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

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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.

For the London Free Press – April 28, 2007

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It is not always clear if the use of a trade-mark on a website to advertise one’s services is considered “use” of that trade-mark in countries other than where the website or its owner is based.

That issue can be important to determine if one is violating the trade-mark rights of another or has acquired rights to a trade-mark in another country.

A recent case from England shows that under the right circumstances, the answer is yes.

Richard Dearlove, a record producer and recording artist in the U.K. known as Diddy, brought an action against record producer and recording artist Sean Combs, known as Puffy, Puff Daddy and P. Diddy.

In August 2005, Combs announced he was to be known as Diddy. Dearlove’s lawyers wrote Combs requesting he cease using the name in the U.K. as Dearlove claimed rights to that name. He refused and Dearlove commenced proceedings for passing off — using a mark in a way that might confuse the public that your wares or services are those of another.

Dearlove’s claim included assertions that in the course of trade in the U.K., Combs had advertised and provided his goods and services using the word Diddy, including on the websites www.diddyonline.com and www.badboyonline.com.

Combs admitted the allegations about www.diddyonline.com, but disputed the website was directed toward persons in the U.K. as it was registered in the U.S.

The parties reached a settlement in 2006. Combs was allowed to use the professional name P. Diddy and undertook to remove any materials from the U.K. within his custody power or control that made reference to him as Diddy.

In January 2007, Combs changed the website www.diddyonline.com to automatically re-direct users to www.p-diddy.co.uk, where all references to Combs were changed to P. Diddy. The problem then became the www.badboyonline.com site, together with YouTube and MySpace, because they were all accessible from the U.K. and referred to Combs as Diddy.

The court reviewed the case law to determine when a trade-mark is in use via the Internet. The court took the position that placing a mark on the Internet from a location outside the U.K. can constitute use of that mark in the U.K. The fundamental question became whether or not the average consumer of the goods or services in issue within the U.K. would regard the advertisement and site as being directed at him.

Due to the fact the YouTube, MySpace and BadBoy sites all were used to advertise and promote Combs’ Press Play album and tour — including his U.K. dates — the court determined it was a use directed at users in the U.K.

The analysis will no doubt be used ito determine the issue of international trade-mark use.

Couldn’t resist linking to this Dilbert cartoon from today’s paper.

Dilbert on Trade-marks

This is not a new issue, but since a couple of my clients have received scam invoices lately, I thought it was worth mentioning.

All trade-marks are published by the trade-marks office before being granted to give an opportunity to others to oppose the mark if they feel they have prior rights.

It is not unusual for a business to get what appears to be an invoice for a trade-marks publication shortly after their trade-mark is published. Those invoices are not real – or at best is a solicitation for an overpriced listing in an unnecessary publication.

In general, any invoice that does not come from your trade-mark agent is suspect.

These scam invoices are so common that the Canadian trade-marks office has a warning about them on every trade-mark approval notice it sends.

David Canton – for the London Free Press – February 13, 2007

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Businesses invest huge amounts of money and effort into branding, and usually protect that investment and goodwill by registering trade-marks for its brands. But a business can lose all its rights to its trade-mark registration if it doesn’t “use” the trade-mark as defined by law.

Trade-marks might be a logo, such as the Ford blue oval; a product name such as Dell; or a phrase such as Microsoft’s “Where do you want to go today.” Trade-mark legislation and court interpretations have defined “use” over the years to mean the use of the trade-mark precisely as it has been registered to provide the wares and services described in the trade-mark registration.

The law defines “use” for trade-mark purposes much more narrowly than one might think. For example, putting your logo on your building, while certainly a good thing to do, is not considered use for trade-mark purposes.

It is important to use the trade-mark on the product or its packaging if they are goods, and for services when the services are provided or advertised.

One common mistake — especially for design marks or logos — is to make changes to the mark without considering whether a new trade-mark application is required to protect the mark. It does not take much of a change to be considered a different mark and therefore not protected by the original registration.

A common mistake for word marks is to use the mark in a way that does not set the registered mark apart from other words around it. For example, if your trade-mark is the word “widget,” the word “widget” should appear in a different font, a different size, in bold type or some other way to make it clear it stands apart from the words around it.

It is common to see corporate names with Inc., Corp. or Ltd. in smaller letters or in a logo underneath the main portion of the name in some other font or design. That’s done in part to emphasize the part of the corporate name the business wants to be prominent, and also serves to protect trade-mark rights if that part of the corporate name is used as a brand.

Another risky proposition is to combine a registered mark with other marks – whether registered or unregistered. Courts have said a registered mark that is not used on its own, but is always used with other material, has not been used and therefore is not protected. It’s unfortunate when trade-mark rights are lost, or time and money have to be spent to try to defend one’s trade-marks because they were not used properly.

Businesses should consult with trade-mark counsel from time to time to ensure their mark uses and rights are preserved. More details about proper trade-mark use are available on my blog at www.canton.elegal.ca.

I admit to wondering why AT&T decided to drop the Cingular brand after their merger. As a Canadian who is not within that market, all we see is spillover advertising. Just from that, it struck me that Cingular perhaps had a better brand image and more compelling ads.

But then I’m sure AT&T considered it carefully before they made that decision. Although it’s not unheard of for an aquiring entity just to assume their brand/business methods/etc. are better.

