I have updated and split into 2 the trade-marks guide I created for my clients. 

trade-marks-guide-part-1-registering-a-trade-mark summarizes what one should know before selecting and registering a trade-mark, and the advantages of registering. 

trade-marks-guide-part-2-after-registration summarizes how to properly use and care for a trade-mark after it is registered.

Facebook has announced that effective at 12:01 am Saturday they anyone with an existing Facebook account can claim a user name. They have not given much notice, so anyone with a trade-mark needs to act quickly to lessen the chances that anyone else will try to obtain a username using one’s trade-mark.  More details are here and here.

So trade-mark owners should go here today and fill out this form - which is to preserve rights to trade-marks.

Any business that already has a Facebook page should take advantage and claim their username asap.  They apparently can’t be changed once you get it – so quick thought needs to go into the right name to use.

And if a business doesn’t have a Facebook page – consider whether its a good idea to get one. There is a delay for a couple of weeks before you can get a username if you don’t have a Facebook page now. That’s intended to lessen the chances of cybersquatting.

The official filing/registration fees for CTM trade-marks is being lowered by 40%.   A CTM is 1 trade-mark application that gets it registered in all EU countries.   Considering the number of countries that entails, the cost to register a CTM is quite reasonable.

For the London Free Press – April 6, 2009

Read this on Canoe

SPIRITED ARGUMENT: Geographical indicators aim to protect certain regions’ wine and liquor from imitators

With barbecue season fast approaching, the most obvious topic of discussion is trade-marks and alcoholic beverages.

Provisions in the Trade-marks Act and food and drug regulations govern words associated with wine and spirits. The provisions stem from international agreements that let certain regions protect against suggestions a product has a certain origin, quality or association when it doesn’t.

For example, unless you make “sparkling white wine” in Champagne, about 160 kilometres east of Paris, you can’t use the word “Champagne” to describe your product.

There are similar restrictions on names from Chianti and Cognac, to Moselle and Scotch whisky.

Many people think these are types of wines or spirits, but they’re really geographical indications of the products’ origin.

Geographical indications can be given protection, similar to trademarks. The aim is to try to limit the tort of passing off, in which a person may try to pass off products as being associated with a region when they are not.

Most regions with geographical indications impose minimum standards on users to safeguard their area’s reputation.

A recent Federal Court of Appeal case, Glenora Distillers International vs the Scotch Whisky Association, illustrates this point.

Glenora, a Cape Breton, N.S., distiller, claimed its single malt whisky was distilled using the traditional Scottish method and that it had the taste, character and aroma of a Scotch whisky.

But Glenora can’t call it “Scotch” because “Scotch whisky” is a protected geographical indication that can only be used for whisky produced in Scotland that meets certain requirements.

The court also noted Glenora couldn’t call it “Canadian whisky,” either, because it didn’t have the “taste, character, and aroma associated with Canadian whisky.”

Glenora was allowed to use the trade-mark Glen Breton, despite the association’s argument that the name could be confused with famous trade-marks Glenfiddich, Glenmorangie and Glenlivet.

Geographical indications are not automatic. To register one must apply to the government to be listed as a recognized geographical indications. To qualify, the wine or spirit must come from a region of a World Trade Organization member where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographic origin.

With some geographical indications, such as Irish or Scotch whisky, Niagara-On-The-Lake, or Canadian rye whisky, it’s obvious where the wine or spirit originates. But others, such as Beaujolais or Valpolicella, are not so obvious if one is not familiar with the region.

The list of protected regions recognized in Canada is online at http://napoleon.ic.gc.ca/cipo/ listgiws.nsf/gitoc-e?OpenForm.

For the London Free Press – March 30, 2009

Read this on Canoe

Virtual reality was taken to a new level recently when famous guitar manufacturer, Gibson, sued Activision Publishing, Inc., creators of Guitar Hero, alleging that the video game system infringed upon one of its patents.

Specifically, Gibson Guitar Corp. registered U.S. Patent No. 5,990,405 in 1999. This patent covered,”a system and method for generating and controlling a simulated musical concert experience.”

In 2006, Gibson licensed to Activision certain Gibson trademarks for use within the Guitar Hero game.

In January 2008, Activision received a letter from Gibson stating that though the game maker had permission to use Gibson’s trademark, it did not have permission to use Gibson’s patent for simulated musical performances. The letter requested that “Activision obtain a licence under Gibson’s 405 patent or halt sales of any version of the Guitar Hero game software . . . and . . . instrument controllers.”

Activision instead filed a pre-emptive request with the court for a declaration that its top-selling video game did not infringe on Gibson’s patent. Gibson responded to Activision by filing a suit of its own.

In Activision Publishing Inc. vs Gibson Guitar Corp., decided Feb. 26, 2009, the California District Court dismissed the lawsuit and held that Activision had not infringed upon Gibson’s patent. The court made its opinion of the case clear when it held that the allegations brought forth by Gibson, “border on the frivolous.”

Throughout the case, Gibson tried to argue that their patent was infringed and even went as far as to say that, “the ’405 Patent covers any system where a user controls something ‘musical’ with any device.”

