Google generates serious revenue ($20 billion+) from its AdWords program and “Keyword Suggestion Tool”. Yahoo! has its equivalent Sponsored Search service, and so does Microsoft through Bing Search Advertising.

All of these internet advertising services allow advertisiers to buy “keywords” to appear in online ads within sponsored search results.  Advertisers can buy words, phrases, or even a competitor’s trade-mark to ensure that their ads appear in the sponsored results. This practice is common… and so is the frustration of brand owners when they Google their own brand and then see competitor’s ads popping up.  If you’re one of those brand owners, what can you do about it?  If Rescuecom’s experience is anything to go by, then the answer might be … if you can’t beat ’em, join ’em.

Rescuecom’s attempt to sue the mighty Google (Rescuecom Corp. v. Google, Inc., 562 F.3d) achieved some success – a US appeal court determined that Rescuecom could proceed with its trade-mark infringement lawsuit based on the sale of Rescuecom as a “keyword”.  But Google (predictably) fought back tooth-and-nail, and Rescuecom recently dropped its suit altogether.  Now, it is Rescuecom that is in trouble for its own AdWords use of a competitor’s mark: Best Buy’s “geek squad”.   Rescuecom is trying to convince the court that its use of a competitor’s mark in AdWords is legitimate.   Everyone else is buying up their own brands as keywords, to prevent competitors from getting there first.

Meanwhile, Google continues to cash cheques.

Related Reading: a list of current AdWords Lawsuits

Calgary – 10:00 MST

A popular Chinese night market in a suburb of Vancouver became the arena for an intellectual property infringement case involving trade-marks and copyright. 

In a recent Federal Court decision (Target Event Production Ltd. v. Cheung and Lions Communications Inc., 2010 FC 27), Target, the original operator of the Richmond night market, sued a rival event operator for infringing on the registered mark RICHMOND NIGHT MARKET (in English and Chinese), as well as infringing copyright in the layout and site plans for the night market.  One important element in the decision relates to the distinctiveness of the marks. 

The Court acknowledged that the marks including RICHMOND NIGHT MARKET were “originally merely descriptive” but over time they became “valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness…”  But the judge went on to say that “this acquired distinctiveness was not, in my view, durable. Once Raymond Cheung and Target failed to open a night market in 2009, it is my view that Target’s Names, which were inherently weak, lost their distinctiveness and the associated goodwill.”

The lessons for business? 

1. Weak, descriptive marks can acquire distinctiveness over time through advertising and use, but that distinctiveness can easily be lost.  Unique, distinctive marks will always be much stronger and easier to protect.
2. Remember: directors can be liable for infringement.  In this case, the director of the defendant company was personally liable for the infringement since he was aware of the copyright and still went ahead with the unauthorized copying. As described in the well-known case Mentmore Manufacturing Co. v. National Merchandise Manufacturing Co., a director will be liable where there is “deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or … an indifference to the risk of it.”

Calgary – 10:00 MST

In late 2009, ICANN (the Internet Corporation for Assigned Names and Numbers) announced plans to implement internationalized country-code top-level domain names (ccTLDs) using non-Latin characters. See our previous post: Internationalized Domain Names.

Four ccTLD requests are moving along the process and are now ready for the final step in the process, the application for string delegation. The four countries and the corresponding internationalized ccTLDs are:

Canadian trade-mark owners who have a brand presence in these jurisdictions are advised to monitor developments to ensure that their domain name and trade-mark protection strategies are harmonized when the new top-level domains become active.  Contact us for advice on trade-mark and domain name strategies.

Related reading: IDN ccTLD Fast Track Process.

Calgary – 10:00 MST

Calling all small business owners. Remember that nagging feeling that you should get a handle on your brands and trade-marks? Here’s a local cautionary tale that illustrates why trade-marks are critical for small business. A popular chain of Calgary eateries has been trading under the name NELLIE’S for years.  Last month, the 5-restaurant chain was cited for highly publicized health code violations.  The problem?  Another local eatery, also trading under the name NELLIE’S, but independently owned and operated, is now caught up in the bad press, even though it had no violations.    

Lessons for business?  There are many reasons to protect your brand, and this is just one of them.  A unique, distinctive brand that sets you apart from the competition, will help avoid “guilt by association” and will help your business become stronger and more valuable.  Contact us to review options and strategies for trade-mark protection.

