A ranking of Canada’s top brands puts Research In Motion out in front, with its newly-introduced Blackberry Bold (left).  The BlackBerry brand is pegged at a value of $5.6-billion, well ahead of the Canadian financial institutions such as RBC and TD Canada Trust that topped the list in years past.  Other iconic Canadian trade-marks such as Tim Horton’s and Canadian Tire are bumped down the list. 

Link to the report: Best Canadian Brands 2008  (PDF copy)

I guess this falls under the category of “online law” – the proceedings of the Old Bailey (London’s Central Criminal Court) dating back to the year 1674 are now online.  Here are a few excerpts from trade-mark criminal cases from the 1800s. They’re a great of snapshot of horse-and-buggy intellectual property law:

10th September 1894 Unlawfully selling two bottles of gingerbeer to which a trade mark was falsely applied. A kid was caught recycling gingerbeer bottles by collecting empties, washing them, filling them with his own home-brew gingerbeer, then selling them from a roadside wheelbarrow. The manufacturer nailed him for trade-mark infringement – essentially passing off his homebrew for that of the brandname drink. 

13th January 1896 Falsely applying to 1,080 electric lamp holders a mark so resembling the trade-mark of the Edison and Swan United Electric Light Company as to be calculated to deceive.  A more sophisticated operation involving a scheme to unload counterfeit lamp holders. The verdict: Nine Months’ Imprisonment.  The trade-mark owner is the company run by Edison and Swan – the American and British inventors who owned light-bulb patents, and eventually joined forces after settlement of a patent infringement lawsuit.

Some things never change.  

Calgary - 09:30 MST

A recent US Court of Appeal decision (North American Medical Corp. v. Axiom Worldwide, Inc., 2008 WL 918411, 11th Circuit Court of Appeals, April 7, 2008) deals with meta-tags and trade-mark infringement.  In a nutshell, the court agreed that the use of a competitor’s trade-marks in metatags constitutes infringement.  This decision is the latest, but does not settle the matter in the US; first, the Second Circuit Court of Appeals has applied different reasoning, and next, the changing nature of metatags requires a more sophisticated analysis of how search engines produce results. 

In Canada, the decision in BCAA et al. v. Office and Professional Employees’ Int. Union et al., 2001 BCSC 156 (CanLII) is still one of the most-cited case on the topic of trade-marks and metatags.  In the midst of a labour dispute, a disgruntled union used the BCAA’s metatags in a union protest site.  The court found that one of the early versions of the union’s site did constitute passing-off.  However, both the North American Medical case and the BCAA case illustrate the problem posed by changing technology. 

In BCAA, the court noted that: “When search engines gather information they seek out and obtain the information in the meta tags.  Meta tags are used by most search engines and directories to gather information.”  This statement is no longer accurate, because of the way search engine technology has evolved.  New court decisions will have to catch up to the search engines.

In the meantime, don’t use competitor’s trademarks in your website metatags – it won’t do you much good in search engine rankings, and the courts are clear that it will be perceived as infringement.

Calgary – 10:15 MST

A new decision and a new policy:

• In a recent decision (Enterprise Rent-A-Car Company v. David Bedford ), Enterprise won handily in its dispute over the bank of names registered by Mr. Bedford, a BC domainer. The dozen domain names (enterpriseautorental.ca, enterprisecarrentals.ca, enterprisecanada.ca, etc.) were used with a pay-per-click advertising scheme and this decision provides a useful precedent for trade-mark owners, along with the panelist’s finding that the test under the CDRP is one of resemblance, not confusion.
• CIRA, Canada’s official dot-ca domain name registry, is introducing changes to the WHOIS policy, starting in June 2008.  Under the new policy, private information about individual registrants will no longer be accessible through the dot-ca WHOIS database. The WHOIS information of corporate registrants will be displayed by default. This means that in order to contact an individual owner of a dot-ca domain name – say, for the purposes of proposing a transaction, or complainaing about trade-mark abuse – a new “administrative process” will be used.  This new process is under development, but it is expected to be an online form which will automatically forward correspondence to anonymous registrants, via CIRA. 

