David Canton is a business lawyer and trade-mark agent with a practice focusing on technology issues and technology companies.
The blogosphere has a couple of mentions about an article on the AppleInsider that points to a recent Apple trade-mark application for “iPhone” in a “Far Eastern” trade-mark office as evidence that Apple is in the final stages of development of its combo cellphone/ipod.
Apple applied for the iPhone trade-mark in Canada in October 2004. Note the Canadian application has been opposed by Comwave Telecom, which has also filed an application for iPhone.
David Canton – for the London Free Press – September 30, 2006
A trade-mark can be a valuable asset. A recognizable brand can boost sales and make products or services more easily recognizable to customers. But if you don’t use your trade-mark, you can lose the registration.
According to the International Trade-mark Association, the average person sees or hears more than 1,500 trade-marks every day.
Success in the business world depends on presence in the marketplace — the message and the image. Trade-marks establish the wares and services of a business and its reputation.
A trade-mark provides protection to the owner by ensuring the owner has an exclusive right to use it to identify goods or wares.
If a person or enterprise has a registered trade-mark, no one else is allowed to use it for the registered wares or services. If that person or enterprise fails to use its trademark in a timely fashion, it seems only appropriate that someone else may claim rights to and make use of it.
The Trade-marks Act provides that anyone who believes another party has failed to use their trade-mark with the listed wares or services during the last three years can apply to the trademarks office to have the trade-mark expunged. If this happens, the trade-mark essentially ceases to be a registered mark and any rights that registration brings are gone. It is then available to anyone wishing to register and use it.
A trade-mark is registered only for use with the wares or services listed in its registration. Expunging it may cancel the registration of the trade-mark as a whole or for just those wares or services that it is no longer being used for.
For example, if I have Brand X registered for breakfast cereal and for a restaurant, I might lose the registration for breakfast cereal, but keep it for the restaurant. That may be the case even if I sold breakfast cereal labelled Brand X for many years, but let it lapse for the last three.
Once a proceeding to expunge a trade-mark begins, the onus is on the registrant to prove by affidavit evidence, including samples of use, that it has been used within the last three years.
An exception is if a registrant can show a good reason why they have not used the trade-mark, they will not lose their rights to it.
In a recent case, the court decided it was reasonable to conclude that a vodka distiller from an emerging nation would be unfamiliar with Canadian alcoholic distribution requirements. The distiller mistakenly held off using its trade-mark while seeking certification. The court refused to expunge the unused trade-mark.
David Canton – For the London Free Press – August 26, 2006
The usual name searches done when incorporating a company often are not enough, even if they do meet legal requirements.
When incorporating a new Ontario or Canadian corporation, one must provide a name report to the government along with the draft articles of incorporation. That report is a search of existing corporate names, registered trade names and registered trade-marks.
That search is sufficient from a legal perspective, but may fall short for business reasons, depending on the nature of the corporation’s intended business.
If the corporation will sell products or services, it should have a website. The most logical domain name for a website is the corporate name. Searches should be performed to see if those names are available for various top-level domain extensions, including .ca and .com.
Such a search will ensure your preferred name is available as a domain name. Alternately, if the name is taken and an alternate domain name is acceptable, one should be certain the domain name already in use would not be problematic. That might be the case if the site is one with which you would not want your business associated or if it belongs to a competitor.
If the business intends to sell its products or services outside of Canada, it may want to do at least some cursory trade-mark searches in other countries to see if the proposed name has been used by others for similar products or services.
When choosing a corporate name, put that name in quotes and perform a Google search.
That will tell you how common the term is. Sometimes, the less common the term, the more memorable the name will be.
Having a name customers can easily recall is always good.
If there are thousands of hits, which is common, view the entries on the first few pages to see if there are any obvious conflicting uses.
A domain name can be a necessity for a business. A domain name the same as one’s corporate name can be useful international advertising. It may be the first place potential customers go to find information about a business. Businesses also give a better impression if their e-mail addresses use their name. For example, dcanton@ harrisonpensa.com seems more professional than dcanton@hotmail.com.
Even if there are no immediate plans to have a website, domain names should be obtained immediately before someone else scoops them.
Far better to find out at the outset and go through a few proposed names than to incorporate and find out later you have to compromise on your domain name or change your name.
Thanks to Howard Knopf for pointing out in his Excess Copyright blog that Sony applied a while ago for the trade-mark “Like no other”. I note they have applied for it in at least the US and Canada.
Rather amusing in light of the batteries they produced for Dell that burst into flame, and their rootkit CD fiasco.
David Canton – For the London Free Press – July 8, 2006
The Supreme Court of Canada recently dealt with the protection afforded famous trade-marks â particularly Barbie and Veuve Clicquot.
Companies with famous trade-marks are eager to protect the image and goodwill associated with their brands. Itâs no surprise that battles over famous trade-marks frequently take place in the courts.
Earlier this year, the Federal Court heard a case involving the famous trade-mark âJaguar.â The matter pitted the luxury automaker against a manufacturer of low-end backpacks and tote bags that also used the Jaguar trade-mark on its products.
The car manufacturer argued that as a famous brand it deserved increased protection for its trade-marks to prevent other companies from capitalizing on the goodwill associated with the mark or tarnishing the markâs image in the minds of consumers.