The court rejected the argument stating that, “by arguing that any sound made by any controller can potentially be musical, Gibson would have everything in the world — from the buttons of a DVD remote, to a pencil tapping a table — be an ‘actual musical instrument’ within the ’405 Patent.”

Ultimately, the court refused to give the term “musical instrument” such a broad interpretation and instead held that, “no reasonable person of ordinary skill in the relevant arts would interpret the ’405 Patent as covering interactive video games.”

The motivation for the lawsuit may be found in the pre-existing relationship between Gibson and Activision. Industry insiders have suggested that Activision’s decision not to renew the Gibson trademark licence was the motivating factor behind the lawsuit.

In fact, Activision itself, in a letter dated Match 10, 2008, suggested that, “Gibson knew about the Guitar Hero games for nearly three years, but did not raise its patent until it became clear that Activision was not interested in renewing the Licenses and Marketing Support Agreement.”

Whatever the motivation, the California District Court made it clear that the lawsuit was without merit. This decision has now put into question several other outstanding lawsuits Gibson had also commenced against various companies involved in the creation and distribution of Guitar Hero, such as MTV, Harmonix, Electronic Arts, Wal-Mart, Target and K-mart.

For the London Free Press – August 18, 2008

Read this on Canoe

In a decision that has been termed a “crucial victory” and a “knockout decision,” a New York District Judge ruled that EBay was not responsible for policing and enforcing trade-mark infringement of goods posted for sale on the website. That decision is a radical departure from recent European decisions in France and Germany. The District Court Judge ruled that plaintiff Tiffany & Co. was responsible for policing and protecting its own trademark.

Therefore, host sites such as EBay are not responsible to police and review all goods placed for sale on its site.

As recently as June of this year, European courts have ruled in a drastically different way. In France, a French Tribunal ruled that EBay failed to effectively protect trade-marks such as Dior and Louis Vuitton, proved by the existence of numerous counterfeit items on EBay’s French website. In this case, EBay was ordered to pay an astounding US$61 million in damages.

In April, a German court set the European precedent when it ruled that EBay must protect against the sale of fake Rolex watches posted for sale on its website. The prevailing European attitude seems then to be that EBay must take responsibility for protecting trade-marked products and effectively stomp out the sale of counterfeit goods.

The New York District Court however did not agree with that logic. Although EBay does remove counterfeit items once it is notified by Tiffany & Co. that trade-mark infringement has occurred, the U.S. District Judge ruled:

“. . . the law is clear: it is the trade-mark owner’s burden to police its mark, and companies like EBay cannot be held liable for trade-mark infringement based solely on their generalized knowledge that trade-mark infringement might be occurring on their websites.”

Therefore, in the U.S., EBay cannot be held “pre-emptively” responsible for trade-mark infringement just because some of its sellers are advertising and selling fake goods. Prevalent public policy in the U.S., now recognized by the courts, instead puts the responsibility onto the trade-mark owner, most often the giant manufacturers.

EBay was also found to have acted responsibly in the past when faced with issues of trade-mark infringement. When trade-mark owners had issued concerns about possible infringement, EBay took all possible steps to remove the goods from its site. It also provides trade-mark holders with the software tools to search for possible counterfeit items.

Although this is a step in the right direction for trade-mark law, in the closely related area of copyright law, the decision has yet to appear as bright-lined. In the on-going litigation surrounding the lawsuit of Google/YouTube by Viacom for copyright infringement, the courts have yet to reach a definitive answer.

The potential of host-site liability for copyright infringement is therefore still undecided.

Tiffany has announced that it will appeal this decision. Hopefully the appeal court will agree with the trial court.

And hopefully the court deciding the Google/YouTube copyright issue will look back to the reasoning in the EBay case and see that holding host-site responsible for copyright infringement review and enforcement makes as little sense as it did for trade-mark infringement.

Techstuff Canada has a post that says the guys that created Scrabulous made a mistake when they renamed their game Wordscraper after the real Scrabble owner shut them down.

The posts states:

 ”I’ll add just one observation: I think Wordscraper is a terrible name. As John Dvorak observed recently on TWiT, newspapers loved this story because “Scrabulous” is a fun word.” 

and goes on to say that: 

I think the brothers could have bought themselves a lot of goodwill — and more positive press — if they had gone with a new name that’s more fun (and sillier) than Wordscraper.   A name like Melvin, for example.

That’s a very good point.  Good trade-marks or brands need to be memorable, not descriptive.  

Unfortunately descriptive trade-marks are the first thing most people think of.  The thought process is: “how else is anyone going to know what my brand/product/service is?”    The right thought process is: “how can I make people remember my brand/product/service?”

Read the Techstuff post

For the London Free Press – February 11, 2008

Read this on Canoe

In preparation for the 2010 Winter Olympics, Bill C-47, the Olympic and Paralympic Marks Act came into force on Dec. 17.

