore, the Court held that there was a need to deter others from violating Microsoft’s copyrights in the future.

In accordance with section 38.1(5) of the Copyright Act and the decisions in Louis Vuitton Malletier S.A. v. Yang. and Microsoft Corp. v. 9038-3746 Quebec Inc., the Court concluded that the presence of these factors indicated a need for substantial statutory damages and awarded $10,000 for each copyright violation. In addition to statutory damages, the Court cited Louis Vuitton Malletier S.A. v. Yang and stated that because of the “outrageous” and “reprehensible” conduct of the defendants, this was an appropriate case for punitive damages. Additionally, the Court ordered injunctive relief against the defendants because of the continuing nature of the infringement.

The two sales representatives were personally liable for the activities of the corporations they worked for because they knowingly participated in the infringement of the plaintiff’s rights. The Court also allowed the action to be continued against the corporate defendants even though they had been dissolved. Thus, any property that would have been available absent the dissolution was available to satisfy the judgments. One individual was jointly and severally liable with one of the named corporations for $80,000.00, while the second individual and corporation jointly and severally liable for $70,000.00. All defendants were jointly and severally liable for the $50,000.00 punitive award and $50,000.00 in costs, for a total of $250,000.00.

The Respondent (Spirits) had applied to the Federal Court to expunge the Appellant’s (SC Prodal’s) mark STALINSKAYA for Vodka from the register.  In the meantime, the Appellant had submitted a new application for the same trade-mark and subsequently cancelled the original mark.  By the time the Respondent’s application for expungement of the original mark was considered, it was no longer on the register and consequently the Appellant did not file a notice of appearance.  Although the original mark had been cancelled, the applications judge allowed the Respondent’s application and went on to issue a declaration that the trade-mark STALINSKAYA was not distictive as it was confusing with the Respondent’s trade-marks, including STOLICHNAYA for Vodka.  The applications judge ordered a stay of proceedings and granted a “permanent mandatory injunction” prohibiting the Registrar of Trade-marks from considering the Appellant’s new STALINSKAYA application.  The Appellant appealed and the Respondent moved to quash the appeal on the grounds that the Appellant had waived its rights in the court below by failing to file a notice of appearance.

Before considering the main appeal, the Court of Appeal dismissed the motion to quash the appeal following Desormeaux v. Ottawa (City) which stated that failure to file a notice of appearance does not necessarily prevent a party from appealing a decision if there is evidence that the respondent did not intend to waive all rights as a party.  In this case, the Court of Appeal found that the Appellant had not acquiesced to the granting of relief in circumstances where it did not have notice of the relief being requested.

The Court of Appeal then addressed the appeal and found that in light of the fact the original STALINSKAYA mark had been cancelled, the application before the applications judge was a moot point: “that which does not exist cannot be expunged”.  Contrary to the requirements of the Federal Court Rules, the Respondent’s notice of application did not include a request for a stay of proceedings, an injunction or an order of prohibition and as a result, the Appellant had no notice of this requested relief.  The Court of Appeal was critical of the applications judge for granting relief that was not set out in the notice of application, particularly when the expungement of the original mark was a moot point: “in circumstances where a respondent party does not have notice of the relief being requested, such relief should not be granted until notice is given and the respondent party is offered the opportunity to respond”.

The appeal was allowed with costs and the order of the applications judge was set aside.