 

Calgary – 10:30 MST

Million of colours or millions of dollars in damages?  Apple’s lawyers must be wondering whether people have too much time on their hands.  A recent California lawsuit  alleges that Apple’s ad copy for its iMac computers is misleading because it incorrectly boasts “millions of colours”.  Gullible customers take this to heart and suffer when it turns out to be inaccurate. Just like Microsoft’s ads claim that “Xbox Live is where games come alive.”  And Maxwell House alleging that it’s “Good to the Last Drop.” …Right. That’s what ads do. They make the products sound great so you spend your money.

In an oft-cited Ontario case (Church & Dwight Ltd. v. Sifto Canada Inc., 1994 CanLII 7314 (ON S.C.)), the court dealt with an allegation of false advertising.  To succeed on this claim in Canada, you have to prove: 

• actual economic loss,
• that the offensive statements were false, and
• that they were made with the intent to cause injury,
• that they were made without lawful justification.

According to the Sifto case, advertisements claiming a product is “100 per cent pure and 100 per cent natural” are “examples of the ‘puffery’ which is the staple of the advertising industry and of marketers everywhere.”   Apparently, this hasn’t been explained to iMac customers in California.

Related Reading:  “Quebec couple battles corporate giant and wins” where a Telus customer successfully sues for a deceptive promotion under Quebec’s Consumer Protection Act

Calgary – 10:30 MST

You win some, you lose some.

An injunction is essentially a court order which prevents a company from doing something, such as using a trade-mark or a patent.  It can be a very useful tool in intellectual property litigation.  However, as we’ve reviewed in other cases, the test in Canada for obtaining – and maintaining – an injunction is not easy to meet.  The test derives from the Supreme Court decision in RJR-Macdonald Inc. v. Canada (A-G), 1994 CanLII 117 (S.C.C.) .  Two recent Canadian cases illustrate this – one win and one loss:

• Trade-Mark Case: In a recent decision out of Manitoba, the Court decided that the Plaintiffs in Marlborough Hotel Corporation et al. v. First Canadian Hotels & Entertainment Ltd. et al. were entitled to an interlocutory injuction in a battle over the use of the “Skyview Ballroom” mark for hotel services.
• Patent Case: In the recent Alberta decision in Core Laboratories Canada Ltd. v. Lonkar Services Ltd., 2008 ABCA 76 (CanLII), the Court of Appeal overturned an injunction granted by the lower court.  At the lower court, the judge had granted an interim injunction prohibiting the appellants from marketing and providing services which include the use of a gamma ray spectral memory tool. On appeal, the court decided the test had not been met.

Calgary – 10:45 MST

To update our earlier post , the owner of the trade-mark CHEAP TICKETS lost at the Federal Court of Appeal in the decision in Cheaptickets and Travel Inc. v. Emall.ca Inc. et al., 2008 FCA 50. The expungement order was upheld.

The court agreed with Emall that the marks were generic and “clearly descriptive” when used in association with travel agency and ticket agency services.

Calgary – 13:00 MST 

The domain name < myspace.co.uk > was registered in August 1997, fully six years before MySpace, the now-famous social-networking site, was even founded in 2003.  In a recent decision (MySpace, Inc. vs. Total Web Solutions Ltd.)  under the dot-uk domain name rules, MySpace has won a dispute that appears to break new ground.  MySpace was able to convince the decision-maker that it should be entitled to take over the dot-uk domain name, even though the registration occurred before MySpace existed.

Until now, many analysts have agreed that the relevant time to measure whether a domain name was registered in bad faith is the date of registration, not the date of the complaint.  This decision seems to have stepped around that detail, and found that the registration was “abusive” because of what happened since 2005, after MySpace had started establishing an international reputation. 

Maybe the UK registrant should have taken the $430,000 offer that MySpace reportedly put on the table in the negotiations leading up to the complaint.  With the stakes that high, it’s no wonder the losing party has filed an appeal of this decision. 

While this decision is not binding on decision-makers in dot-com or dot-ca dispute procedures, the appeal will be watched closely to see how the consensus is developing on this issue.

Calgary – 10:45 MST

If we were to rank intellectual property battles over Canadian culture, last month’s dispute in PEI over the use of the trade-marks surrounding Anne of Green Gables might beat out last year’s domain name fight over Hockey Night in Canada . Third place might go to last year’s trade-mark spat between Tim Horton’s and an American professional bass fisherman by the same name in Muscle Shoals, Alabama. In a rare moment of Canadian cultural imperialism, the coffee-and-donut icon forced Mr. Horton the fisherman to abandon his US trade-mark application for 1 TIM HORTON.

