June 2009

Ch-ch-ch-ch changes!

By In Legislation, Protection & Enforcement, Registration

Following up on one of our earlier posts, the Canadian Intellectual Property Office recently adopted a couple of revisions to its examination practices.

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.

Act Quickly to Prevent Use of Your Trade-marks on Facebook

By In Domain Names, Protection & Enforcement

The social networking website, Facebook, Inc. announced on June 9 that it will allow users to personalize their URLs (web addresses) with a unique user name (ie: facebook.com/username).  As of Saturday, June 13, 2009, users can select one username for their personal profiles (and administrators can select one username for each Page).

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.

…and then quickly wanes.

By In Legislation, Protection & Enforcement, Registration

An update to the post below: the Supreme Court of Canada announced this morning that the Scotch Whiskey Association has been unsuccessful in obtaining leave to appeal before the Court.  A panel of three judges dismissed the Association’s leave request, with costs.

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

Whiskey War Waxes On

By In Case Law, Protection & Enforcement, Trademark Oppositions

In several earlier posts, we’ve tracked the ongoing battle between Glenora Distillers and the Scotch Whiskey Association respecting the propriety of Glenora’s use of the word GLEN in its trademark GLEN BRETON.   Most recently, the Federal Court of Appeal found that Glenora was able to use GLEN without misleading Canadian consumers into thinking its product originated in Scotland.

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!

Free iPhone Bike App Sparks Dispute

By In Branding, Domain Name Disputes, Protection & Enforcement

The Montreal Gazette and La Presse each recently reported on the decision by the Stationnement de Montréal (“SdM”) to assert intellectual property rights against the developer of an iPhone application which pinpoints the locations of public-use bicycles made available for rental by the SdM.

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. Read more

Psion Capitulates In Netbook Battle

By In Protection & Enforcement, Registration

Following up on a story we reported earlier this year, Mississaugua, Ontario-based Psion Teklogix appears to have resolved its trademark dispute with Intel Corporation by undertaking to withdraw all of its NETBOOK trademark registrations.  As regular readers of our blog will recall, Psion’s registrations for NETBOOK were being challenged in a number of jurisdictions, including Canada, by Intel and others on the bases of non-use and non-distinctiveness.

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. Read more

Maple Leaf Melee

By In Case Law, Foreign Protection

A recent CTM case concerning an iconic Canadian symbol caught our attention.

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. Read more