Archive for April, 2010
« Older Entries |When Prior Use is not Prior Use
Friday, April 30th, 2010
In an update to an earlier post, the Supreme Court of Canada has recently granted leave to appeal in the case of Masterpiece Inc. v. Alavida Lifestyles Inc. Both the Federal Court Trial Division and the Federal Court of Appeal held that, in a proceeding to expunge a Registration, the relevant date for determining whether there was confusion with a mark previously used in Canada is the date that the application was filed, and that likelihood of confusion at a point in the future is not a relevant consideration.
In addition, both of the earlier decisions stated that in order for prior use of a mark in Canada to be grounds for successfully expunging a registration, such prior use must have occurred in the same geographic area where the applicant used its mark; otherwise there could have been no likelihood of confusion at the time the application was filed. In coming to the latter conclusion, both Courts appear, at least with respect to an action for expungement of a registration, to have imported into the test for likelihood of confusion, the test for common law passing off. Given this, the decision of the Supreme Court of Canada on this issue will be eagerly awaited by practitioners.
Posted in Case Law, Legislation, Registration | Comments Off
CIPO Seeks Consultation On More Proposed Changes
Friday, April 23rd, 2010
The Canadian Intellectual Property Office recently posted a consultation, requesting comments on three proposed changes to its Office practice. The proposed changes are all relatively minor, but worth noting.
The first proposed change is that the Registrar will no longer require applicants to confirm that they are a “person” as defined in Section 2 of the Act. Previously, the Examination Manual has required Examiners to seek confirmation from applicants where it’s not clear from the application that the applicant is a legal entity – for example if a individual files an application under a “doing business as” name rather than under their legal name. Under the proposed Practice Notice, Examiners will no longer request clarification from the applicant and it will be up to the applicant to ensure that it complies with the Act in this regard.
The second proposed change is in relation to colour claims in applications. The Act currently provides that unless an application is for a word mark not depicted in a special form (i.e. if the mark is anything other than a word mark in block letters), then the application must contain a drawing of the mark and if colour is claimed as a feature of the mark, the Regulations stipulate that the colour(s) must be described. Rule 28 of the Regulations provides that if a description of the colour(s) as provided by the applicant is not clear, the Registrar can cause the applicant to provide a drawing of the mark, lined for colour in accordance with a chart that is set out in Rule 28. This chart contains different lining specifications for all the basic colours but there is no indication of how (or whether) an applicant is to differentiate between different shades/hues of a particular colour – for example there is a specific line drawing for the colour “Blue” (horizontal lines) in Rule 28, but this would apply to light blue, dark blue and everything in between.
Posted in Uncategorized | Comments Off
Municipality’s rights in name not retroactive under CDRP: westkelowna.ca
Thursday, April 22nd, 2010
In District of West Kelowna v. Baremetal.com Inc. the District of West Kelowna (the “Municipality”) lost a Canadian Internet Registration Authority (CIRA) Dispute Resolution Policy (CDRP) proceeding involving the domain name westkelowna.ca, to an alleged cybersquatter.
On April 2, 2007, Baremetal.com Inc. (the “Registrant”), apparently operated by a businessman living in the Municipality, registered the domain name westkelowna.ca. Subsequently, on January 29, 2009, in response to an opinion poll, the Municipality legally changed its name from “Westside District Municipality” to the “District of West Kelowna”. The Municipality contacted the Registrant to request a transfer of the domain name, but the Registrant refused. As a result, the Municipality filed a complaint under the CDRP in an attempt to gain control of the domain name.
To succeed in a CDRP proceeding, Section 4.1 of the CDRP Policy provides that the Complainant must prove that:
(a) the disputed domain name is confusingly similar to a mark in which the Complainant had rights prior to the date of registration of the disputed domain name,
(b) the Registrant has registered the domain in bad faith,
and the Complainant must provide some evidence that:
(c) the Registrant has no legitimate interest in the domain name.
Even if the Complainant proves (a) and (b) and provides some evidence of (c), the Registrant will succeed in the proceeding if the Registrant proves, on a balance of probabilities, that the Registrant has a legitimate interest in the domain name.
In this case, the Complainant Municipality didn’t even make it out of the gate, as the Panel found that the Municipality did not have prior rights in the mark “West Kelowna”. Under CIRA’s Municipal Name Registration Policy, a municipality’s name is generally reserved for the use of that municipality; however, the Panel found that unless a municipal name is specifically listed in the Canadian Geographical Names Database (CGNDB) at the time of the domain name reservation, the name is not reserved for the use of the municipality. The Municipality also failed to provide sufficient evidence that it had rights in the mark due to use of the mark prior to the registration of the domain name.
As a result, the complaint was dismissed. The Panel did, however, refuse the Registrant’s request for costs, finding that the Municipality had not made the complaint in bad faith.
Posted in Domain Name Disputes, Domain Names | Comments Off