The court decided the Jaguar brand was sufficiently famous to deserve extra protection.
Since the release of the Federal Courtâs decision, however, the Supreme Court of Canada has weighed in on the issue with the recent release of two separate decisions about famous trade-marks.
The Jaguar case may have been decided differently if it had been heard after these Supreme Court cases, which take precedence over Federal Court decisions.
Mattel Inc., the makers of Barbie dolls, went up against a small chain of restaurants in Montreal operating under the name âBarbieâs.â The restaurant chain was attempting to register the trade-mark and related design.
Mattel opposed the application, claiming the Barbie trade-mark is so famous that it cannot be used in Canada on most consumer products without the average consumer believing the two brands are connected.
Veuve Clicquot, the luxury champagne maker, argued that a mid-priced womenâs clothing store operating under the name âCliquotâ infringed on the companyâs trade-mark rights. Veuve Clicquot argued the confusion created in the minds of consumers would be detrimental to the image and goodwill associated with the brand.
In both cases, the court decided against the famous trade-mark holder.
In the Barbie case, the court indicated the use of the name Barbieâs by the restaurant was unlikely to create confusion among consumers. The products and services provided by the two companies were sufficiently different that confusion was not likely to occur.
Similarly, in the Veuve Clicquot case, the court decided there was an adequate difference between high-end champagne and mid-priced womenâs wear that it was unlikely confusion would result.
According to these decisions, being famous is not alone an adequate reason to provide extended protection for a trade-mark.
Fame is only one factor to be considered.
A French appeal court found Google liable for allowing others to use the Louis Vuitton trade-mark as an adword. That practice was controversial, and the subject of a few lawsuits. Google has been quoted as saying they don’t allow the practice any more. We should at least give Google credit for trying something controversial, then giving it up and moving on when it didn’t work.
Google’s new Google Checkout service is getting a lot of attention. It is a credit card payment service that online vendors can use to facilitate credit card payments from their customers. This could prove disruptive to those in the online payment business, and some online merchants. CNET and GigaOM have good articles that explain why the service is a good one, and why it is unique and disruptive.
Read a CNET post on the French court decision
The latest Webnames.ca domain news newsletter refers to a letter sent by the INTA to Vint Cerf of ICANN.
There is a trend to eliminate the viewing of, or reduce the use of, Whois data (the identity and contact info of domain name registrants). While I am sensitive to privacy issues about individual registrants, it is important that Whois information be available.
The letter should be read in its entirety, but it says in part:
… we respectfully request that it resolve to preserve access to registrant contact data in Whois and to improve the accuracy of that data so that violations of law and threats to the health and safety of the public may be addressed in an efficient manner.
Whois serves a vital role in remedying fraud on the Internet. Its uses include: law enforcement, consumer protection, and the protection of intellectual property rights. Trademark owners value Whois data in order to resolve domain name disputes (e.g., cybersquatting) and learn the contact details for owners of websites offering dangerous counterfeit products. Only with access to accurate and up-to-date Whois data can the Internet be a safe environment that can be relied on with confidence.
Whois not only facilitates the investigation of legal violations on the Internet, but serves a basic function in making the rule of law apply to the Internet by providing information necessary to serve notice and institute legal action against violators.
Micro Persuasion has a post entitled How to Monitor Your Brand Online that has a link to a site with a list of tools that allow you to do that. Micro Persuasion is a blog by PR guru Steve Rubel – I saw him give an interesting presentation on web 2.0 marketing at the recent Mesh conference.
Its a good idea to keep on top of where your brand or trade-mark is found. You can see what others say about you, where your material is referred to, and locate others that may try to use your brand for their own advantage (aka passing off).
You can also use these tools to keep an eye on your competition.
Its a long list – pick a couple to start with and try them.
The SCC released 2 decisions today that those of us who practice trade-mark law have been waiting for. The both dealt with owners of famous marks who tried to stop others from using those marks for othr things. In one case, the owners of the Barbie trade-mark for dolls tried to stop a restaurant owner from using “Barbies” for his restaurant.
Both decisions were against the famous marks owner.
I have not had a chance to read the entire decisions yet, and may have more about them later.
Michael Geist comments that The Supreme Court of Canada continues to distinguish itself as the leading high court in the world for recognizing the need for balance in intellectual property law matters.
The blogsphere is buzzing about a demand letter sent by O’Reilly saying another party can’t use “web 2.0″ for a conference, because they have trade-marked it for conference use.
I might as well add my 2 cents worth (or should that be 2.0 cents worth?)
This is one of those cases where legal reasoning gets in the way of business judgement.
At best “web 2.0″ is a weak trade-mark, in that it is arguably descriptive, and is not distinctive.
One irony is that they perhaps have been a victim of their own success. They did such a good job of using, promoting and publicising the term web 2.0, that it has become generic.
Another irony is that web 2.0 is all about collaboration and sharing. Hardly collaborative if you won’t even let others use the term!
The best trade-marks are memorable and distinctive, not descriptive.
In my view, this one is not worth protecting at this point from a business perspective.
A techmeme post has a lot of good commentary on this.
Also take a look at Rob Hyndman’s thoughts which are noteworthy in that he was one of the organizers of the recent Mesh web 2.0 conference in Toronto.
Unless otherwise stated, all original material created by David Canton included in this blog is licensed under a Creative Commons License.