The Act protects the Olympic brand. The Olympic brand is comprised of dozens of names, phrases, marks and logos related to the 2010 Winter Games. Examples include obvious examples like the word “Olympic,” the use of the official Olympic emblem, as well as less obvious examples such as Vancouver 2010, Sea to Sky Games and the Olympic rings.

The IOC and its marketing partners have placed VANOC under a legal obligation to protect against unauthorized use of the Olympic brand and ambush marketing in Canada.

Ambush marketing occurs when business uses false or unauthorized associations between its business, goods or services and the goodwill associated with the Olympics. Ambush marketing threatens the financial viability of the Olympic Games by impairing the ability of organizers to raise the necessary sponsorship and licensing funding. Essentially, organizations and corporate sponsors participating in the 2010 Vancouver Games marketing program must be confident they are investing in something not available for free.

VANOC’s brand and logo policy on its website states it will assess whether there has been an infringement of the Olympic brand through a six-part test which assesses whether the Olympic brand is:

- Used accurately without distortion or modification.

- Used in an overly promotional manner which contributed to the creation of an unauthorized business association.

- Used in a commercially neutral manner or whether it created an unauthorized business association between the Olympics and a commercial entity?

- Given undue prominence within the context of the overall initiative or storyline?

- Used visually to create an association between a business and the Olympic or Paralympic movement.

- Whether there are any other elements not contemplated in the proceeding factors that otherwise create an unauthorized association with the Olympic or Paralympic movement?

Each factor is rated between one and three and an aggregate score is generated. A score of more than indicates infringement and VANOC can take action to protect the mark, including the use of the courts.

The website also has examples of what uses would be considered acceptable or infringing.

Concerns with this legislation have been noted by critics. First, unlike normal trademarks, IOC and VANOC are not required to prove they have suffered harm under this legislation. Nor does it require the use to be confusing. This will make an injunction or an order for damages easier to obtain. It will be difficult for small businesses to challenge a corporate giant like the Olympic committee.

While the legislation provides an exemption for parody and media, it has been noted that filmmakers, musicians and artists are not exempt from compliance when they wish to reproduce their materials on a commercial scale.

It has also been noted the protection impedes free speech.

It appears corporate sponsorship, trademark law and free speech will be competing for gold at the podium.

I often get calls from clients I am registering trade-marks for asking me if an invoice they have received is legitimate. These are so common that CIPO (Canadian Intellectual Property Office) prints a warning on their trade-mark approval notices that says:

The sender of the “invoice” cuts out the advertisement of the recipient’s trade-mark from the trade-marks journal, and sends it along with an invoice that looks like this:

That is one we received here at Harrison Pensa when a mark we are registering for ourselves was advertised.

So if you get one of these – don’t pay it. If in doubt, contact your trade-mark agent/lawyer.

For the London Free Press – July 23, 2007

Read this on Canoe

UPDATE: A reader pointed out that since this article was written, the Federal court of Appeal overturned the section 7 finding, saying that BMW had not “used” the “M” mark. Thus BMW was not successful in stopping Nissan from using any of the “M” marks. Read the decision.

Two auto giants recently sparred in court over several trade-marks. The dispute between BMW and Nissan arose over the letter M and its design.

BMW uses the M combined with a number or a word as a trade-mark for its M-class line of luxury vehicles, parts and accessories. Nissan uses the M for a line of cars under its Infiniti luxury line.

BMW was successful in part after the Federal Court found that BMWs proprietary rights in its M, M3, M5, M6 and “M and design” were violated contrary to section 7 (b) of the Trademarks Act. Nissan was liable under this section of the Act with respect to BMW’s unregistered marks M and M6.

Section 7 essentially makes it illegal to pass off your wares as another’s, or to cause confusion between your wares and another’s.

BMW objected to the use by Nissan of the letter M standing alone in its advertisements and the use of M6 for a sports package developed for the Infiniti G35 or any other use of the letter M. The court found Nissan’s use of the letter M in 2005 and the descriptor M6 created a likelihood of confusion between the sources of the wares of both BMW and Nissan.

However, BMW was unsuccessful in claiming Nissan was liable for infringement and depreciation of goodwill under sections 20 and 22 of the Act. The judge felt that Nissan did not infringe BMW’s registered trade-marks M3, M5 and M and design after numerous witnesses were able to distinguish the marks. The witnesses’ initial inference did not create any lingering confusion with respect to the source of the wares in any sense that would have confused their vehicle purchasing process.

BMW’s goodwill was not significantly affected.

A large factor in the decision was the perspective the judge took in assessing the likelihood of a “mistaken inference.” He did not take the perspective of a casual consumer somewhat in a hurry.

Rather, he considered the process as the buyer of a luxury, high-performance vehicle. The latter considers many more details and is more systematic in the buying process than the hurried buyer with an imperfect recollection of details.

In other words, trade-marks can be more alike for luxury cars than for breakfast cereal.

The case is under appeal. No doubt the appeal will see both parties suggesting the different results under the two different sections are difficult to rationalize — but, of course, each picking a different one to support.

The partial judgment and order in favour of BMW has been stayed pending the appeal.