A Czech outfit calling itself the WDTP (Worldwide Database of Trademarks and Patents) regularly sends invoices to Canadian trade-mark owners, claiming to be owed a few thousand dollars as a “filing fee”. The WDTP is just one of many such operations, based in places such as Hungary, Slovak Republic or even within the United States.  These outfits have made a business out of sending bogus unsolicited invoices to legitimate trade-mark owners. They base their letters on trade-mark registration data gleaned from the public US or Canadian trade-mark databases. They even appear to have trouble distinguishing between themselves, since one recent letter warned the reader that it was not associated with those other bogus outfits with similar-sounding names.

It’s small wonder that there is confusion since the names are chosen to be vaguely similar to legitimate government offices. Here is a sampling of a few names: Trademark Registration and Monitoring Office (Past Due Notice) , Trademark Registration and Monitoring Office (Intellectual Property Rights Recordation Alert), United States Trademark Registration Office, Patent & Trademark Agency, United States Trademark Maintenance Service, U.S. Trademark Compliance Service, WDTP, CPTD, WIPT, RIPT, IOPR and so on.

Lessons for business:

• Don’t respond to any “invoices” other than correspondence from your trade-mark agent, or if you are filing directly with the trade-marks office, then look for official correspondence from the trade-marks office in which you have filed.
• The USPTO has posted a warning, listing companies who are known to be circulating such solicitations (with helpful examples of letters that trade-mark owners have received);
• The Canadian Intellectual Property Office has a similar page, but does not list specific entities;
• The World Intellectual Property Office also has a warning page, with examples and names of entities.

Calgary – 07:00 MST
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Since our earlier post last year (Sound Marks in Canada), the road has been open for non-traditional “sound mark” applications in Canada. These are trade-marks that are perceived as sound rather than visually as a word or design. So far, about 20 applications have been filed in Canada, from the 1 second “YUMMM” mark, applied for by Red Robin restaurants, all the way to the Harlem Globetrotters’ SWEET GEORGIA BROWN MELODY, which tips the scales at 2 minutes 49 seconds.

If you want to seek protection for a sound mark, the application should:

• state that the application is for the registration of a sound mark;
• contain a drawing that graphically represents the sound;
• contain a description of the sound; and
• contain an electronic recording of the sound.

If you want advice on sound marks, we’ll lend an ear: Contact Us.

Calgary – 07:00 MST

If you missed the details about the introduction of new generic Top-Level Domains (gTLDs) or need a refresher, see our earlier post here, from October, 2012: An Update on gTLDs. The period for filing formal objections against these new domains has now been extended to 13 March 2013. Once the objection filing period closes, the objections will be processed through a dispute resolution mechanism which will likely run into August 2013.

Note this upcoming webinar hosted by ICANN:

• New gTLD Objection & Dispute Resolution Webinar
  Date: 29 January 2013
  Time: 16:00 – 17:30 UTC (9:00am – 10:30am PST)
  Adobe Connect: https://icann.adobeconnect.com/newgtldwebinar
  Dial In: Dial in numbers are available here [PDF, 22 KB]

  (An overview of the new gTLD objection process, plus a Q&A with Dispute Resolution Service Providers.)

Calgary – 07:00 MST

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Infringement! Litigation! Legislation! There is never a dull moment in the wonderful world of intellectual property law, and 2013 will be no exception. Here’s our list of what to watch in the coming year:

Copyright. If you keep making the same predictions year after year, eventually one of them will come true, right? For the last several years, we predicted that copyright reform would finally come to Canada. 2012 did not disappoint as the year of copyright, with the release of five SCC decisions and the passing of the copyright modernization legislation that had been long awaited.  We expect that 2013 will provide some opportunities to test the new law in court.

Anti-Spam. As with copyright, many have predicted that Canada’s “new” anti-spam law would come into effect for several years. Yes, Parliament passed the Fighting Internet and Wireless Spam Act and it did receive royal assent way back in December, 2010. However, Canada’s anti-spam legislation is still not in force. Industry Canada released draft revised anti-spam regulations last week, and it would be surprising if we didn’t see final regulations in the first half of 2013.

