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By Richard Stobbe

Apparently Google does not appreciate being ordered by a Canadian court to remove worldwide search results. In Update on Injunction Against Google (Equustek Solutions Inc. v. Google Inc.) we reviewed a 2014 decision in which Google was ordered to de-index certain offending websites which were selling goods that were the subject of an intellectual property (IP) infringement claim (that decision was Equustek Solutions Inc. v. Jack, 2014 BCSC 1063 (CanLII)). Google appealed that decision to the B.C. Court of Appeal.

Last week, in Equustek Solutions Inc. v. Google Inc., 2015 BCCA 265, the B.C. Court of Appeal upheld the original order.

In the underlying action, Equustek alleged that Mr. Jack and Datalink Technologies designed and sold product which infringed the IP rights of Equustek. The original lawsuit was based on trademark infringement and misappropriation of trade secrets. Equustek successfully obtained injunctions prohibiting this original infringement. The infringement, however, continued through a variety of websites, and relying on search engines (such as Google) to attract customers. Equustek obtained another injunction prohibiting Google (“the world’s most popular search engine” – those are the court’s words) from delivering search results which directed customers to the offending websites.

Google appealed, arguing that this injunction was overreaching since it was beyond the Canadian court’s jurisdiction. After all, Google has no employees, business offices, or servers within British Columbia. The appeal court observed that Google’s “activities in gathering data through web crawling software, in distributing targeted advertising to users in British Columbia, and in selling advertising to British Columbia businesses are sufficient to uphold the chambers judge’s finding that it does business in the Province.” The court, therefore, was entitled to assert jurisdiction over Google even though it was not a party to the underlying litigation. Put another way, “the underlying litigation clearly has a “real and substantial connection” to British Columbia. Equally, Google’s services, which provide a link between the defendant’s products and potential customers, are substantially connected to the substance of the lawsuit.”

The court drew a parallel with a recent English case, Cartier International AG v. British Sky Broadcasting Limited, [2014] EWHC 3354 (Ch.), where Cartier sought an injunction against a number of ISPs in the UK in order to block access to the offending websites which sold counterfeit Cartier products. The court granted the order in that case.

The B.C. court rejected a creative free-speech argument (the argument that the injunction may have the effect of stifling freedom of expression from the blocked websites). (“There is no evidence that the websites in question have ever been used for lawful purposes, nor is there any reason to believe that the domain names are in any way uniquely suitable for any sort of expression other than the marketing of the illegal product.”)

The court also gave short shrift to the argument that the injunction should be restricted to “Canadian” results from google.ca as opposed to an injunction with worldwide effect (“…an order limited to the google.ca search site would not be effective.”)

If Google successfully appeals this decision, it will undoubtedly attract even more intervenors and will provide an opportunity for Canada’s top court to clarify the law in this area.

Need assistance with intellectual property disputes and internet law? Get advice from experienced counsel.

Calgary – 07:00 MDT

By Richard Stobbe

A recent decision of the US Federal Court (see: Apple, Inc. v. Samsung Electronics Co., Ltd. May 18, 2015) reviewed the jury decision in Apple’s famous infringement lawsuit against Samsung. You may recall that Apple’s 2011 lawsuit alleged that Samsung infringed Apple’s utility patent rights, design patents, and trade dress rights.

See our previous posts here Pinch and Zoom: Apple vs. Samsung and here Apple and Samsung: The Design Patent Wars Continue.

In the latest decision, the Federal Court left the design and utility patent verdicts untouched, but knocked down the finding of trade dress infringement, on the basis that trade dress cannot protect functional elements of the design.

The court observed that “Apple emphasizes a single aspect of its design, beauty, to imply the lack of other advantages. But the evidence showed that the iPhone’s design pursued more than just beauty.” In its conclusion, the court noted: “Apple has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the unregistered trade dress … Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the functional purpose of improving usability. Rather, Apple focuses on the ‘beauty’ of its design, even though Apple pursued both ‘beauty’ and functionality in the design of the iPhone.” Accordingly, the court reversed the jury’s verdicts on the unregistered and registered trade dress claims.

