Archive for August, 2009
« Older Entries |Proactive registrations can save money
Monday, August 31st, 2009
According to a recent study by the domain management and brand protection company Corporation Service Company (CSC), more money is being spent on reclaiming domain names from third parties through the Uniform Domain Name Dispute Resolution Policy (“UDRP”) than if brand owners had registered the domains proactively.
Under the study, all UDRP cases filed between January 2000 and May 2009 with the two major UDRP providers were analyzed. The study found that more than $220 million was spent on UDRP proceedings in the period, but proactive registration of domain names would have cost only $1.1 million – a potential savings of $219 million.
Interestingly, CSC’s study indicates that of the domains that were reclaimed by brand owners, almost 4,000 have been subsequently lapsed and are available again for registration. As well, apparently 3,000 domains that were reclaimed lapsed and then were re-registered – sometimes by third parties.
The results of the study underscore the importance of proactive registration and brand management in saving both time and money.
Posted in Branding, Domain Names | No Comments »
High Hurdles to Olympic Trade-mark Use
Thursday, August 13th, 2009
With six months left until the start of the Vancouver 2010 Winter Olympic Games, it seems appropriate to highlight another story involving Olympic trademarks. The Vancouver Organizing Committee (VANOC) is not the only Olympic Committee vigilantly monitoring the use of Olympics related trade-marks. A recent bulletin chronicles the steps taken by the US Olympic Committee to protect the word OLYMPIC in the US, including obtaining an injunction against the use by Olympic Supply, Inc. of Maryland of the tradename “Olympic News”.
The bulletin summarizes that, in the US, specific legislation prevents non-licensed use of the word OLYMPIC unless: (1) there was use with the same goods and services prior to September 21, 1950, or (2) it is obvious that the word refers to the Olympic geographic area named prior to February 6, 1998 and the word relates to goods or services that are marketed in the Olympic area and are not substantially marketed outside of that region.
In Canada, though VANOC has different enforcement tools at its disposal to prevent unauthorized persons from marketing their wares and services in association with the 2010 Olympic and Paralympic Winter Games, the results may be largely the same. For example, the Olympic and Paralympic Marks Act (which we discussed in a previous post) prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that resembles an Olympic or Paralympic mark. Lists of prohibited marks (including, of course, OLYMPIC) are set out in Schedules 1 and 2 of the Act.
The Act also prohibits anyone from promoting or otherwise directing public attention to a business in such manner as to lead the public into believing that there is a connection with the Canadian Olympic Committee or Canadian Paralympic Committee. Perhaps most notably, this Act permits VANOC to obtain an interim injunction against alleged infringers without proof of irreparable harm, which is a significant and unprecedented advantage.
Posted in Branding, Legislation, Protection & Enforcement | No Comments »
Wal-mart claims trademark infringement by union website
Friday, August 7th, 2009
A recent New York Times story reports that Wal-mart Canada has filed a complaint in Quebec Superior Court, seeking an injunction against a union website’s use of Wal-mart’s trade-marks.
Wal-mart has apparently claimed that the use of its name, colour schemes, and variations of its logo and slogans by the United Food and Commercial Workers Canada’s website Walmart Workers Canada is trade-mark and copyright infringement. The union has posted on the website a purported extract from Wal-mart’s complaint, listing the relief Wal-mart has requested under the injunction.
The union is claiming that Wal-mart is trying to censor its rights to free expression.
Past jurisprudence in Canada (here and here) regarding unions and alleged trademark infringement has often turned on whether the use of a company’s marks by a union on a website constitutes “use” as defined in the Trade-marks Act (Canada).
Posted in Protection & Enforcement | No Comments »