App Law. We predicted in 2011 that app law would develop as regulations and laws fight to keep pace with the explosion of the app economy which is expanding in both business and personal life, along with cloud computing. 2012 provided a number of important developments in app law, mostly in the US. 2013 should continue to provide clarity in this growing area of law.

Apple and Samsung. The litigation that brought patent infringement back into the public consciousness like no case since RIM vs NTP may be resolved in 2013. Even Judge Koh has made a plea for “global peace.”

Calgary – 13:00 MST

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You may recall the announcement that new domains are coming - everything from .AAA to .ZULU. These proposed domains  are inching their way through the ICANN process. We have been monitoring the implementation of new gTLDs and note that the period for filing formal objections against a newly applied-for gTLD began on June 13, 2012 and is scheduled to run until January 2013. If you are interested in filing an objection against a proposed new top-level domain, you should contact trade-mark counsel right away.

Comments are also being solicited on the draft version of the Trademark Clearinghouse Requirements.

See: Reveal Day for New Top-Level-Domains

Calgary – 07:00 MDT

For our readers in (beautiful) Western Canada, forget about those supposedly “sexy” global smartphone wars – this case is a battle of the brands, Canadian style. A hardware store versus a drug store.

The case of Home Hardware Stores Limited v. London Drugs Limited, 2012 TMOB 107 (CanLII) pits competing brands that use the generic term “HOME”. Some of our readers may not recognize the London Drugs brand, which is a Western Canadian chain of stores that sell a little bit of everything, from housewares to computers along with a pharmacy. Home Hardware, of course is a national chain of hardware stores. When London Drugs applied to register its LONDON HOME trade-mark (at right), Home Hardware opposed, citing its “family” of several dozen HOME marks, including the HOME design (at left), and such marks as HOME WARES, HELP IS CLOSE TO HOME and ALL ROADS LEAD TO HOME. There was certainly overlap in the list of wares, and both are sold through retail channels to similar consumers.

The test for confusion in Canada is one of “first impression and imperfect recollection.” In Canada, one trade-mark causes confusion with another trade-mark if the use of both marks in the same area would lead a consumer to believe that the products associated with those trade-marks are made or sold by the same company. The test for confusion requires an analysis of “all the surrounding circumstances” including:

• the inherent distinctiveness of the trade-marks and the extent to which they have become known;
• the length of time each mark has been in use;
• the nature of the products or business;
• the nature of the trade; and
• the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.

After looking at these factors, and the fact that are at least 50 other Canadian trade-mark registrations incorporating the word HOME as the dominant element for similar products, the court concluded that consumers are accustomed to seeing multiple HOME trade-marks in association with the these types of products. Therefore, confusion between the two marks was considered unlikely and the opposition was dismissed. London Drugs prevailed in this battle.

Calgary – 07:00 MDT

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Bookmark ipblog.ca on your iPhone, iPad, Android tablet or mobile device for updates and developments in Canadian intellectual property law, including practical information and commentary on intellectual property business issues, technology commercialization and developments in the law, copyright and patent questions, trade-mark law, software and IT outsourcing, and related areas including privacy and cleantech licensing.

ipblog has been published since 2006.  In 2009, we added applaw.ca to our site, covering legal developments in the growing mobile application industry.

We have surpassed 1 million page-views from readers around the world. It’s hard to compete against YouTube cats… but we try.

Thanks to all of our readers. We’ll be taking a break during the month of August, and will resume in September, 2012.

Calgary – 07:00 MDT

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Apps are not just for Angry Birds anymore. The licensing of mobile apps is becoming more common for business-to-business software vendors who are extending the reach of their enterprise applications to take advantage of opportunities in mobile and cloud computing. If you are a vendor of enterprise software and you want to add mobile functionality, here are a few of the most important legal issues to consider:

1. Check the EULA:

Compared to the full suite of desktop functionality, the mobile app may represent a small piece of your overall software product. But even a mobile app needs an end-user license agreement (EULA). Cloud computing service providers may have service terms that are designed for web access to their software, and they may not perceive the need for a “traditional” EULA, but in the case of a mobile app, remember that this is a “traditional” license where a copy of the application resides on the user’s device and system. So point number 1 is to check the EULA.