Watch for our upcoming updates on Canadian industrial design law.

Calgary – 07:00 MDT

It’s budget time… therefore, time for changes to Canada’s IP laws!

No, there is no logical connection between the two, but that seems to be how the government functions these days (the last budget brought in major changes to Canada’s patent and trademark laws without any consultation, but hey, who’s keeping track of these things anyway?). The Intellectual Property Institute of Canada has noted that the latest budget bill has introduced statutory privilege for communications between IP advisors and their clients.

“With this,” IPIC notes, “Canadian businesses are better assured that they can speak openly with their intellectual property advisors in order to obtain the best possible advice, knowing that these conversations will not be revealed to their competitors through a court process or litigation.”

Calgary – 07:00 MST

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By Richard Stobbe

The Canadian Intellectual Property Office has indicated that the amendments to the Trade-marks Regulations (and in particular the accession to international trademark treaties), the amendments to the Industrial Design Regulations and amendments to the Patent Rules will not be finalized until later 2016, and possibly as late as 2017.

A note on the CIPO website says that stakeholders will have the opportunity to comment when the proposed amendments/regulations are pre-published in Canada Gazette, Part 1 (expected late 2016). If the proposed regulations are published in late 2016, then the regulations will not be finalized until 2017 at the earliest.

 

Calgary – 07:00 MST

By Richard Stobbe

You can’t get a trade-mark registration for a word that will deceive consumers. Put into legalese, section 12 of the Canadian Trade-marks Act says a trade-mark is not registrable if it is either “clearly descriptive or deceptively misdescriptive … of the character or quality of the wares or services in association with which it is used or proposed to be used…”

If a trade-mark applies the word “MILK” to a non-dairy product, can that be considered deceptively misdescriptive? This question came up in the trade-marks opposition case of Dairy Farmers of Canada v Cytosport, Inc., 2014 TMOB 148 (CanLII), in which the Dairy Farmers of Canada opposed the registration of the marks the trade-marks MONSTER MILK and MONSTER MLK for use with “Dietary and nutritional supplements for use in athletic training, namely for improving body strength and building muscle, excluding ready to drink beverages.”

The Dairy Farmers essentially argued that the average consumer would believe that the drinks sold under the brand MONSTER MILK would contain “real milk”. In a wide-ranging analysis, which covered the Food and Drug Act, to consideration of Nourishing Coconut Milk Shampoo, as well as references to “milk” in the Oxford Dictionary, the Board ultimately decided that the average consumer would not be deceived, since it would not be apparent which meaning of milk would apply in the case of the MONSTER MILK brand.

This case illustrates the importance of strong affidavit evidence in opposition proceedings: here, the applicant submitted evidence from dictionary meanings, Google search results, and shopping excursions to show common uses of the word MILK in association with other non-dairy products.

Calgary – 07:00 MST

BIG BITE vs. BIT BITE.

These two marks were assessed in the recent case of 7-Eleven, Inc v BitBite Foods Inc. , 2014 TMOB 16 (CanLII), for snack food products. BitBite Foods filed an application to register the BIT BITE design at right in connection with a variety of food products. 7-11 opposed the application on the basis of their family of BIG BITE marks, including BIG BITE (TMA728,674), 1/3 LB. BIGGEST BIG BITE (TMA593,755), SMOKIE BIG BITE (TMA393,436), and SUPER BIG BITS (TMA602,497), also in association with food products. The 7-11 marks included the BIG BITE Design (TMA405,449) at left.

Essentially, both marks were associated with food products, both marks featured a stylized “bite” design element, and the marks were virtually identical except for a single letter. 7-11 argued that their marks were all registered and had been used in Canada since the 1990s. The BIT BITE mark by comparison was applied for on the basis of “proposed use” meaning it has not yet been used in Canada.

