Archive for December, 2006
« Older Entries | Newer Entries »All I want for Christmas is my domain back
Monday, December 18th, 2006
Morning Star Games was unaware that their domain name expired in October and was auctioned off by the registrar to the highest bidder. Apparently, the website had continued to function past the expiry date of the domain registration. The new owner used the domain to link to a pornographic site. Luckily for Morning Star Games, it was able to get its domain back.
As we approach New Year’s and start to make our well-intentioned lists, domain name management should be included in such a list. No one wants to have their domain name hijacked. It’s a good idea to centralize management of domains for consistent and correct registration information and so that renewal deadlines aren’t missed. For .ca domain names, CIRA (Canadian Internet Registration Authority) posts a list of cancelled .ca domain names with dates that such domain names will be released for registration. Ideally, domain name renewal deadlines are diarized, so that your domains don’t expire and become included on such a list.
Posted in Domain Name Disputes | Comments Off
November Case Law – Enforcement of Foreign Judgments
Friday, December 15th, 2006
There were no noteworthy Canadian cases in November that focused on specific trademark issues. However, the Supreme Court of Canada (“the SCC”) handed down a decision regarding the enforcement of foreign non-monetary judgments that will be of interest to trademark practitioners.
The case, Pro Swing Inc. v. Elta Golf Inc., arose out of a trademark dispute, but it was the contempt order that was at issue on appeal. In 1998, Trident, a U.S. company, filed a complaint in Ohio for trademark infringement. Elta, an Ontario company, entered into a settlement agreement that was endorsed in a consent decree of the U.S. District Court. In 2002 Trident brought a motion that Elta had violated the consent decree and a contempt order was issued.
The SCC agreed with the Ontario Court of Appeal that the contempt order could not be enforced in Canada, primarily because it was quasi-criminal in nature. However, in doing so the SCC held that the traditional common law rule limiting the recognition and enforcement of foreign judgments to final money judgments should be changed – although cautiously. Thus, equitable orders from foreign courts, such as injunctions, may now be enforced.
The SCC outlined a number of factors to be taken into account: that the judgment being enforced be rendered by a court of competent jurisdiction and be final, and that as a matter of comity the domestic court not extend greater assistance to foreign litigants than it does to its own litigants.
With regards to injunctive relief the SCC recommended that its territorial scope must be specific and clear. With regards to trademark protection the SCC specifically noted that the Internet does not transform U.S. trademark protection into worldwide protection, although the SCC left open that the possibility that a party, by consent, might create such an extension.
Future case law will provide further clarity regarding the enforcement of foreign equitable orders in Canada and the extent to which Canadian courts may recognize, for example, injunctions regarding trademark rights. In the meantime, foreign litigants will want to carefully consider how a foreign court order is worded if the ultimate intention is enforcement in Canada.
Posted in Case Law | 1 Comment »
Yes, Virginia, Santa Claus is Trademarked
Thursday, December 14th, 2006
We understood it to be well established (at least since 1897 and the New York Sun’s reply to Virginia’s letter) that there is indeed a Santa Claus.
Unfortunately, the Canadian Intellectual Property Office seems intent on ignoring this important fact. Paragraph 12(1)(a) of the Trade-marks Act specifically provides that a trademark is not registrable if it is “primarily merely the name or the surname of an individual who is living”.
However, our recent visit to the CIPO website reveals at least three registrations for SANTA CLAUS – for use in association with “soaps of all kinds”, “ribbons, bows, gift wrapping papers and paper tableware” and, of all things, “ornamental plants”. The existence of these registrations suggests that CIPO considers St. Nick to be a fictional character rather than a living person.
We are pleased to note that two other SANTA CLAUS trademark registrations have been expunged (for use in association with “ice cream” and “soaps, detergents and toilet preparations”) but interested to learn that Coca-Cola has gone so far as to trademark a picture of the jolly old elf.
Of course, it is now seven years since the USPTO created a stir by allowing one Stephen Bottomley (a Brit, no less) to register SANTA CLAUS on their database.
We’ll have to wait and see whether Santa Claus commences proceedings for the unauthorized use of his name and likeness. Of course, Santa could always move to Australia, where they have not yet gone so far as to register his entire name (although there is a SURFING SANTA and a SWINGING SANTA). But then again – Australia has no snow in December.
Posted in Registration | 1 Comment »