Software vendors should understand that apps launched on the iOS platform will come with a “ready-made” EULA courtesy of Apple. Other platforms will come with other license terms. Software vendors should consider developing a custom EULA if there are good reasons for doing so after a risk assessment. A few other points to note: If you prepare your own EULA on the iOS platform, take note of Apple’s “mandatory terms” that must be included in every license. Under the Android Market Developer Distribution Agreement, the default terms grant a “non-exclusive, worldwide, and perpetual license”. If you don’t want to grant such a broad license, then consider a custom-made EULA.

2. Review Privacy:

App developers should get legal advice on privacy issues. The privacy problem with apps has been percolating for some time and several high-profile reports have brought attention to this issue. In several cases, app developers have (intentionally or otherwise) harvested private details about app users by dipping into address books and location-data. In Canada, the privacy landscape is complex, but is underpinned by private-sector privacy laws that apply to “personal information” across all industries, at both the federal and provincial level.

In the US, the California Attorney General recently entered into an agreement with mobile app platform vendors – Amazon, Apple, Google, Hewlett-Packard, Microsoft and Research In Motion – to improve privacy protections for app users. This arrangement implements certain “privacy principles” and requires app developers to have a privacy policy, something that would bring app developers in line with Canadian law. If you don’t have a privacy policy, then consider developing one along with the launch of your mobile app. It can be a useful exercise to determine what information is being collected, from whom, for what purpose.

3. Check the Data:

Ownership and control of data is a critical issue for end-users. In the case of mobile apps that are an add-on for broader enterprise or cloud-based software offerings, the data issue is even more complicated. Who owns it? Who is responsible for it? Where does the data reside? On the device, on customer’s server, on the vendor’s server, or with a third-party host in the cloud? These issues can be addressed within the app EULA, or it may be possible to cover them within the EULA for the enterprise software application. Data escrow may also be appropriate in some cases.

4. Distribution:

Consider where and how the mobile app will be distributed? For example, in some cases, mobile apps can be contained within a “closed” system, which permits distribution within a company. However, if you are a vendor wishing to distribute your mobile app to all of your customers, the easiest method of distribution may be, for example, through Apple’s App Store. This means the app will be available to users in over 60 jurisdictions around the world. Consider the jurisdictional issues – for example, one app developer realized that its marketing materials offended advertising rules of the Federal Trade Commission in the United States, which triggered an FTC complaint and ultimately a fine.

5. Integration:

It goes without saying that your mobile app should be integrated with the other services or software products (whether these are desktop, virtualised or web-based services). But consider this both from a technical perspective as well as a legal perspective. Does the app EULA dovetail with the EULA for your enterprise software applications? What promises, warranties or limitations are available under each document? Does one agreement pick “Alberta law” while the other one falls under “California law”? Consider the situation where the enterprise EULA makes promises or guarantees that user-generated data will be archived by the licensor and provided in a particular format to the customer on request. If that data is collected through the mobile app, and resides on devices of users, then this promise may be difficult or impossible to perform.

6. Brands and Trade-marks:

Lastly, the marketing of mobile apps deserves particular attention. You may have secured trade-mark rights for your enterprise software, but you should also consider trade-mark rights for the app itself. Apple’s App Store is still something of a wild-west when it comes to trade-mark rights. Consider treating the mobile app just like you would any other product – branding and brand protection should be considered in the most important jurisdictions where your customers will be downloading and using the app.

This article was initially published on Corporate LiveWire.

Calgary – 07:00 MDT

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ICANN has revealed the applicants for new generic top-level-domains (gTLDs). (See our earlier post: Let a Thousand .Flowers Bloom? Update on New gTLDs ) This is the list of companies and organizations that want to run their own domain registry, though the new domains have not yet been approved by ICANN. Some points to note:

• Many of the applicants will walk away empty-handed. For example, there are 12 applications for the .APP domain, and only one one of them will be awarded the right to establish that domain.
• A number of global trade-mark owners have staked their claim in this new space – for example, the owners of the APPLE, AUDI, FORD and AMERICAN EXPRESS brands have each applied to establish these brands as gTLDs.
• Yes, someone has applied to establish .FLOWERS, as predicted in our earlier post… there are four applications for this domain.
• Some brand owners have elected to go with generic applications – for example, both Safeway and Walmart applied for .GROCERY
• Internationalized domains are part of the list, including 삼성 (That’s SAMSUNG in Korean).
• Google appears to be among the most enthusiastic applicants. They established a separate company – Charleston Road Registry Inc. – to apply for more than 100 top-level-domains.