How did the board decide this case?

The test for trade-mark confusion in Canada is one of “first impression and imperfect recollection.”  The Trade-marks Act is clear that confusion will result if two trade-marks are used in the same area and would lead a consumer to infer that the products sold under the two marks are manufactured or sold by the same company. Courts in Canada will assess a number of factors when judging two marks:

• the distinctiveness of the two marks
• the length of time each mark has been in use
• the nature of the products or business
• the nature of the trade
• the degree of resemblance between the two trade-marks in appearance and sound or in the connotations.

It is important to note that these factors are not an exhaustive list, and courts are not obliged to give each factor equal weight. The Trade-marks Opposition Board in this case assessed these factors and also weighed the state of the Register and the state of the relevant marketplace.

After assessing all of these factors, the board concluded that marks do share similarities in appearance and when sounded, but the board “found a significant difference between the parties’ marks as a whole, in ideas suggested; a difference, given the simplistic nature of the word components of the parties’ marks, that is readily apparent to the average consumer. “… and the 7-11 “BIG BITE marks are not inherently strong and that the evidence clearly demonstrates that the words BIG and BITE are commonly used in the trade” …therefore “the differences between the parties’ marks [are] sufficient to distinguish them.”

7-11’s opposition was dismissed. One letter was enough of a difference in this case.

Calgary – 07:00 MDT

The very popular US grocery retailer Trader Joe’s has a following among Canadian consumers. Capitalizing on this popularity north of the border, a Vancouver entrepreneur has made it his business to buy genuine Trader Joe’s-branded merchandise in the US, and re-sell the products in a retail location in Vancouver under the banner  Pirate Joe’s. Citing Lanham Act trademark infringement, TJs sued the Canadian businessman in Washington State (appealed that decision  to the US Federal Circuit Court of Appeals.

While this appeal will run its course under US legal principles, it is worth noting the law on “parallel importation” in Canada.

Parallel importation or “grey marketing” is the importation into Canada of genuine products, which fall outside the brand owner’s established channels. These are not knock-offs or counterfeits, but rather legitimate products imported through a channel “parallel” to the brand owner’s preferred distribution routes (or, in the case of Trader Joe’s, where the brand owner has no established trading network in Canada at all).

There are two main intellectual property tools to attack parallel importation, and unfortunately for brand owners, both of them can be problematic in Canada:

1. Trade-marks: Brand owners sometimes try to rely on their trade-mark rights in Canada (Trader Joe’s may have some reputation in Canada through spill-over advertising). In parallel import cases, any claim of trade-mark infringement in Canada is likely to face challenges in light of decisions like Coca-Cola Ltd. vs. Pardhan, which dealt with the export of genuine Coca-Cola products (I wrote a case commentary on this decision for Canadian International Lawyer, June 2000);
2. Copyright: In the Euro Excellence case (Euro Excellence Inc. vs. Kraft Canada Inc.), the brand owner attempted to employ copyright law to stop parallel imports of genuine Toblerone-branded chocolate bars into Canada. On appeal, the Supreme Court of Canada ruled that the Copyright Act could not be used to block the parallel imports.

Stay-tuned to see where this case leads in the US appeal.

Calgary – 07:00 MST

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Earlier this week, the government introduced an unprecedented five international intellectual property treaties in the House of Commons on the same day. The five tabled treaties, introduced for ratification and implementation, are:

• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks,
• the Singapore Treaty on the Law of Trademarks,
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks,
• the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, and
• the Patent Law Treaty.

If you follow these sorts of things – and who doesn’t? – you will know that these treaties have been the subject of debate in Canada for years. For example, here is a 2001 article reviewing the merits of the Madrid Protocol. Why does the government have a sudden interest in pushing these treaties forward now?  It’s because the government is in the process of negotiating a Canada-EU free trade deal  as well as the Trans-Pacific Partnership. According to reports, implementation of these legal reforms is a condition for Canada to finalize treaty negotiations with other countries.