 

Calgary – 09:00 MST

Even Google can’t win them all.  In a recent domain name arbitration decision, Google Inc. v 207 Media, a small Canadian company has prevailed against a challenge by almighty Google Inc.  Google objected to the registration of the domain name GROOVLE.COM, claiming that it was too close to Google’s own famous brand name.  In a domain name arbitration, a complainant must prove 3 things:

(1)   the domain name is identical or confusingly similar to the complainant’s trademark ;
(2)   the person who registered the domain name has no rights or legitimate interests in respect of the domain name; and
(3)   the domain name has been registered and is being used in bad faith.

In this case, the arbitrator decided that Google failed on the first count. GROOVLE was found to be not confusingly similar to Google’s trade-mark. This follows an earlier decision where Google challenged the domain name FROOGLES.COM and lost (Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum, July 18, 2004)).

The real dispute was not so much the similarity of the names (Google has better things to do than chase every single misspelled variation of its domain name).  It was rather the use by Groovle of Google’s Custom Search Engine program.  This program permits users to embed a Google search box into their own site; Groovle took this one step further and permitted users to essentially customize their own search page, using Google’s engine, but displaying Groovle’s brand.

Calgary 10:00 MST

With a few weeks to go before the Winter Olympics, VANOC’s anxiety about official marks (what you might call “brand-wringing”) continues.  The list of protected terms was expanded in December (curiously, this order managed to pass before Parliament was shut down) to include the mascots like Quatchi, at right, and various other symbols of the events. 

Companies of all stripes – from small retailers of cheap knock-off T-shirts, to independent app-developers, to major financial institutions – are scrutinized by VANOC to see if their efforts run afoul of the rules.  It has become clear that the Olympic and Paralympic Marks Act has cut both ways.  VANOC has a powerful enforcement tool to use against infringers and pretenders.  On the other hand, the legislation is like a handbook for companies who are not official sponsors to determine exactly where the line is. For example, Scotiabank’s recent “Show Your Colours” campaign, and the new “International Collection” by Roots, both make use of carefully crafted, non-infringing design elements that evoke the excitement and energy of the Games, while scrupulously avoiding any offense under the Act. 

VANOC’s anxiety is understandable – sponsors have paid handsomely and expect protection.  But you can’t provide a handbook, then complain when people read it and follow it. 

Related reading: Ambush Marketing: The Names That Cannot Be Spoken… (Part 1)

Calgary – 09:00 MST

There a few recent updates from the Canadian Intellectual Property Office (CIPO):

1. Trade-marks: Is Canada finally going to join the Madrid Protocol? CIPO has just a opened a consultation on a Proposal to amend the Trade-marks Act. The proposed amendments focus on  “new business practices and improved international standards”. This may re-ignite the debate about whether Canada should ratify the Madrid Protocol. 
2. Patents: CIPO launched three new two-year Patent Prosecution Highway pilot projects with Japan, Denmark, and Korea, which supplements the ongoing project with USPTO.  The procedures of the Canada-US PPH pilot project will be harmonized with the newly-introduced programs.
3. Patents: There is a new Chapter 12 of the MOPOP on Subject-Matter & Utility and a revised Chapter 13 of the MOPOP on Examination of Applications.  Note that the subject of business-method and software patents (covered by Chapter 16, Computer-Implemented Inventions) is being revised by the Patent Office and proposed revisions are expected by Spring 2010.

Calgary – 11:00 MST

2010. Winter. Games.   As the 2010 Olympics reach a frenzied pitch in Vancouver, the contests on the ice and snow will be matched by brand battles on billboards and posters.  You will recall that in Beijing, the “Brand Police”  (see: Olympics and the Trade-Mark Police) covered up offending trade-marks with duct tape. Not just in Olympic venues, but throughout the city.  Such practices have now come to Canada, where Olympic volunteers risk having their shoes and t-shirts swaddled in duct tape to cover up the brands of companies who are not official sponsors. 

Some retailers have danced close to the line (such as Lululemon’s famous dig at Olympic brand-control), and some knock-offs have been caught when they stepped over the line.

When VANOC assesses whether a product or advertisement offends the Olympic brand they look at the following factors. Essentially, they will be looking to see if the use of the Olympic marks falsely creates the impression of a business association with the Olympics.

• Factually accurate use: When the Olympic brand is used, is it used accurately and without distortion or modification?
• Relevant use: VANOC is less likely to object if the use is relevant to a larger storyline and isn’t so gratuitous or disproportionate that it creates the impression of a business association with the Olympics. 
• Commercially neutral: VANOC is less likely to object if the brand is used in a commercially-neutral manner that does not create the impression of a business association with the Olympics. 
• Undue prominence: How much prominence is given to the brand?  
• Use of Olympic or Paralympic visuals: Use of Olympic visuals in connection with a business  – logos, archival Games images, team uniforms or Olympic medals – is a red-flag for VANOC.
• Unauthorized association: This is a catch-all category – VANOC will look at surrounding circumstances such as the timing and strategic placement of the advertising in question.