ICANN is pitching this as “The day it all becomes clear”, but the process is far from it. An “objection period” for new gTLDs now begins and ICANN states that this period “is intended to remain open for approximately seven months”. Not exactly clear. The proposed “Trademark Clearinghouse” is also not yet established, though this will be critical for brand owners to manage rights protection issues when the new registries are launched. Stay tuned.

Calgary – 11:00 MDT
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Join the Field Law IP & Technology Group for a breakfast seminar on June 6, 2012, in Nisku, Alberta, on the following subjects:

• patents for oilfield service companies;
• intellectual property issues;
• non-disclosure and confidential information in the oil patch;
• copyright and trade-marks, brand protection.

Registration details: RSVP to rsvpEdmonton@fieldlaw.com or (403) 260-8502.

Calgary – 10:30 MDT

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This month marks the 25th year of operations for the .CA domain, Canada’s country-code top-level domain (ccTLD). It was originally allocated to John Demco, an employee of UBC, who operated the domain on a volunteer basis between 1987 and 2000, when it was formally transferred to CIRA (the Canadian Internet Registration Authority). I still recall the days when the mentality around domain name disputes was quite simple – someone knew someone who knew Jon Postel, who could simply reallocate the nameservers. Today, .CA disputes are resolved through formal arbitration under the CDRP – the CIRA Domain Name Dispute Resolution Policy, version 1.3 which came into effect August 22, 2011. A few recent decisions:

• Transfer Granted: In Oakley Inc. v. Zhou Yayang, the famous manufacturer of sunglasses and sportswear claimed rights in the domain name DISCOUNT-OAKLEYSUNGLASSES-SALE.CA. This case was a classic “squatter” case which featured a registrant who filed no defence. Evidence that the domain was being used to sell Oakley products outside of Oakley’s distribution chain. A long line of decisions was cited to support Oakley’s win, and the domain name was ordered to be transferred.
• Claim Dismissed: In Ebates Canada Inc. v. Cranhill & Co., there was a dispute about the EBATES.CA domain name. Ebates Canada claimed that it was the exclusive Canadian licensee of the trade-mark EBATES, a mark which is the subject of two competing trade-mark applications in the Canadian trade-marks office. Cranhill, the registrant, argued that it enjoyed earlier use of the name EBATES dating back to 1994 and had rights in 2000, the year the domain name was registered. In deciding to dismiss the complaint, the panelists noted that the claimant Ebates Canada Inc. was not incorporated until 2011. It did not exist in 2000 and could not have had any rights at the time the domain name was registered.

What’s the overall chance of success? If recent statistics are any guide, decisions are most often rendered in favour of applicants. There have been 51 decisions in 2010, 2011 and 2012 (to date) and of those decisions, roughly 80% of decisions have resulted in a transfer; in about 20% of the cases, the claim was dismissed. That may reflect the fact that applicants will only pursue a remedy through the CDRP when they have a strong case. In about 64% of the cases, a single arbitrator was used, as opposed to a panel of 3 decison-makers. Interestingly, of the cases in which the claim was dismissed, the majority (72%) were decided by a 3-member panel.

Calgary – 07:00 MDT

 

You may recall our earlier posts describing the gTLD process (see: The New gTLDs: Who, What and When). 

ICANN‘s process introduces new generic Top-Level-Domains (or gTLDs), expanding the domain name system from the current familar strings such as .com, .net and .ca, etc. to who knows what… .flowers, .lawyers or .anything. The application period was due to close on April 12, 2012. May 1, 2012 was slated as “Reveal Day”, when the applicants and their proposed TLDs were to be published. So far, some 2,091 applications along with USD$350 million in application fees have been submitted to ICANN. The May 1st deadline has passed without the publication of the application information, because ICANN has suffered a “software glitch” which must be resolved before the application period can be reopened and finalized.  

Once that is complete, ICANN will publish the names of applicants and their proposed TLDs. This triggers a seven-month objection period, during which rightsholders can file a complaint. A recent article from Managing Intellectual Property reports that the “Trademark Clearinghouse” is also behind schedule.