Implementation of all these treaties will result in so many interconnecting changes to Canadian IP law that it will take some time to sort out how this impacts Canadian business in a practical sense. Stay tuned for further updates and guidance on these developments.

Calgary – 07:00 MST

As an update to my previous post in August (click here), this bill (Bill C-8) has been re-introduced in Canadian Parliament, and is currently in second reading. Bill C-8 amends the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and new border measures designed to curtail the importation of knock-off products.

Stay tuned, this bill is expected to get through the Parliamentary process and could be law in 2014.

Calgary – 07:00 MST

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Zynga, the world’s largest app-developer has scored a win against the owner of the SCRABBLE brand. This case brings up several interesting points about international trade-mark protection in the era of apps.

The well known SCRABBLE® brand is a registered trade-mark owned by different owners in different parts of the world. Hasbro Inc. owns the intellectual property rights in the U.S.A and Canada. In the rest of the world, the brand is owned by J.W. Spear & Sons Limited, a subsidiary of Mattel Inc. Mattel is not affiliated with Hasbro – in fact, the two companies are long-time rivals.

In JW Spear v. Zynga, a UK court has decided that the use of the SCRAMBLE brand by Zynga for its word-based app game does not infringe the SCRABBLE trade-mark in the UK, nor does it constitute passing-off. However, the court did consider Zynga’s SCRAMBLE logo design (above left) to constitute an infringement, since the stylized M appears at first glance to resemble a letter B. A few interesting points on this long-running battle:

• As we’ve seen in other IP disputes covered by ipblog, this litigation is part of a wider dispute in multiple jurisdictions, including France and Germany.
• Mattel was chastised by the court for its delay in responding to Zynga’s earlier use of the SCRAMBLE mark, in late 2007. This delay influenced the court’s conclusion that Mattel did not truly perceive SCRAMBLE to be a threat to the SCRABBLE mark. This in turn influenced the court’s opinion that the public would not be confused by the use of the 2 marks.
• Mattel’s delay was likely caused by the efforts of the parties to negotiate a license agreement to produce a physical board-game version of the SCRAMBLE app.  The litigation followed a break-down in negotiations, when Zynga concluded a deal with Mattel’s rival Hasbro.

Calgary – 07:00 MST

A trade-mark must be distinctive – if it is not, it is at risk of being unregistrable, and if for some reason it is registered, it is vulnerable to attack by a competitor.

In Bodum USA, Inc. v. Meyer Housewares Canada Inc. 2013 FCA 240 (appeal from 2012 FC 1450), Bodum USA, Inc. sued Meyer Housewares Canada Inc. in the Federal Court for infringement of the registered trade-mark “FRENCH PRESS” (TMA 475,721) as well as for passing off, and depreciation of goodwill. Bodum lost at the trial level, appealed that decision, and the court made short work of Bodum’s appeal. The appeal was dismissed because the trade-mark “FRENCH PRESS” for non-electric coffee makers is descriptive – it is a generic term applied to all such coffee makers, and the registration probably never should have issued in the first place. By seeking to enforce its descriptive mark against a competitor, Bodum rolled the dice and risked losing any enforceable rights to the mark. In this case, Bodum lost and the court concluded: “The registration is invalid because the term was and is in ordinary and bona fide commercial use as a generic term.” Ouch.

The lessons for business:

• Consult a trade-mark agent to obtain advice on registrability and protectability of your trade-mark, to avoid the problems faced by Bodum’s mark;
• While this case is not precedent-setting, it does confirm Canadian law on trade-mark distinctiveness.
• Note that this litigation is part of a broader IP battle between these competitors. Maybe not as sexy as the smartphone wars between Apple and Samsung, but you might call this a coffee clash: the two companies have faced off in intellectual property litigation in Canada and the US. See this post  for additional analysis of the patent infringement fight over the design of the french press coffee maker.