Calgary – 22:32 MST

There was a time when the words “Made in Japan” were synonymous with cheap, low quality trinkets. Today those words are the hallmark of high-quality electronics. The words “Made in China” are on the same path. From an intellectual property and trade-mark perspective, there are cheap knock-offs – like Mickey-Mouse t-shirts and pirated DVDs. And then there are legitimate, cutting-edge imitators that just might beat the original product in its own backyard.

Case in point: the Meizu M8 or miniOne (the one on the right, if you were wondering) is in the vanguard of made-in-China products that will soon be competing directly against Western technologies like the Apple iPhone (on the left). Not only in the US, Canada and Europe, but perhaps more importantly, in the ballooning consumer markets in China and India.

The miniOne is no slouch in the technology department and it appears to be backed up by its own IP portfolio – Meizu’s patent application in China was laid bare earlier this month (See images from the patent application from the State Intellectual Property Office of the PRC or SIPO). In this arena the game for IP owners is no longer one of trying to squelch cheap knock-offs, but to compete head-to-head, armed with IP protection for patents, trade-marks and copyright, at home and overseas.  And to watch out for the miniOne in a store near you.

Related reading: China’s iClone
Calgary – 11:30 MST

Some of the common issues facing Canadian businesses today are: ensuring compliance with e-commerce laws, handling employee surveillance issues and protecting brands online. The following links relate to online contracting and e-commerce in Alberta, as well as employee surveillance issues and online brand strategies for Canadian business:

• E-Commerce: Alberta Internet Sales Contract Regulation
• E-Commerce & Privacy: Alberta Investigation Report P2007-IR-007 – A case in which Ticketmaster contravened PIPA by requiring on-line customers to consent to the use of personal information for event provider’s marketing purposes as a condition of ticket sales transactions.
• Video Surveillance (Federal Case): Eastmond v Canadian Pacific Railway, 2004 FC 852 – in this case, the Federal Court reviewed video surveillance under federal privacy laws and articulated a four-part test.
• Video Surveillance (Provincial Case): Talisman Centre For Sport and Wellness Order P2006-008 (Alberta) – in this case, the Alberta Privacy Commissioner reviewed video surveillance under provincial privacy laws and confirms a three-part test for reviewing the appropriateness of video surveillance.
• Video Surveillance (Provincial Case): R.J. Hoffman Holdings Ltd. Investigation Report P2005-IR-004 (Alberta) – in this case, the Alberta Privacy Commissioner reviewed video surveillance in an employment context, under provincial privacy laws.
• Domain Name Decision: Neteller PLC vs Prostoprom – in this recent decision, Neteller successfully challenged the registration of a domain name under the UDRP rules, and the panel reviewed a number of common issues that were all present in this case: confusing similarity, likelihood of confusion, commercial use when using affiliate advertising programs or pay-per-click advertising, and the use of disclaimers.
• Community Trade Mark (EU): Regulations

Calgary – 20:00 MST

Our earlier post reviewed one of the decisions in the ongoing trade-mark dispute between Cross-Canada Auto Body and Hyundai, the Korean car manufacturer.  This is a dispute over the distribution of Hyundai auto parts.  Hyundai’s injunction application recently failed on appeal (Hyundai Motor America v. Cross Canada Auto Body Supply (Windsor) Limited.), under the three-part test set out by the Supreme Court of Canada:

1. There must be a serious question to be tried in the main action.
2. It must be demonstrated that in the absence of an interlocutory injunction the plaintiff will suffer irreparable harm; and
3. It must be demonstrated that the balance of convenience as between the parties favours the grant of an injunction against the defendants.

The Federal Court of Appeal reinforced the prevailing law that injunctions can be difficult to obtain in trade-mark cases and this factor must be taken into account in any trade-mark litigation strategy. 

Calgary – 10:45 MST

There is growing debate (and some misinformation) about the control by private interests over the very essence of language and thought in our society.  For example, some of the analysis over the Olympic and Paralympic Marks Act (which came into force in December, 2007) has suggested that anyone uttering the number “2010” in the same breath as “gold medal” will be subject to sanction at the hands of VANOC, the defenders of the Olympic brand.  VANOC has tried to explain its approach to infringement assessment to manage this issue. They seem to be applying an even-handed analysis to enforcement, although I’m sure someone will find a way to test the bounds of that law.

