According to the story, VANOC “has serious concerns of the public being misled into believing there is an association between the 2010 Winter Games and [Scotiabank's] campaign”, though it is unclear as to the specific issues upon which VANOC’s concerns are based.

As evidenced by VANOC’s previous complaints about Lululemon’s winter marketing campaign, VANOC clearly remains concerned about ambush marketing, and is focused on protecting its sponsors.  The Royal Bank of Canada, one of Scotiabank’s competitors,  is an official sponsor of the 2010 Games.

The story indicates that Scotiabank officials and VANOC are in communication “to arrive at a mutually agreeable solution”.

The Federal Court of Appeal agreed with the finding of the lower court judge that there was “no factual foundation for the proposition that the appellant has expanded the scope of its GLAMOUR mark by having licensed this mark to third parties”, since the third parties were merely using Advance’s GLAMOUR magazine and website to advertise their own products.

The clothing line in question features various items in the national colours of Canada, the U.S., Sweden and Germany. Notably, the Canadian hoodies feature gold zippers while the zippers in the colours of other countries have silver zippers. Lululemon lost out to the Hudson’s Bay Company in its bid to be the official apparel supplier to the Canadian Olympic team for the Summer and Winter Games during the period from 2006 to 2012.

Readers of the Knowledge Bytes newsletter will be aware of the legislative hammers that are at VANOC’s disposal to enforce its trademark rights against both would-be infringers and ambush marketers alike. These include the Olympic and Paralympic Marks Act, which contains lists of specific words that either can’t be used at all, or that can’t be used in combination with other specific words–for example the combination of “Vancouver” and “2010″.

Lululemon, for its part says that it carefully did its legal homework and selected a brand that doesn’t fall afoul of any legislative prohibitions. VANOC appears to have conceded this point, indicating that it will use non-legal tactics to attempt to persuade Lululemon to back off.

As the start of the Winter Games quickly approaches, VANOC will no doubt have its hands full with other creative ambush marketing ploys. VANOC has published spectator guidelines about what will not be tolerated at the Winter Games event venues, including “Ambush marketing of any kind, distribution of leaflets, pamphlets and non-approved publications, promotional material and wearables”.

This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.

It will be interesting to see what response VANOC has to this, presumably unauthorized, use of its trademarks and copyright protected images by PETA.  Both the Copyright Act  and the Olympic and Paralympic Marks Act contain provisions permitting use of protected trademarks and works for purposes of criticism, however, in this case the criticism is of something seemingly unrelated to the 2010 Winter Olympic Games.

The PETA spoof website has already attracted criticism from the leader of the national Inuit organization in Canada.

The Court found that both marks were inherently weak as both were suggestive of their wares and services but considered whether Advance’s GLAMOUR mark had “an acquired distinctiveness through use and promotion… sufficient to warrant a wide scope of protection”.

The Court determined that while the GLAMOUR mark was well known in Canada in association with magazines (and thus had acquired distinctiveness), it was not associated with all wares and services that make up the glamour industry.  Advance argued that the wares of both parties belonged to the same general class of goods, namely cosmetic, fashion and beauty, but the Court found: “Just because cosmetic products are advertised, discussed, or otherwise featured in Advance’s magazine and related wares does not mean…  that any acquired distinctiveness of the GLAMOUR mark should extend to cover such products.”

Although the Court acknowledged that Section 6(2) of the Canada Trade-marks Act makes it clear that confusion can occur whether or not the wares or services are of the same general class, the Court found: “Even though cosmetics and magazines may be sold in the same stores, the evidence in this case shows that GLAMOUR magazine and Farleyco’s products are sold and advertised in very different ways and are purchased and used in very different ways.”

The Court rejected Advance’s appeal, finding that confusion between the two marks was unlikely: “The evidence suggests to me that consumers are repeatedly exposed to many Glamour trade marks and to the constant use of the word ‘glamour’ in the glamour industry and the marketplace it spawns.  I think it can be assumed in this context that they have become extremely adept at distinguishing between wares and services sold and associated with the word ‘Glamour’, either singly, or in combination with other words, and that they are extremely unlikely to associate Farleyco’s Halloween GHOULISH GLAMOUR products with Advance’s GLAMOUR wares and services.”

