This is not the first time CIPO has looked at the issue of Canada acceding to the Madrid Protocol.  Five years ago a similar consultation took place.   In response to a request for input, CIPO received feedback  from the Intellectual Property Institute of Canada and from the International Trademark Association, though no further action was taken by CIPO at that time.

According to CIPO’s backgrounder to the current consultation, the intervening five years have seen important trading partners such as the United States join both the Madrid Protocol and the Singapore Treaty.  As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices.

As many readers will be aware, the Madrid Protocol permits an applicant from a member country to file an application in its home country to register a trademark and to simultaneously file an international trademark application, under which the applicant designates other member countries in which the Applicant wishes to protect its mark.  Registrability of marks covered by Madrid Protocol applications is still subject to the national laws of each member country that an international application is filed in.

The Singapore Treaty amends and expands on the Trademark Law Treaty of 1994 and aims to simplify and standardize many formalities and procedures relating to the administration of trademarks.  It also covers new forms of marks, such as holograms, sound marks and smell marks.  As with the Madrid Protocol, the Singapore Treaty does not affect substantive national trademark laws, such as the grounds on which applications for registration may be refused.

CIPO’s backgrounder seems to be slanted towards approval of both the Madrid Protocol and the Singapore Treaty, on the basis that they are necessary to align Canada’s trademark laws and procedures with “modern business practices”.   Whether the benefits of these two treaties would outweigh the potential negative consequences and whether such benefits would accrue more to foreign applicants than to Canadian trademark owners, remains to be seen.  While there are notable exceptions, Canadian brand owners tend not to file internationally as much as those from many other developed countries, such as the U.S. and the EU, and depending on various factors, the potential cost savings of filing under the Madrid Protocol generally arise only if an international application designates more than three member countries at the same time.

CIPO has asked for comments on its consultation to be submitted by March 15, 2010.

In a decision released July 16th, the European Court of Justice dismissed American Clothing Associates’ appeal of this decision, and concluded that the maple leaf emblem was indeed protected as a state emblem.

Good coverage of the decision is available at German Trademark Law In A Nutshell – and thanks to Chris of GTLIAN for alerting us to the decision’s release.

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.

ACA appealed yet again, and this time was partially successful.  The Court of First Instance concluded that Article 6ter of the Paris Convention applied only to goods and not to services. As such, the ACA’s application was not prohibited as to services.  Perhaps unsurprisingly, appeals of that decision were filed by both parties–by the ACA, as to the application of Article 6ter, and by OHIM, that Article 6ter and the applicable Regulation applied only to wares.

In mid-May, the European Court of Justice’s Advocate General issued a recommendation that the ACA’s appeal be dismissed and OHIM’s appeal be granted on the basis that Article 6ter of the Paris Convention should apply to goods, and the Regulation should apply to services.  On this approach, the RW and Design mark would accordingly be unavailable for use or registration by ACA.

We’ll keep you posted on new developments in this maple leaf melee.  If ACA loses again, we fully expect that it will seek whatever further appeals are vailable to it, given not only its actions thusfar, but the considerable number of marks it owns that integrate, in whole or in part, State indicia and stylized derivatives from the United States and Canada.

The official fees for European Union Community Trade-mark (“CTM”) applications are being reduced by about 40% (from EU 1,600 to EU 900).

In addition, applicants who apply before May 1, 2009 can save an extra EU 150, because while the final registration fee (EU 850) has already been eliminated, the minimal increase in filing fees (from EU 750 to EU 900) does not take effect until May 1, 2009.

We encourage trade-mark owners considering CTM applications to act quickly to take advantage of the extra savings available before May 1, 2009.

For those of you who missed it, Psion is a mobile computing device manufacturer whose head office is located in Mississauga, Ontario, Canada. Psion holds registrations for the trade-mark NETBOOK in Canada, the US, in Singapore, Hong Kong and in the CTM system.

