Tuesday, April 21st, 2009
While not, strictly speaking, a Canadian trade-mark issue, many Canadian trade-mark owners will be interested in this limited time opportunity to save money while obtaining protection for their marks in the European Union.
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.
Posted in Foreign Protection, Registration | No Comments »
Monday, March 2nd, 2009
The dispute over Psion’s NETBOOK trademark registrations has crept further into the mainstream, following recent decisions by Dell and Intel to take legal action against Psion in the US.
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.
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Posted in Domain Name Disputes, Domain Names, Foreign Protection, Protection & Enforcement, Registration | 3 Comments »
Monday, January 12th, 2009
On December 31st, while many readers (and writers!) of the Canadian Trademark Blog were likely raising a glass to celebrate the New Year, long-awaited amendments to the Canadian Trade-marks Act quietly came into force. The changes pertain to Section 11.1 of the Act which deals with geographic indications. In particular, the amendments eliminated several terms from a list of wine names that had been deemed generic, and accordingly available for use by anyone, in Canada.
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.
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Posted in Branding, Famous Marks, Foreign Protection, Legislation | No Comments »