Calgary – 07:00 MDT

The Kermode bear is a rare species of Canadian black bear, native to the beautiful province of British Columbia.

The recent case of City of Terrace v Canadian Pacific Phytoplankton Ltd., 2013 TMOB 156 brings the iconic animal into the realm of trade-mark law. The City of Terrace, B.C. is the owner of the official mark KERMODE BEAR and the City opposed the application for the KERMODE WARRIOR design mark (at left), applied for by Canadian Pacific Phytoplankton Ltd. An official mark is, in its own turn, a rare species of Canadian trade-mark which, under Section 9 of the Trade-marks Act, is accorded special rights and remedies. Public authorities such as governments and universities can give notice of the adoption of an “official mark”, after which it cannot be used or registered as a trade-mark by others. Think of government coats of arms, university names and crests, that sort of thing. In this case, the official mark claimed by the City of Terrace is comprised of the words KERMODE BEAR, and the City opposed the trade-mark KERMODE WARRIOR for various consumer products, such as dietary supplements, beverages and shampoos.

The Court said: “As stated in section 9(1)(n)(iii) of the Act, the test to be applied is whether or not the Applicant’s mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. The case law has interpreted “consisting of” in section 9 to mean “identical to”. Regarding the resemblance test set out in section 9, the case law indicates that it should be applied as a matter of first impression and imperfect recollection…”

The Court came to the conclusion that the marks were not identical, and the opposition was rejected.

In this case, the official marks did not prevail, and the KERMODE WARRIOR applications were allowed to proceed.

Calgary – 07:00 MDT

The old dictum “use it or lose it” has been applied countless times to trade-mark law (…and French as a second language) for the very good reason that it neatly sums up the ongoing requirement to put registered marks into actual commercial use in order for trade-mark rights to be maintained. A registered trade-mark is not a guaranteed ironclad bundle of rights. It is vulnerable to an attack (usually by a competitor) based on non-use.

In Canadian trade-mark law, these attacks are known as Section 45 proceedings. As the court recently summed it up: “Unlike other pieces of intellectual property, if a trade-mark is not used, it may be expunged from the register.”  Under Section 45 of the Trade-Marks Act, the registered owner of a trade-mark can be compelled to provide evidence that the trade-mark was in use in Canada at any time during the previous three years. No evidence, no trade-mark.

In the recent case of Medos Services Corporation v. Ridout and Maybee LLP, 2013 FC 1006, the court reviewed a Section 45 challenge to the mark MEDOS. The trade-mark owner asserted its rights by tendering evidence such as various bills, receipts and correspondence, none of which convinced the court.

Remember:

• The burden on the trade-mark owner is not very high: The proceeding is “simply an opportunity for the registered owner to show, if he can, that his mark is in use or if not, why not.”
• Invoices or receipts which do not show the mark are of no use in Section 45 proceedings. The evidence must show “use” of the registered mark for sales of the specific products or services listed in the registration.
• It is not enough to show correspondence with a supplier or customer which might lead to future sales. There must be evidence of actual sales.
• The court said: “Evidence of use can take the form of a single commercial transaction in the ordinary course of business.”

Keep track of your trade-mark use and maintain accurate records. The well-prepared trade-mark owner will be able to fend off a Section 45 challenge with relative ease. The unprepared owner will have a much harder time, and as in the MEDOS case, may face expungement of the mark.

Calgary – 07:00 MDT

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Canadian patent and trade-mark applicants take note: the  USPTO has indicated that it will remain open despite the pending shutdown of US government offices and agencies. Therefore, prosecution of US patent and trade-mark applications should be uninterrupted by the current political drama in Washington.

