Archive for the ‘Protection & Enforcement’ Category
« Older Entries |Survey On Preparation For New gTLDs
Wednesday, August 25th, 2010
A survey is now being conducted by World Trademark Review (WTR), seeking input from marketing and trademark professionals as to their views on how industry is preparing for the impact of the new generic top level domains (gTLD) that ICANN (the Internet Corporation for Assigned Names and Numbers) appears to be pushing forward with. The survey is supported by a number of domain name and brand protection service providers, trademark owner associations and professional marketing associations.
As previously reported on this blog, ICANN proposes to expand beyond the current gTLDs, of which there are 21, including .com, .org and .net. Under the proposed expansion, any company will be permitted to set up its own domain registry under any term – for example .cars, .honda, .mapleleafs, .canucks and pretty much anything else will be possible. This development obviously has huge implications for all brand owners.
WTR’s survey is intended to provide a sense of how well prepared brand owners are for this coming change.
Posted in Branding, Domain Name Disputes, Domain Names, Protection & Enforcement | No Comments »
First Canadian Decision on Keyword Advertising
Friday, June 18th, 2010
The British Columbia Supreme Court recently issued the first Canadian Court decision dealing with the use by one party of another party’s trademarks in keyword advertising. The case involved a defendant, Vancouver Career College (Burnaby) Inc. (VCC), that provides post-secondary career training services under different business names and trademarks. As part of its internet marketing strategy, VCC, like numerous other businesses, uses keyword advertising, whereby VCC pays search engines such as those provided by GOOGLE and YAHOO! for links to its websites to appear as “sponsored links” or “‘sponsored results” alongside the search engine’s normal search results. In order to use keyword advertising, VCC selected certain keywords to describe its website, including the business names and trademarks of various VCC competitors.
The plaintiff, the Private Career Training Institutions Agency (Agency) is a provincial regulatory agency charged with overseeing career training institutions that operate throughout the Province of British Columbia. Acting on complaints received from other career training institutions in the Province, the Agency sought an injunction against VCC’s practice of using the names and trademarks of those other institutions in VCC’s keyword advertising program, on the basis that such use was false, deceptive or misleading. The Court held that VCC’s keyword advertising program was not false, deceptive or misleading and therefore no injunction was granted.
While framed as a false, deceptive or misleading advertising complaint, rather than a trademark infringement or passing off claim, the Judge in his reasons specifically referenced trade-mark and passing off concepts when looking at the issue of what is confusing or misleading in the context of alleged improper advertising. The Judge found that what the defendants were doing did not amount to false, deceptive or misleading advertising. The Judge also held in his reasons that: “I also accept VCC Inc.’s argument that its practice of using Keyword Advertising is no different than the time-honoured and generally accepted marketing practice of a company locating its advertisement close to a competitor’s in traditional media (e.g., placing its Yellow Pages advertisement next to or in close proximity to a competitor’s telephone number in the same directory so that potential customers of that competitor discover there is another company offering a similar product or service and that they, the consumer, have a choice).”
The Agency has until June 28, 2010 to file an Appeal of the decision, should it choose to do so.
Posted in Case Law, Protection & Enforcement | No Comments »
Feud Over Family Name Spills Into Federal Court
Tuesday, May 11th, 2010
In a recent decision of the Federal Court Trial Division, the registration of the mark STENNER was expunged on the basis that it was not distinctive.
STENNER was registered as a trademark in the Canadian Intellectual Property Office (“CIPO”) in 2005. The Application, filed in 2003, was objected to by the CIPO Examiner on the basis that the mark was primarily merely the surname of an individual. That objection was overcome when the Applicant provided sufficient evidence of secondary distinctiveness – i.e. evidence that the mark was recognized as the source of the Applicant’s financial services and newsletters, as much or more than than it was recognized as a surname. The Application was not opposed by anyone.
The Federal Court found that the evidence established that the registered owner had used the STENNER mark on and off over the years, commencing in the late 1980′s, though rarely, if ever, as a standalone mark and periods of use had been punctuated by lengthy periods of non-use. In the early 2000′s, the principal of the registered owner had a bitter falling out with his two children who were also in the financial services industry and who also used the STENNER name in association with the performance of their services. That falling out had been the subject of a separate lawsuit, however the Court in those proceedings specifically declined to rule on the validity of the trademark registration for STENNER.
The application to expunge the registration for STENNER was based on various grounds, but the argument that won the most favour with the Federal Court was that the mark was no longer distinctive (assuming it ever had been), due to extended periods of non-use, lack of use as a standalone mark and the results of expert evidence on the recognition of the mark as a source indicator for the registered owner’s services. The expert evidence put forward showed that the mark was recognized by virtually no one outside of the Lower Mainland of British Columbia and even within that region, the recognition factor was very low. Also, the use of the same mark by the two children in the same industry and geographic area also pointed to a lack of distinctiveness.
In the end result, the Federal Court ordered the expungement of the registration for the STENNER mark. There is no indication yet of whether an appeal will be filed, though the deadline for doing so is fast approaching.
Posted in Case Law, Protection & Enforcement, Registration | No Comments »