In December, Psion sent letters to manufacturers and retailers in an attempt to “affirm” its NETBOOK trademarks. To this end, the letters requested the recipients to stop using NETBOOK to describe ultra-portable laptop computers.  Psion followed up with similar correspondence to journalists and bloggers in January.

In response, the blogosphere took umbrage with what it saw as an unjustifiable attempt to, in one blogger’s words, “hijack the netbook industry using registered trademarks.”  A grassroots campaign followed, including the development of websites geared towards “saving” the term from Psion’s exclusive use, and battles ensuing on Wikipedia between detractors and supporters of Psion’s efforts.

The battle escalated with Intel’s February 16 decision to initiate a US Federal Court action against Psion, together with Dell’s February 19 decision to file a petition in the USPTO to cancel Psion’s U.S. NETBOOK registration.  Psion has since counter-sued Intel–the owner of netbook.com, which resolves to this Intel page–for cybersquatting, unfair competition and unjust enrichement.

In Canada, the question of whether or not Psion’s NETBOOK registration would survive a challenge hinges around questions of distinctiveness.  As regular readers of the Canadian Trademark Blog know, distinctiveness in relation to a trademark means that the mark actually distinguishes the wares or services in association with which it is used by its owner, from the wares and services of others, or has adapted so as to distinguish them.

Only a distinctive trademark will allow a consumer to identify the source of the goods.  Loss of distinctive character means the loss of protectability of the trademark in question.  The owner loses the exclusive right to the use of the mark, and the mark becomes publici juris.

While the debate rages on online, we will not actually know the status of Psion’s rights in Canada unless it attempts to exercise them against a third party, or some third party challenges the registration.  While we are unaware of any Canadian court actions that have been initiated to expunge Psion’s registration for lack of distinctiveness, we do know that a competitor, the Taiwanese computer manufacturer Micro-Star Int’l Co., Ltd. (“MSI”) has filed a trademark application for WIND NETBOOK.

It is conceivable that Psion will rely upon its registration to oppose MSI’s application if and when it is advertised.  While an Opposition Board has no jurisdiction to amend or otherwise challenge a registered trademark, the questions about the distinctiveness of Psion’s trademark will pose certain challenges to it, should it decide to oppose MSI’s application.

We will keep you posted on material developments in this dispute as they unfold.

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.

In a pair of court decisions–one released last November and in a second released in in mid-May–the court dismissed the bulk of Johnson & Johnson’s claims that the American Red Cross could not use the symbol in commercially competitive activities.

On Tuesday, the parties announced that they had settled the outstanding matters in their dispute. Though the terms of settlement were not released, both the American Red Cross and Johnson & Johnson will continue to use the emblem in conjunction with their endeavors.

• over 45,000 applications were filed in the twelve month period ending March 31, 2007, reflecting a 4% increase over the previous year
• Canada remains the most common country of applicant origin, with nearly 20,000 applications filed; the US placed second, with over 14,700 applications, while applicants from Germany, France and the United Kingdom rounded out the top 5
• 90% of Canadian trade-mark applications were filed online; prior to 2004, only 20% of applicants were using the e-filing system
• despite the addition of several new Examiners, turn-around times remained the same as in the previous year, and an examination backlog of approximately 20,000 files remains to be addressed
• the number of Statements of Oppositions filed continued to decline, with just over 1100 filings; however, the number of Section 45 (cancellation) notices issued increased slightly over the previous year.

The full report is available here.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

Canada Post had brought an application for judicial review of the decision of the Registrar of Trade-marks giving public notice of the adoption and use of 13 Official Marks by the United States Postal Service. The Federal Court held that in order for a public authority to file a Request for an Official Mark under S. 9(1)(n)(iii) of the Trade-marks Act, the public authority must be a public authority in Canada. The U.S. Postal Service had appealed the Federal Court’s decision to the Court of Appeal, which appeal was dismissed.

In light of the Federal Court’s decision, the Trade-marks Office issued a Practice Notice in 2006 stating that a public authority must be a public authority in Canada. With today’s Supreme Court of Canada decision, the policy in that Practice Notice has now been cemented.