Even if half of the applications are approved, that means the introduction of a thousand new generic Top-Level-Domains. Trade-mark owners, brace yourselves.

Related reading: Lawyers Weekly: Domain Name Article

Calgary – 07:00 MDT

 

My article on “Intellectual Property Issues in Corporate-Commercial Transactions” is published in the Field Law newsletter The Medium.

Calgary – 07:00 MDT

For intellectual property lawyers, sting operations against counterfeiters of luxury handbags is what dreams are made of. An undercover sting - complete with a clandestine meeting at a Toronto gas station, undercover agents and hidden cameras – resulted in a trade-mark infringement award against a reseller of copycat merchandise such as Gucci handbags, Louis Vuitton and Hugo Boss items. In Guccio Gucci S.p.A. v. Mazzei, 2012 FC 404 (CanLII)  the counterfeiter was slapped with an $85,000 damage award. 

This was based on the rough math of infringement in Canada: damages of $3,625 per infringement against flea market vendors and “itinerant sellers”; $7,250 where the infringer is operating from a “fixed retail establishment”; and $24,000 against importers, distributors and manufacturers.

 

Calgary – 07:00 MDT

 

When you apply to register a trade-mark in Canada, each trade-mark must be matched with a specific list of wares and services. The Canadian Intellectual Property Office has released an updated list of approved descriptions of services, as part of its Wares and Services Manual for the purpose of paragraph 30(a) of the Trade-marks Act. The new descriptions include:

• Cloud computing provider services for general storage of data
• Cloud computing enabling file storage of payroll data
• Cloud computing web hosting services
• Cloud computing providing software for database management
• Cloud computing video hosting web sites
• Cloud computing photo sharing services

Contact the Field Law trade-mark team for advice on registering your trade-marks for cloud computing services.

Calgary – 07:00 MDT

 

What’s the sound of a trade-marks office changing its tune? The Canadian Intellectual Property Office (CIPO) reversed its long-standing policy against sound marks by abruptly issuing a new practice notice last week, announcing that it will accept sound marks for registration in Canada. As we argued a few years ago (Time for Sound Marks in Canada?), this change has been debated and anticipated for many years, and no trade-mark owner is more aware than MGM, the applicant that has pursued its iconic lion’s roar sound mark since the application was first filed in October, 1992 (Application No. 714314).  MGM’s lawsuit has resulted in a Federal Court order that paved the way for CIPO’s new policy.

The application for the registration of a trade-mark consisting of a sound should:

1. state that the application is for the registration of a sound mark;
2. contain a drawing that graphically represents the sound;
3. contain a description of the sound; and
4. contain an electronic recording of the sound.

Calgary – 09:00 MDT

 

Richard Stobbe was interviewed in the March 9th edition of The Lawyers Weekly  on the subject of new gTLDs. Note: The gTLD application period closes April 12, 2012.

Related Reading:The New gTLDs: Who, What and When

Calgary – 07:00 MST

 

ICANN is now implementing its plans to permit the creation of new generic top-level domains (gTLDs). TLDs are everything to the right of the dot. (For example, a new gTLD might be .canada, .newyork, or .mac) Many brand owners are tired of seeing announcements about gTLDs, Sunrise Periods and procedures for rightsholders. Seemingly endless changes – from the launch of new TLDs such as dot-ASIA and dot-XXX, to the introduction of internationalized domain names, to recent dot-CA changes – make this a bewildering area of law for trade-mark owners. Here is a summary of what to expect from ICANN in 2012:

• January 2012  - ICANN started accepting applications for new gTLDs. Who will apply? With a US$185,000 application fee, and significant legal and technical hurdles, the applicants are expected to be limited to large corporations and investor groups with a business plan directed at a specific community or niche. Remember that the list of new gTLDs will likely include non-Latin domains, based on Cyrillic, Chinese or Arabic.
• April 12, 2012  – The application period closes.
• May 1, 2012 is “Reveal Day” at which point the applicants and their proposed TLDs are published. This triggers a seven-month objection period, during which rightsholders can file a complaint based on valid rights to the string of characters that make up the gTLD. For example, trade-mark owners may make an objection to a proposed gTLD on this basis.
• Late 2012 – ICANN has proposed a “Trademark Clearinghouse” which would be a (very cumbersome) database of registered trademarks to support trademark claims and sunrise services. As new gTLDs are launched, ICANN will require that every new gTLD operator uses this Clearinghouse and conducts both a Trademark Claims and a Sunrise Process. 
• Late 2012 – probably sometime in 2013 – The actual launch of new gTLDs, with the usual array of Sunrise and Landrush Periods.