Calgary – 12:00 MDT

Update: October 4, 2013

As the shutdown drags towards the end of week 1, the USPTO maintains that it has reserves to continue operations and accept new applications. As of October 3, 2013, the U.S. Copyright Office has shut down.

Calgary – 9:45 MDT

As a follow-up to our earlier post (Combating Counterfeit Products Act), we wrote in March 2013 that Parliament had introduced a bill (Bill C-56) to amend the Copyright Act and the Trade-marks Act, to combat counterfeit products. With Prime Minister Harper’s decision to prorogue Parliament, this Bill will die on the order paper.

There was a time when the word “prorogue” sent people running to their constitutional dictionaries. Since the prorogations in 2007, 2008 and 2010 this manoeuver has become a common feature of Canadian legislative and political life. The Bill will have to be reintroduced in the next session. Assuming the current senate expense scandal can be resolved, the Bill may make it through the next session of Parliament and be passed into law. Stay tuned.

Calgary – 08:00 MDT

While “famous” marks are handled differently in Canada than they are in the US, there is nevertheless a great advantage for marks such as the well-known  McDonald’s “family” of marks when it comes to effective trade-mark protection. In the recent case of CHEAH v MCDONALD’S CORPORATION, the Federal Court dealt with an application for the mark MACDIMSUM in association with a number of food items. The application was opposed by McDonald’s restaurants.

Anyone seeking to register a mark using the prefix “MAC” or “MC” in association with food and restaurant services should expect some scrutiny by McDonald’s trade-mark lawyers.

As noted by the Court, McDonald’s owns “a large number of trade-marks referred to as a ‘family’ of trade-marks registered and used by McDonald’s in Canada in association with foods and drinks and restaurant services. These are referred to in argument as the MC plus food item, or MAC plus food item, marks.” By presenting evidence of the dozens of these MAC / MC marks, coupled with survey evidence of the public’s likely perception of the mark MACDIMSUM as yet another one of McDonald’s marks, McDonald’s as the opponent of this application was able to persuade the Trade-Marks Oposition Board that this application should not be permitted to proceed. The Court agreed. A few interesting points to note:

1. Yes, let’s face it, there is an undeniable advantage to having dozens of marks to present as part of a billion-dollar chain of restaurants. A ‘lesser’ opponent (with less recognition, lower sales, less advertising and a smaller family of marks) simply would not be in a position to present such evidence in opposition proceedings.
2. Survey evidence is expensive to obtain but can be effective, as it was in this case. However, note Justice Hughes’ comments that:  “The Court has been suspect as to the growing use of and reliance upon surveys in proceedings such as this. The remarks of Rothstein J, in the Supreme Court of Canada decision in Masterpiece Inc v Alavida Lifestyles Inc, [2011] 2 SCR 387 at paragraphs 78 to 101, stating that survey evidence should be used with caution and not supplant the role of the judge, are apt.”

Calgary – 07:00 MDT

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There was considerable interest in our earlier post (Trade-mark Oppositions: When “Close” becomes “Too Close”) which reviewed the competing marks POMPURE vs. POM WONDERFUL for beverages, and the marks CAMILION vs. CAMÉLÉON & Design, both for software.

In another recent case Reynolds Presto Products Inc. v. P.R.S. Mediterranean Ltd., 2013 FCA 119, the Federal Court of Appeal reviewed the competing marks GEOWEB and NEOWEB, both for “cellular confinement systems”. The owner of the GEOWEB mark sought an order to strike out NEOWEB on the basis of confusion. At trial, the judge sided with the owner of the NEOWEB mark. The owners of GEOWEB appealed.

The Trade-marks Act tells us that in determining whether trade-marks are confusing, the court should consider “all the surrounding circumstances” including:

• the distinctiveness of the trade-marks and the extent to which they have become known;
• the length of time the marks have been in use;
• the type of products, services or business in question;
• the “nature of the trade” which looks at the marketplace, sales and distribution channels; and
• the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.