Similarly, the current interest in copyright reform in Canada is fuelled by a perception that giving private companies increased protection over copyright will result in a privatization of language and culture itself. 

A recent article in the Toronto Star is a case in point.  The article makes some good arguments but Canada’s intellectual property laws do not prevent someone from using the phrase “freedom of expression” just because someone has registered that slogan as a trade-mark. Infringement involves an analysis of the use of a mark in association with certain goods or services which are the subject of the trade-mark registration. 

The law should engage in a balancing act between competing interests.  Let’s hope that the current groundswell of public interest in intellectual property law will help lawmakers reach that balance.

 

Calgary – 10:10 MST

It’s a classic clash of Euro-couture and irreverent American parody. This time, the Americans won.

The famous French hand-bag company sued the US maker of “Chewy Vuiton” dog toys.  The decision a year ago in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC was appealed and the TTAB (Trademark Trial and Appeal Board) recently issued its decision upholding the lower court’s ruling.  The appeal court agreed that Haute Diggity Dog’s products are not likely to cause confusion with those of Louis Vuitton and that Louis Vuitton’s copyright was not infringed. The “Chewy Vuiton” dog toys were considered “successful parodies” of Louis Vuitton’s trademarks, designs, and products. (Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, US Fourth Circuit Court of Appeals, No. 06-2267 (Decided: November 13, 2007))

 

Calgary – 10:30 MST

A brand is brought into sharp relief in the glare of the media spotlight. 

On a “tip” (from an investor short-selling Lululemon shares), the share price of the Canadian apparel-maker went for a ride this week.  The reputation of the LULULEMON ATHLETICA brand came under scrutiny amid allegations over the seaweed content of the company’s VITASEA clothing line.  Today the company countered with assurances about the results of independent tests and the share price was back up.

The brand lessons for business?

• In a fast-paced media environment, a small story can snowball and grab world headlines.  The response must be quick but also consistent across the company.  Confusion within will only fuel speculation.  Lululemon quickly engaged one of its contractors to re-test the fabric and put the matter to rest.
• If there were problems with the fabric, then the contracts with manufacturers and suppliers would quickly come into play. As a preventative measure, quality assurance provisions and warranties are critical components of any outsourcing agreement such as a manufacturing agreement or product supply contract.

 

Calgary – 14:20 MST

The question is whether the trade-mark PERFUMEBAY is confusingly similar to EBAY for online sales of perfume. Yesterday after a lengthy battle, the court came down in eBay’s favour.

eBay Inc. secured broad protection for its famous EBAY mark in the decision released on Monday in Perfumebay.com Inc. v. eBay Inc., (Ninth Circuit Court of Appeals No. CV-04-01358-WDK, November 5, 2007). The decision upholds a permanent injunction against Perfumebay, stopping it from using the marks PERFUMEBAY (and variations such as perfumebay, perfume-bay or PerfumeBay). The injuction did not extend to “non-conjoined variants” (don’t you love lawyers?); in other words, eBay couldn’t prevent the use of “Perfume Bay” as two separate words. This is a minor and largely meaningless concession considering that Perfumebay’s business is all online and “non-conjoined variants” can’t function as domain names. This leaves Perfumebay without an internet storefront.

The Court reiterated the factors to be considered in determining trade-mark confusion in the internet context:

1. the similarity of the marks,
2. the relatedness of the goods and services, and
3. the parties’ simultaneous use of the Web as a marketing channel.