Techdirt has a post entitled When Choosing Between Two Brands, Why Keep The Less Popular One? that gets into this issue.

Its interesting not just for the Cingular / AT&T instance, but for branding in general. I often obtain trade-marks for the branding of small businesses that don’t have the budgets to spend on professional branding exercises. A common comment is that they did not realize how difficult it was to make branding decisions until they had to try to figure it out for themselves.

Read the Techdirt post

It is common knowledge that Cisco has a US trade-mark in “iphone”, but recent comments lead to the assumption that Apple and Cisco had come to an agreement over Apple’s use of iPhone for its new product.

Turns out their discussions were not final, and Cisco has launched a trade-mark infringement suit against Apple.

Cisco’s trade-mark is for “computer hardware and software for providing integrated telephone communication with computerized global information networks”. So is that the same as a phone? Is the iPhone really a phone, or is it “computer hardware”?

This is a great negotiating tactic by Cisco, if nothing else. At this point, Apple has little choice but to settle with Cisco, or it risks having to change the name of the product.

Perhaps we should have a contest for alternate names. jobsPhone? minimacPhone? podPhone? topthisMicrosoftPhone?

ZDNet posts the actual claim, and has some good comments on the issue.

Read a Techdirt comment

David Canton – for the London Free Press – October 28, 2006

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How would you feel if an Internet search engine sold your trademark as a keyword in an online auction and you received nothing from the advertisements triggered from the keywords? What if the use of your trademark as a keyword triggered advertisements of a competitor?

When one does a Internet search, keywords are used to trigger the ads that appear along with the search results. For example, if you do a search on the word “computer,” sponsored links appear for various businesses selling computers. Those businesses pay the search engine owner for those to appear.

Many companies get upset when search engines sell keywords that are trademarks.

For example, computer repair and consulting business Rescuecom filed suit against search engine giant Google.

The controversy involves allegations Google violated U.S. trademark law by selling trademarks as an advertising keyword to competitors via an online advertising auction.

Google was recently granted a victory by a New York court.

Judge Norman Mordue of the Second Circuit ruled Google did not violate any federal laws when it sold trade-marks as ad words on an online advertising auction.

The judge granted Google’s motion to dismiss, which means there was no discovery or trial on the facts. Rescuecom is considering its appeal options.

The decision was based on the fact that a search engine selling keywords is not using the trademark in commerce, and consequently there is no misuse. Because Google does not place a trademark on any goods, containers, displays or advertisements, there is no violation of trademark law.

Even if Rescuecom proved, as it alleged, that Google capitalized on the goodwill and reputation of Rescucom’s trademark by marketing it to Rescucom’s competitors as a keyword in order to generate advertising revenues for Google, or that Rescuecom’s competitors believed Google is authorized to sell its trademark, or that Internet users viewing the sponsored links are confused as to whether the sponsored links belong to or emanate from Rescuecom — none of these facts, alone or together, establish trademark use.

This is a landmark decision for Google. While Google is the only search engine that has been given the nod by the courts, the decision paves the way for other search engines that wish to do the same thing.

The decision does not, however, give the green light to those that want to buy ad words using competitor’s trademarks. It in essence means that those who feel others are misusing their trademarks as ad words must go after the ad word buyers, and not the ad word seller.

David Canton – for the London Free Press – October 24, 2006

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Apple Computer has come under fire for attempting to stop others from using certain “pod” words. Trade-mark owners are often in the position of risking the loss of rights to trade-marks if they don’t prevent others from using those marks.

If a trade-mark becomes a generic term for a product, it ceases to be a trade-mark. Trade-marks are valuable. No business wants to lose them.

Some critics suggest Apple is going overboard by aggressively pursuing anyone using the term “Pod” through cease and desist letters.

Apple is the registered owner of the iPod trade-mark. Sales of the portable multi-media device have been wildly successful — giving rise to an entire community that shares, listens and watches their media using the iPod. In the wake of Apple’s success with iPod, the term “podcasting” has developed to mean the recording of an audio file made available on the Internet for downloading to a personal audio/video player.

Apple recently sent a trade-mark cease and desist letter to a site called Podcastready, claiming trade-mark violations. It took the position that the term “myPodder” infringed on its trade-marks and that it causes confusion.

The difficulty is that while legal tests can be cited to determine when a trade-mark is not distinctive in the first place or loses its distinctiveness, they are not always easy to apply in practice.

The response from the podcasting community has been extremely critical of Apple’s approach, suggesting podcasting is not a trade-mark of Apple as it has become part of the vernacular.

Many podcasters suggest any publicity for the term “pod” only serves to bolster the reputation of Apple and Apple products. They suggest any action to dissuade individuals from increasing the popularity of the Apple product only prejudices Apple in the podcasting community.

Whether this particular instance is an Apple trade-mark violation is an important issue for Apple. It faces a real danger in allowing its trade-mark to become part of the vernacular.

The bigger question is whether it is time to reconsider the law in this area.

Perhaps it should be modified to consider the way the Internet and business have developed. Principles restricting use by others that may have made sense decades ago, may not be as workable today.

A trade-mark should clearly not be useable by others for similar wares and services and it’s not in any trade-mark owner’s interest for their trade-mark to become generic or descriptive of a product.

The conundrum the law puts a business in over the need to clamp down on use despite the consequences is not a welcome one.