Companies wishing to publish last-minute advertisements in the lead-up to the 2010 Games are encouraged to seek advice before they go to print with ads, signage or product packaging.  It is worth noting that Lululemon, though they were publicly scolded by VANOC, has not been met with any other threats or cease-and-desist letters. So they appear to have found the line, and stayed on the right side of it.

Related Reading: Olympic Lawsuits, Our Trademark Anthem

Calgary – 09:00 MST

A few trade-mark stories are worth noting:  Trade-mark Opposition is a process where one brand owner can oppose the trade-mark application of another. Take these two recent examples which illustrate why you need good advice when arguing your case before the Trade-marks Opposition Board (TMOB):

• PIZZA SPOT vs WHITE SPOT: the owners of the well-known White Spot chain of restaurants opposed the application for the mark PIZZA SPOT for restaurant services, citing its family of 17 registered WHITE SPOT marks; the TMOB decided that PIZZA SPOT would not be confusing with WHITE SPOT for identical services; there is a low degree of distinctiveness for the word SPOT, and so the mark PIZZA SPOT was permitted to proceed (White Spot Limited v. Mazzaruss Inc., 76 C.P.R. (4th) 385 (T.M.O.B.));
• SEA MILES vs AIR MILES: what appears to be a similar case resulted in the opposite conclusion. The owners of the AIR MILES brand challenged the application for the trade-mark SEA MILES for identical services (travel rewards programs). The AIR MILES owner cited its family of 27 registered AIR MILES marks.  The TMOB concluded there is a high degree of resemblance between the marks, and refused the application for SEA MILES (Air Miles International Trading B.V. v. Sea Miles LLC, 76 C.P.R. (4th) 369 (T.M.O.B.)).

Why the difference? In making their arguments, AIR MILES submitted substantial evidence of use and advertising, and built up their case for their family of “MILES” marks.  In the WHITE SPOT case, the evidence wasn’t clear that there was a family of “SPOT” marks, though evidence was tendered to support the use and advertising of the WHITE SPOT mark.    

An update to our post on the The Great Olympic Sweater Debate: the Cowichan Tribes have reached a settlement with VANOC in a licensing deal that permits sales of genuine Cowichan sweaters in Vancouver alongside the Olympic brand. Although the Cowichan band likely did not have an arguable case under intellectual property law, they did have a good argument in the court of public relations.  A quick resolution attests to VANOC’s desire to avoid negative headlines in the run-up to the games. 

Calgary – 09:00 MST

In a story that reads like a law-school exam, a company with a German trade-mark took a California man to arbitration to try and win the domain name project.me, which is registered under the rules for the country code top-level domain for Montenegro.  iPhone app developer Project.me (the German company) recently lost at arbitration before the World Intellectual Property Office Arbitration and Mediation Centre.  The decision project.me GmbH v. Alan Lin Case No. DME2009-0008 is noteworthy for several reasons:

1. The German company failed primarily because the domain name in question was applied for before the company was incorporated or the trade-mark was applied for. The California registrant who initially registered the domain name couldn’t have registered it to take advantage of the German company’s brand, since the German company didn’t exist at the time.

2. Domain name arbitration decisions typically ignore the suffix (.com, .ca or in this case .me) but this decision notes that “a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.”  Future domain name disputes may take this reasoning into account.

3. This case illustrates the international nature of intellectual property disputes and shows why it’s important to get advice on trade-marks, branding, and domain name strategies.

Calgary – 11:00 MST

Aside from disputes over beer labels, you can’t get much more Canadian than this one.  When the Bay unveiled its line-up of Olympic gear last week, the knit sweater (pictured at left) attracted the attention of the Cowichan Band Council, who cried foul . The sweater, they complained, is a rip-off of the traditional Cowichan sweater which has been knitted by the Vancouver Island band for generations and has become something of a Canadian icon.  The Bay argued that theirs wasn’t a Cowichan knock-off, but was merely inspired by the design style. 

So, does the Band Council have a case for trade-mark infringement?  Probably not. The Band does indeed have several registered trade-marks, not for the design of the sweater, but for the words GENUINE COWICHAN, and the logo at right.  The design of the sweater itself is likely not protectable – there are countless variations of the design, even among genuine products.  As long as the Bay does not sell its sweaters with the words GENUINE COWICHAN or that logo, then it likely won’t infringe the Band’s marks.