We’ll keep you posted as this develops.

You’ll notice we didn’t cover the question “Why”. Why is there a compelling need for new gTLDs?  If you figure that one out, please let us know.

Calgary – 07:00 MST

 

 

 

Join us on March 1, 2012, (see our Events page) for the upcoming meeting of the Licensing Executives Society (LES) on The Alberta Innovation System. Technology commercialization has its challenges. However, resources and funding programs are available to support technology development for small and medium sized enterprises (SMEs) in Alberta. Within Alberta, the “innovation system” has undergone reorganization over the past 2 years. In Calgary, Calgary Technologies Inc., (CTI), and University Technologies International, (UTI) have amalgamated to form Innovate Calgary. Across the province, Alberta Ingenuity, Alberta Research Council, iCORE and nanoAlberta have merged into Alberta Innovates – Technology Futures (AITF).

How does this impact licensing professionals, counsel, advisors, SMEs and entrepreneurs? What do you need to know about commercialization support within Alberta? Attend the LES Alberta Innovation System luncheon with our panel: Darren Massey Senior VP, Innovate Calgary, David Reese, Vice President, Licensing, Innovate Calgary and Scott Bass, Alberta Innovates – Technology Futures.  

Calgary 07:00 MST   

 

 Two of my favourite topics: intellectual property and Lego. The Danish toy-maker has been trying to protect its iconic toy bricks since they were developed in the 1930s and ’40s. Trade-mark law protects the brand (LEGO), and trade-marks can live on and on, as long as the owner (a) uses the mark, and (b) continues to renew the trade-mark registration. The LEGO trade-mark was registered in Canada in 1957 and that registration is still valid.  Last week, Lego’s arch-rival, the Canadian-based toy-maker of Mega Bloks filed and then abruptly withdrew a lawsuit in the US, after threats that Mega Bloks products would be barred from entry into the United States, based on infringement of Lego’s US trade-marks. This reflects the sparring between these two competitors for market share in the building-toy industry.

In Canada, the decision in Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (CanLII), settled a long-standing feud between Lego and Mega Bloks.  In that case, the court decided that the Lego building blocks themselves are not protectable as trade-marks in Canada, on the grounds that the shape of the blocks is purely functional in nature. This does not apply to the LEGO word, or the various other trade-marks that Lego owns. Lego has suffered similar set-backs in other countries – for example, a 2010 decision in the EU came to the same conclusion that functional elements of a trade-mark are not protectable. So what’s a toy-maker to do?

• Patents – utility patents in Canada will protect the function of the invention, in this case, the improved mechanism of how the plastic bricks snap together. However, patents expire after 20 years. Lego’s patents have all expired.
• Industrial Design –  this category of protection (in the US, known as “design patents”) will protect the visual features of a product (shape, configuration, pattern or ornament). Functional elements cannot be protected. Industrial design protection expires after 10 years. Lego has registered dozens of industrial designs to protect a variety of building bricks and parts.
• Copyright – some products are protectable under copyright law, though toy bricks don’t lend themselves well to this category, which is designed to protect written works, music, images, photos, paintings, that sort of thing. Copyright lasts for 50 years after the death of the author.
• Trade-marks – the LEGO brand is arguably the toy-maker’s strongest asset, and trade-marks, once registered, are renewable indefinitely. Trade-marks protect things such as the word LEGO, the associated logo, and various product lines and slogans, such as DUPLO and BIONICLE.
• Distinguishing Guise – A distinguishing guise is a type of trade-mark that protects a very specific type of “brand”. It applies to the shape of the products or the packaging, such as the shape of a Coca-Cola bottle. Since this is a species of trade-mark, the protection is renewable indefinitely once it’s registered. However, utilitarian features cannot be protected.

Calgary – 07:00 MST