Expungement: A Poisoned Trademark – for Both Parties
July 21, 2010
In JAG Flocomponents N.A. Inc. v. Archmetal Industries the Plaintiffs sought expungement of the Canadian trademark FUSION, as well as a declaration that the Defendants had breached section 7(a) of the Trade-marks Act. The trademark was registered for use in association with ball valves for industrial use and use was claimed since as least as early as September, 2002.
One of the Defendant companies had been a 30% owner of one of the Plaintiff companies and a Letter of Intent had been executed setting out the basic relationship whereby the Plaintiff s were to distribute valves manufactured by the Defendants in China. The parties had also executed a Consignment Agreement which the Court found to be a critical document since clause 12 specified that the intellectual property arising by virtue of the Agreement was deemed to be equally owned by the parties.
For marketing purposes, the Plainitffs adopted the trademark FUSION and proceeded to market wares manufactured by the Defendants, as well as wares sourced from a different manufacturer, using the trademark. However, following the breakdown of the relationship, one of the Defendants registered the trademark. The disputes arising between the parties were eventually settled under an Alberta Queen’s Bench action, which left only the intellectual property issues unresolved. The Plaintiffs had also applied to register the trademark, but the Defendants successfully opposed the application on the basis of alleged prior use.
Posted by Larry Munn | Filed Under Case Law, Registration | No Comments »
First Canadian Decision on Keyword Advertising
June 18, 2010
The British Columbia Supreme Court recently issued the first Canadian Court decision dealing with the use by one party of another party’s trademarks in keyword advertising. The case involved a defendant, Vancouver Career College (Burnaby) Inc. (VCC), that provides post-secondary career training services under different business names and trademarks. As part of its internet marketing strategy, VCC, like numerous other businesses, uses keyword advertising, whereby VCC pays search engines such as those provided by GOOGLE and YAHOO! for links to its websites to appear as “sponsored links” or “‘sponsored results” alongside the search engine’s normal search results. In order to use keyword advertising, VCC selected certain keywords to describe its website, including the business names and trademarks of various VCC competitors.
The plaintiff, the Private Career Training Institutions Agency (Agency) is a provincial regulatory agency charged with overseeing career training institutions that operate throughout the Province of British Columbia. Acting on complaints received from other career training institutions in the Province, the Agency sought an injunction against VCC’s practice of using the names and trademarks of those other institutions in VCC’s keyword advertising program, on the basis that such use was false, deceptive or misleading. The Court held that VCC’s keyword advertising program was not false, deceptive or misleading and therefore no injunction was granted.
While framed as a false, deceptive or misleading advertising complaint, rather than a trademark infringement or passing off claim, the Judge in his reasons specifically referenced trade-mark and passing off concepts when looking at the issue of what is confusing or misleading in the context of alleged improper advertising. The Judge found that what the defendants were doing did not amount to false, deceptive or misleading advertising. The Judge also held in his reasons that: “I also accept VCC Inc.’s argument that its practice of using Keyword Advertising is no different than the time-honoured and generally accepted marketing practice of a company locating its advertisement close to a competitor’s in traditional media (e.g., placing its Yellow Pages advertisement next to or in close proximity to a competitor’s telephone number in the same directory so that potential customers of that competitor discover there is another company offering a similar product or service and that they, the consumer, have a choice).”
The Agency has until June 28, 2010 to file an Appeal of the decision, should it choose to do so.
Posted by Neil Melliship | Filed Under Case Law, Protection & Enforcement | No Comments »
.CA Dispute Resolution Consultation Now Open
June 11, 2010
The Canadian Internet Registration Authority (CIRA) has initiated a consultation on the CIRA Domain Name Dispute Resolution Policy (CDRP). The CDRP has been in place since 2002 and is intended to be a quick, relatively low cost arbitration forum for disputes over .CA domain names. The stated purpose of the consultation is to solicit feedback from interested parties as to the effectiveness of the CDRP and whether it continues to meet the needs of its stakeholders.
The consultation consists of a number of questions about the process itself, the tests that a complainant must meet, the remedies provided and the like. Interestingly, the consultation notes that over the 8 years the CDRP has been in place, there have only been 149 decisions rendered, with the high water mark occurring in 2008, when there were 30 decisions.
The consultation is open from June 9 to September 17, 2010.
Posted by Neil Melliship | Filed Under Domain Name Disputes, Domain Names | No Comments »