Archive for June, 2007
« Older Entries | Newer Entries »EcoDensity and the Mayor
Monday, June 25th, 2007
An Article in the Vancouver Sun this past weekend raises questions about why the Mayor of the City of Vancouver has applied to register in his own name, the mark ECODENSITY for a housing density initiative that is funded and run by the City. The Mayor indicates in the story that he filed the proposed use application a few days before the initiative was publicly unveiled in order to stop others from doing so.
As the mark was not used by the City at the time the Mayor’s application was filed, the City would have been unable to properly request at that time, that the Registrar give public notice of the City’s adoption and use, as a public authority, of the mark as an Official Mark, pursuant to Section 9 of the Trade-marks Act. Official Mark requests are commonly submitted by all levels of government in Canada, including the City of Vancouver itself, to protect what they consider to be their proprietary marks.
An alternative to filing an application in the Mayor’s own name, would have been to file the proposed use application in the name of the City, as such an application doesn’t require prior adoption and use by the City. It’s also not clear why, now that the City has publicly started promoting its EcoDensity Plan, it has not submitted an Official Mark Request to the Registrar.
In a follow up story today, the Vancouver Sun reports that Vision Vancouver, the opposition civic party, will request an extension of time to oppose the Mayor’s application on or before the deadline to do so.
Posted in Branding, Protection & Enforcement, Registration | 3 Comments »
Measuring the Reputation of Online Sellers
Wednesday, June 20th, 2007
The Vancouver Sun is reporting on a study released by two professors at the University of British Columbia’s Sauder School of Business.
According to the study, the reputation of online sellers at Amazon carries more weight with consumers than the online seller ratings at eBay, a result of the feedback mechanisms used on the different sites.
Posted in Branding | Comments Off
Establishing a Trademark’s Distinctiveness: Recent Case Law
Monday, June 18th, 2007
In Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai Motor America, the Applicant (the reseller of automotive parts and accessories and the Defendant in an ongoing trademark action brought by the Respondent) sought to expunge five of the Respondent’s trademark registrations: HD Design, HD & HYUNDAI Design, HMC Design, HYUNDAI and SONATA. In 1985 the Respondent’s parent company had assigned three of the marks to the Respondent’s predecessor, which in turn assigned the marks to the Respondents, in 1996, but the assignment was only registered in August 2004. The other two marks were assigned to the Respondent in September 2004.
The Applicant argued that the marks were not distinctive of the Respondent, the relevant date for determining distinctiveness in this case being the date the expungement action was commenced, because the the consuming public was not advised during the 1985 -2004 period of the change in ownership.
The Court noted that distinctiveness is the cardinal requirement of a trademark and it is a question of fact whether a clear message has been given to the public that the wares associated with the mark are those of the trademark owner and not those of another party. Relying on survey evidence, the Court concluded that the purchasing public was not confused about the source of the wares and always understood the Respondent to be the source of the vehicles, even though they were sold through dealers.
Moreover, since 1985 the Respondent and its predecessor, although they had not officially registered the assignment, had built up goodwill through extensive advertising.
The Court distinguished the Respondent’s situation from the earlier cases (Wilkinson Sword (Canada) Ltd. v. Juda and Breck’s Sporting Goods Co. v. Magder ) where a transfer of marks by a foreign parent company to its Canadian subsidiary and sales in Canada by a third party of wares purchased from the parent company resulted in a loss of distinctiveness. In the earlier cases there was no evidence that the source of the goods had become identified with the Canadian subsidiary. In this case, however, the Court was convinced by the expert evidence that the consuming public identified the source of the goods as the Canadian subsidiary.
There was delay in the registration of the assignment, but no reliable evidence of any public confusion that the source of the goods was other than the Respondent.
The Court was, however, convinced that one of the marks had been abandoned, not having been used in Canada for a long time and there being no justifiable excuse for non-use. The other four marks had not been abandoned and thus the Respondent was successful and awarded costs.
Posted in Case Law, Protection & Enforcement, Registration | Comments Off