In this case, the appeal court overturned the lower court decision. Proper emphasis should have been placed on the fact that both companies were direct competitors, selling the same products into the same market. The test to be applied is “a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks”. The court should not conduct a careful examination of the two marks through a side-by-side comparison.

In the end, the NEOWEB was found to be confusing with GEOWEB and was ordered to be struck from the register.

Calgary – 07:00 MDT

When is one trade-mark too close to another? This is a question that we work through collaboratively with our trade-mark clients. The short answer is: “It depends…” The long answer is illustrated by these two recent cases. A trade-mark owner can apply for registration of the trade-mark, and part of the application process involves an opportunity for competitors to oppose the application. Most applications proceed without any opposition. If a trade-mark does face opposition, it is handled through a proceeding that is ultimately decided by the Trade-marks Opposition Board (TMOB). Here are two examples:

1. POMEPURE vs. POM WONDERFUL, both for beverages. In the case of Opposition by PomWonderful LLC to application No. 1,389,758 for the trade-mark POMEPURE & Design in the name of Rash Nagar, the TMOB considered the mark POMEPURE, for a range of beverages. The application was opposed by the owners of the POM WONDERFUL marks for fruit beverages. The Board decided that both marks were weak marks lacking inherent distinctiveness. Thus, neither mark was entitled to a wide scope of protection. Using so-called state-of-the-register evidence, the applicant showed at least 10 other POM-related marks for various fruit-based beverages, all owned by different owners. The Board concluded that ”consumers would be accustomed to some extent to seeing marks made up of the prefix ‘POM’ in the marketplace for alcoholic and/or non-alcoholic beverages. Accordingly, those consumers would be likely to distinguish such marks by focusing on their other components.” For that reason, the opposition failed and the mark was allowed to proceed.
2. CAMILION vs. CAMÉLÉON & Design, both for software. In Opposition by Cameleon Software SA to application No. 1,422,576 for the trade-mark CAMILION in the name of Camilion Solutions Inc. a software company applied for the trade-mark CAMILION, but was opposed by the owner of the registered mark CAMÉLÉON & Design. An applicant has to prove that the absence of confusion is more probable than its existence. After weighing the Section 6(5) factors, the TMOB decided that the two marks were too close. The applicant’s mark was refused due to confusion with the existing registered CAMÉLÉON & Design mark.

Calgary – 07:00 MDT

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ICANN’s new gTLD process has taken another step forward. The period for filing formal objections against new generic top-level domains (gTLDs) has now been closed, and the Trademark Clearinghouse has been opened. The Clearinghouse is a global database of trade-marks to permit trade-mark owners to verify trade-mark information and use it to support trade-mark claims as the new gTLDs are rolled out. ICANN has announced that verification services are available now.

Watch for more updates in this area and if you are a Canadian trade-mark owner, check back as we will post details about how to submit your trade-mark to the Clearinghouse.

Related Reading: Another Update on the New gTLDs

Calgary – 10:00 MDT

Parliament has introduced a new bill (Bill C-56) to amend the Copyright Act and the Trade-marks Act, to combat counterfeit products. The bill, if it becomes law, would add new civil and criminal remedies such as:

• opening up new rights to sue for damages for counterfeits and infringing activity;
• creating new criminal offences for trade-mark counterfeits (which would mirror those currently found in the Copyright Act);
• creating new criminal offences prohibiting the possession or export of infringing copies or counterfeit trade-marked goods, packaging or labels;
• grants new powers for enforcement of IP rights at the border (including detaining goods that are suspected of infringing copyright or trade-marks).

Since amendment of the Trade-marks Act is so rare, the government is also taking the opportunity to expand the scope of what can be registered as a trade-mark and fix a few other procedural problems with the current Act. This new bill is designed to bring Canada into compliance with Anti-Counterfeiting Trade Agreement.

This is one to watch in 2013.

Calgary – 07:00 MST