Calgary – 10:45 MST

Putting a lime in your beer is nothing new. But branding it apparently is. US brewing giant Anheuser-Busch Companies Inc. and Canadian Brick Brewing Co. Ltd. are locked in an intellectual property dispute over their labels for lime-flavoured beer. The makers of “Bud Light Lime” complain that Brick’s “Red Baron Lime” is an infringement of copyright and trade-mark rights in the label.  Have a look and decide.  This dispute leaves aside the more important question of why beer needs to come pre-packaged with lime in the first place.

This isn’t the first brand battle for Brick.  Earlier this year, Brick agreed to change its Red Baron labels in the face of a lawsuit by Labatt.

Calgary – 9:45 MST

Recent news articles have shown that Twitter Inc. has run into problems with its US trade-mark application for TWEET.  Others have beaten them to the trademarks office with applications for marks such as  TWEETMARKS,  COTWEET and TWEETPHOTO, which have been cited by the US trademarks office as being confusing with TWEET. In Canada, Twitter filed their application on June 10th, and it appears a potentially competing mark TWEETBUCKS was filed two days before on June 8th. (The registered mark HOME TWEET HOME for bird houses, owned by an Alberta entrepreneur, likely won’t be a problem for Twitter.) Curiously, Twitter’s application for TWEET is based on “proposed use in Canada”, though the service has been embraced by Canadians for several years.

Lessons for business?

• Don’t wait to protect strategic brands, in both your home jurisdiction and important foreign markets. This shows the risks of waiting too long.
• A successful core service such as Twitter will, in very short order, spawn innumerable spin-off products and services. While these spin-offs can benefit and drive traffic to the core service, they can also threaten the identity of the brand. So in time, Twitter and Tweet may suffer from “genericide” – the effect of such widespread penetration and use that the term morphs from a specific identifiable brand into a generic word.

Calgary – 10:00 MST

In what appears to be a case of first impression in Canada, a Federal Court has confirmed that the title of a literary work cannot function as a registered trade-mark in Canada. This is consistent with the law in the US, but the issue has apparently never come before a court in Canada until earlier this year in the obscure but fascinating decision in Drolet v. Stiftung Gralsbotschaft and Foundation of the Grail Movement, 2009 FC 17 (CanLII) .  In that case, the Court decided that several registered trade-marks should be expunged from the register because they were used merely as titles of published works and were “inherently descriptive”. 

Compare this to the registrations for CHICKEN SOUP FOR THE SOUL, Registered, TMA546104, or any one of the HARRY POTTER books. Whenever the title of a successful book series is the subject of a trade-mark registration, care must be taken to ensure the registration can stand on its own as a trade-mark, and is not vulnerable to challenge on the basis set out in the Drolet decision.

Calgary – 10:30 MST

Another day, another lawsuit against Google (Rosetta Stone Ltd. v. Google, Inc., 1:09-cv-00736-GBL-JFA (E.D. Va. complaint filed July 10, 2009)). This lawsuit comes in the wake of recent changes made by Google to its AdWords policy. These changes relaxed the rules relating to the use of trade-marks and permitted the use of trade-marks in ad text in the U.S. even without approval from the trade-mark owner.  Not surprisingly, a recent study shows that, after the recent changes, there was an increase in the number of advertisers who sponsored or used trade-marks in their ad copy text. In other words, the use of trade-marks as sponsored keywords appears to be increasing with the new AdWords policy.

Calgary – 09:30 MST

L.E.I. for jeans is arguably confusing with both LEVI’S and LEE, making it a perfect candidate for a trade-mark battle.  Lee Canada went to bat to defend its LEE brand in the face of an application for the mark L.E.I. (stylized) for use in association with jeans. Lee Canada opposed the registration – and won – on the grounds of confusion with its registered LEE marks, used in Canada since 1937. (Lee Canada Inc. v. Jones Investment Co., 71 C.P.R. (4th) 112 (T.M.O.B.).)

The owner of the L.E.I. mark also owns associated marks L.E.I. LIFE ENERGY INTELLIGENCE for clothing.  Though the mark LEE is not highly distinctive according to the Trade-marks Opposition Board, Lee Canada was able to establish that its reputation in Canada was entitled to protection.  The application for the mark L.E.I. was refused, but the damage may already be done: the same owner already owns a registered mark for L.E.I. for jeans, registered in 2002, a mark that likely slipped past Lee Canada.  L.E.I.-brand jeans are sold in Walmart, and recently signed-on country star Taylor Swift to endorse the clothing line, so this brand is not one to be ignored.