A mark can only enjoy protection within its field of use. Significantly, the Court defined eBay’s field of use as “the sale of products on an internet-based marketplace”. This appears to extend eBay’s trade-mark monopoly to include any mark that contains the suffix “bay” and involves online sales of any kind.
Calgary – 09:22 MST

Canadians doing business in Asia with registered marks there should not forget about the dot-asia sunrise period. In our earlier post  we refered to the general scope of the roll-out of the dot-asia domain.  The Sunrise 2a period is only open for few more days.  Generally, Sunrise Phase 2 is designed for holders of registered trademarks and/or service marks. Sunrise 2 divided into 3 sub-phases: Sunrise 2a (or “Early Bird Sunrise”), Sunrise 2b (or “General Registered Marks Sunrise”) and Sunrise 2c (for Extended Protection). Sunrise 3 allows registered “juristic entities” based in the DotAsia Community to apply for domain names corresponding to their registered name. Check the guidelines to see whether your organization fits into the definition of “juristic entity” based in Asia for these purposes. The relevant dates are:

· Sunrise 2a: from October 9, 2007 to October 30, 2007

· Sunrise 2b: from November 13, 2007 to January 15, 2008

· Sunrise 2c: from November 13, 2007 to January 15, 2008

· Sunrise 3: from November 13, 2007 to January 15, 2008

International trade-mark owners are queueing up, including Amazon, AOL, Sony Ericsson, Deutsche Telekom, the International Olympic Committee, Yahoo! and others.

More resources:

Detailed Sunrise Guidelines & FAQ (by Deloitte) 

Dot Asia Organization 

 

Calgary – 10:00 MST

Costco must have been pretty worried about the impact of a competitor’s mark PRICECO WAREHOUSE for retail sales. They assert that the competitive mark is confusing with their marks PRICE COSTCO and COSTCO. Costco opposed the mark in the Trade-marks Office in 2005, and then launched a trade-mark infringement lawsuit in 2007 against the competitor, seeking an injunction restraining the use of the competing mark. They even tendered expensive survey evidence to show the court how serious the risk of confusion was. The problem? The competitor hadn’t even started using the mark yet.

In Price Costco International, Inc. v. Welcome Warehouse Ltd., 2007 BCSC 1227 (CanLII) the judge was clear that:

“There has been no evidence of actual use of the PRICE WAREHOUSE mark, or anything similar, and no evidence of intention to use it until the Registrar rules in the defendant’s favour. On the contrary, the defendant has undertaken in writing not to use any such mark until that time.”

The lessons?

• First, in high-stakes pre-emptive injunction application where there is no actual infringing use, there must at least be a “real probability of passing off or infringement”; that was not the case here.
• Court is not the only option for fighting this kind of battle; the opposition procedure in the Trade-marks Office had yet to run its course, so those alternatives must be weighed.
• Even though their application failed, Costco may have proved its point; it has done its homework and will be ready if and when the competing mark is ever actually used, provided their survey evidence is not out of date by then.

Calgary – 20:11 MST

For our readers who are trade-mark agents, it is worth noting several recent practice changes:

These practice notices will affect opposition procedures and the requirement for the use of disclaimers.  The notice regarding Section 9 official marks codifies recent case-law in this area and clarifies the test to be used in determining eligibility for “public authority” status under Section 9 of the Trade-marks Act.

 

Calgary – 10:15 MST

Maybe the journey of a thousand infringements starts with one bottle of “Future Cola”.

The ongoing battle between Groupe Danone and its Chinese joint-venture partner Wahaha is now well documented around the internet.  In recent months, the dispute has spiralled into litigation, arbitration, and competing press-releases. 

In 1996, pursuing a model that is popular with many Western companies, Groupe Danone, the French food-and-beverage giant, decided to jump-start its foray into China by partnering with a well-positioned local player.  Wahaha, a successful Chinese beverage maker, already had a growing business in iced tea, fruit drinks, water and soft drinks.  Its “Future Cola” brand, with red packaging reminiscent of another well-known cola product, is already making inroads into the US market.

The joint venture seemed to be a mutually profitable arrangement until allegations started surfacing this year that Wahaha was producing and selling identical products on its own, outside the scope of the joint-venture, essentially cutting Danone out of these sales and infringing the intellectual property provisions of the JV agreement. Danone does not seem to have faith in the ability of the Chinese legal system to enforce its intellectual property rights, and has opted for a lawsuit in the US and an arbitration claim in Sweden.  Wahaha responded by initiating its own arbitration claim on home turf in China.

Whatever the outcome, the dispute now stands as a cautionary tale for Western companies doing business in China. Make sure you get good local counsel, have a back-up plan for enforcement and be careful who you partner with.  Hot opportunities abound, but beware: even the biggest players can get their fingers burned when playing in China. 

 

Calgary – 10:22 MST