Flush from its win against Payless in the US, adidas has elected to try to repeat its success in Canada. Earlier this month, Adidas AG and Adidas Canada Ltd. filed a claim against Collective Brand Inc. in Federal Court. In Canada, adidas’ action will hinge on Payless’ alleged infringement of the rights adidas enjoys in the well-known 3 Stripes Design, and particularly the rights afforded adidas from these three trademark registrations.

If adidas is successful, it is not likely to be awarded damages anywhere near the amounts it secured in the US; nonetheless, the case will be of interest to both trademark lawyers and sneakerheads alike. We’ll keep all of you posted on material developments.

The Royal Canadian Mint has alleged Dogwood Initiative’s activities bring it offside the Currency Act, but query whether the Mint may also have an action under the Canadian Trade-marks Act (the "Act"), for infringement of the Mint’s Official Mark rights in the loonie.

Section 9 of the Act deals with Official Marks, and in particular, it prohibits the adoption in connection with a business, as a trade-mark or otherwise, of any mark which consists of, or so nearly resembles as to be mistaken for, an Official Mark.

Once an Official Mark is adopted and used by a public authority (and the authority directs the Registrar to provide public notice of its adoption and use of the mark) the Official Mark holder obtains a broad passel of rights.  For example, Official Mark holders enjoy exclusive use of their mark for all wares and services, not needing to file a list of wares and services used in association their marks.  In addition, Official Marks do not need to be renewed and can only be challenged through an application for judicial review.  If a trade-mark which consists of, or so nearly resembles an Official Mark so as to be mistaken therefor is introduced to the marketplace after an Official Mark, that trade-mark may only co-exist with the Official Mark if consent is granted by the Official Mark owner.  This is an unlikely in circumstances such as these where legal action has been threatened.

While it is unclear whether the endeavours of the Dogwood Initiative or the businesses that signed on to assist in distributing the oily loonie would meet the definition of "business" as described in the Official Mark prohibition, we’d give our bottom dollar to know whether any further legal steps taken by the Mint will include a claim under the Act.

The amendments were motivated by an agreement struck in 2003 between the Canadian government and the European Community concerning trade in wine and spirits.  Under the terms of that deal, the Canadian government agreed to amend the Trade-marks Act to gradually eliminate the use of certain European wine and spirit names on Canadian labels, thereby opening the door to European producers to apply for the protection of these names as geographical indications in Canada.

Accordingly, Canadian wine producers are now no longer able to refer to their products using any of the following formerly-generic terms: Bourgogne, Burgundy, Rhin, Rhine, Sauterne and Sauternes.  These terms join the once generic references Bordeaux, Chianti, Claret, Madeira, Malaga, Marsala, Medoc, Médoc, Mosel and Moselle, which were all deemed non-generic when the agreement came into force in June of 2004.  A further series of terms will be legislatively deemed non-generic in 2013, when Chablis, Champagne, Port, Porto and Sherry are removed from the list.

While the loss of generic treatment for these terms (coupled with the acquisition of geographic indication protection by the European Community) may be inconvenient for some Canadian producers, the number of producers affected appears to be relatively small: a regulatory impact analysis study identified only eight registered trademarks that contained these terms. Following consultations with Canadian producers, the government concluded that the impact to these rights-holders was more than offset by negotiated improvements to access to the European market for Canadian wine and spirit producers.

First, there is no copyright in a name. Copyright in Canada is governed by the Copyright Act and arises in literary, artistic, dramatic and musical works. A name, without more, does not fall under the definition of a work.

Second, a registration does not prove copyright. Claims of copyright are not verified by the Copyright Office. Copyright can be registered simply by sending an application to the Copyright Office with the appropriate fee. While a certificate of registration from the Copyright Office is evidence that a work is protected by copyright, registration cannot create copyright where none exists.

Third, even if Lutczyk held copyright in the name, he could not prevent its publication in a news article. This type of use is protected under the “fair dealing” provisions of the Copyright Act (provided the author is credited).

Lutczyk may have confused copyright with trade-mark rights, which do provide protection for names (although still not the type of protection that he was trying to invoke). As one might expect, the trade-mark UNIVERSITY OF ONTARIO INSTITUTE OF TECHNOLOGY, is owned by the University, so Lutczyk would not be able to benefit from such protection.

Lutczyk’s aggressive stance in attempting to prevent publication of the University’s name will, no doubt, do nothing to improve the failing grade assigned to him this year by Metroland Durham Region Media Group. He has once again missed the mark.