Calgary – 15:00 MST

There have been a rash of new lawsuits against Google’s AdWords program including 2 major class-action claims:

• FPX, LLC v. Google, Inc., 2:2009cv00142 (E.D. Tex. complaint filed May 11, 2009) (Class action);
• Soaring Helmet Corp. v. Bill Me Inc., 2:2009cv00789 (W.D. Wash. complaint filed June 9, 2009);
• John Beck Amazing Profits, LLC v. Google Inc. 2:2009cv00151 (E.D. Tex. complaint filed May 14, 2009). (Class action);
• Stratton Faxon v. Google;
• And the ongoing Rescuecom case.

What are the issues for Canadian TM owners in connection with the US class actions? First, the US class actions have yet to be certified, meaning the US lawsuits may not be eligible to proceed as class actions, but if they do, then they could attempt to settle the issue for trade-mark owners across the US (those who do not opt out). Canadian class-actions may also be commenced, if the US class actions are certified, or if the US actions appear to be making headway against Google.  Many trade-mark owners will likely opt out since they won’t want to be tied into litigation over which they have no control.  But there will still be plenty of class members who will happily join a class action against Google in the hopes of getting a portion of the any settlement or damage award.  For trademark owners who opt in, the lawsuit is trying to peg Google with liability and damages and any damages (more likely a settlement of some kind) would be split between the class members. For those who opt in, there is also a risk that they would be bound if the Court finds that Google is not liable, and they would then be stopped from suing Google on their own separate actions against Google or the other defendants based on trade-marks infringement in in keyword advertising.

However, let’s face it: if the class action lawsuit fails, then the chances of anyone suing Google on this issue decrease substantially. Companies who benefit from AdWords and are buyers of TM keywords in their AdWords advertising, are likely to want to opt out of the class. These companies also face the possibility of being sued in future TM infringement litigation if the class actions succeed against Google.

For its part, Google doesn’t seem to be showing signs of backing down – they recently announced that they will allow a group of “special” advertisers to use competitors’ trade-marks to appear right in the ad copy, even if the trade-mark owner objects.

Calgary – 15:00 MST

 

In our previous post on The Whisky Caper: Scotch Whisky Association vs. Glenora Distillers, we noted that a Canadian distiller won the right to use the word GLEN in its trade-mark for Canadian whisky, against the objections of the Scotch Whisky Association.  The Association has now announced  that it will appeal the decision up to the Supreme Court of Canada (SCC).  Even if the SCC agrees to hear the case, a decision won’t be expected for several years.

Calgary – 11:45 MST

Want to trade-mark the colour green? Just ask the makers of painter’s tape for some pointers.

They applied (several times) to register the colour GREEN as a trade-mark for their well-known green painter’s tape, based on use in Canada since 1993. 3M and others opposed the latest application, arguing that the trade-mark was not distinctive since many competitors also sold green tape products.

In the recent decision in 3M Company v. Tape Specialities Limited, 70 C.P.R. (4th) 138 (T.M.O.B.), the Canadian Trade-marks Opposition Board decided that the colour green was not distinctive of the applicant, and the application was refused (Trademark: COLOUR GREEN #3, Refused – Section 38(8), 1062931 )

Colour can be the subject of a trade-mark registration in Canada, but contrary to popular misconceptions, it does not provide the owner with a monopoly over the colour itself, just the colour as applied to a particular product – for example, Wedgwood was able to register the colour blue (specifically Pantone #658), as applied to boxes containing clocks (Trademark: Colour Blue design, Registered, 1166661, TMA689472 ). They claim use in Canada since 1800, making this arguably one of Canada’s oldest colour trade-marks (though I question whether Pantone #658 was around in the year 1800… but only lawyers quibble about such details.)

Calgary – 11:45 MST

A Montreal company has been hit with a cease-and-desist letter over its launch of an iPhone app that helps users find the city’s “Bixi bikes”. Bixi is the public-use bicycle system in downtown Montreal. Bixi (contrary to some reports) is not a registered trade-mark, though an application for registration has been filed.

There are many iPhone apps which permit users to schedule or locate public services, such as STM mobile (designed for the Montreal transit system), not to mention similar public transit apps for cities all over the world. Apps which locate private companies are also common, such as apps which pinpoint Starbucks, Tim Horton’s and TD bank locations.

It would be interesting to hear the court’s view on whether the use of Bixi in this form constitutes trade-mark infringement, but the letter appears to have worked. The app site now contains a French-language notice that says “We understand that it was an error (made in good faith) to use the trade-mark Bixi. We hope to work with Stationnement de Montréal and Bixi to find a solution that will respond to your needs.”
Calgary – 13:45 MST