Tag Archives: trademark

ILN Today Post

Putting The Accent On .CA Domains

The Canadian Internet Registration Authority (CIRA) has released the results of its first consultation on its proposed implementation of .CA domains with French accent characters (known as the Latin Supplement -1 Unicode characters), such as é à ü and ç.

Under its initial implementation plan, CIRA proposed a sunrise period during which owners of .CA domain owners could register as many French accented variants of their existing ASCII (non- accented Latin-based script characters, namely the letters a-z) domains as they opted for.  For example, the owner of grace.ca could also register grâce.ca during the sunrise period, before that accented variant of grace.ca (and all other French accent variants) would be opened up for registration to anyone else who otherwise qualifies to own a .CA domain.

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Trademark Expungement Proceedings: Standing as a “Person Interested”

In McCallum Industries Ltd. v. HJ Heinz Co. Australia Ltd., the Federal Court dismissed the applicant’s action to expunge the respondent’s trademark under s. 57(1) of the Trade-marks Act.

Both the applicant and the respondent produced canned and processed meat products in Canada, the applicant under the name “PALM & Device“, and the respondent under the name “OX & PALM”. The applicant was granted a trademark in July 2003, while the respondent was granted a trademark in October 2005.

Section 57(1) allows “any person interested” to apply to the Federal Court for an order that any entry in the register be struck out or amended on the grounds that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trademark. The applicant sought expungement of the respondent’s trademark on the grounds that the trademark was confusing to the public, that the respondent was not the person entitled to secure registration of the trademark, and that the trademark was non-distinctive.

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Introduction of .xxx websites – protecting your brand

This year sees the introduction of “adult” website domain names, with a “.xxx” suffix (or TLD) (as opposed to the usual .com, .co.uk etc.).

This new TLD is designed for the adult industry, but trademark owners that are not in the adult industry can apply to block the registration of .xxx domain names that correspond to their registered trademarks during a “sunrise period” that ends on 28 October 2011.  Blocked domain names will point to a standard informational page indicating that the domain name is unavailable for registration.

Brand owners will want to ensure that their brand is not “hijacked” by adult content providers, so we can expect immediate applications to block names such as “apple.xxx”, “pepsi.xxx” and “hilton.xxx”.  Any brand which trades on its reputation would be well advised to consider registering a blocking application.

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Trademark Interlocutory Injunction Denied to Target

In Target Brands Inc. v. Fairweather Ltd., the Federal Court of Canada refused to grant the interlocutory injunction sought by the American retail chain, this recent application being part of a continuing battle.

In 2002, Target’s counsel initiated proceedings under s. 45 of the Trade-Marks Act to cancel INC’s trade-mark registration for TARGET APPAREL. The Registrar of Trade-marks issued a notice on April 2002 requiring INC to show use of the trade-mark registration in Canada. INC filed an affidavit on its use of the trade-mark in response to the s. 45 notice. The Registrar of Trade-marks held that the evidence was insufficient to show use. INC appealed the Registrar’s decision and the Federal Court reversed that decision on October 19, 2006. Target’s counsel appealed to the Federal Court of Appeal, which affirmed the Federal Court decision on November 26, 2007.

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Counterfeit Goods: Significant Statutory and Punitive Damages

We have been following the line of cases dealing with counterfeit goods and the resulting damage awards, and note the most recent case from the Federal Court makes clear that a tougher approach to trademark  and copyright infringement can now be expected in Canada.  In Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., the Court awarded significant damage awards as well as punitive damages against the three defendant companies and their principals.

The Plaintiffs, Louis Vuitton and Burberry, hired a number of investigators to attend the stores and warehouses of the defendants Singga Enterprises Canada, Altec Productions and Guo (doing business as Carnation Fashion Company), as well as purchase items from their websites. While in attendance at the stores and warehouses, the investigators were shown and purchased a number of counterfeit items including handbags, sunglasses and jewellery, all of which contained unauthorized productions of the Louis Vuitton and Burberry trade-marks. The Plaintiffs were successful in showing that the defendants’ activities of manufacturing, importing, distributing, offering for sale and actual sale of bulk quantities of counterfeit and/or infringing items had been ongoing and, in the case of one of the defendants, had continued after the commencement of the proceeding and the motion for summary trial brought by the Plaintiffs.

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Keep Calm And Carry On – Don’t Panic!

“Keep Calm And Carry On” was a poster produced by the British government early on during the Second World War.  It was intended as an exercise in morale boosting for the British public.  Seventy years on, the slogan finds itself at the centre of another battle in Europe, this time before the European Community Trade Mark office in Alicante.

In 2009, an entrepreneur by the name of Mark Coop started to produce a range of goods bearing the “Keep Calm And Carry On” slogan.  Starting with t-shirts, he rapidly expanded so as to include mugs, soft furnishings, cufflinks and now even produces deck chairs and chocolate bars all bearing the same phrase.  Mr Coop had the foresight to apply to register a community trade mark in a wide variety of classes.  As a result, Mr Coop acquired the exclusive right to apply the slogan to the goods for which the community trade mark was registered, and used his registrations to prevent anyone else from using the slogan on various products.

For the full article, please click here.

 

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Certification Marks: Decision Affirmed by Court of Appeal

An earlier blog discussed a Federal Court decision, agreeing with a decision of the Registrar of Trade-marks and preventing the registration of a certification mark, HALLOUMI, in association with cheese.  In The Ministry of Commerce and Industry of the Republic of Cyprus v. International Cheese Council of Canada, the Federal Court of Appeal affirmed the decision.

The Trade-marks Act defines a certification mark as a type of trademark and sets up a specific regime for its adoption and registration by a person not engaged in the manufacture, sale, leasing or hiring of the wares or services in question, who wishes to license others to use the marks.  With wares a certification mark is intended to signify character or quality, working conditions, the class of persons producing the wares or the area they are produced.

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Sunrise For .xxx Domains Is Now Open

As reported in our recent Knowledge Bytes publication, today marks the beginning of the Sunrise period for the new .xxx domain.   Owners of registered trademarks who are not part of the adult entertainment industry may and should apply to block their registered marks from becoming part of a domain name with the new .xxx generic top level domain.  This Sunrise period is in effect until October 28, 2011.  Different Registrars are charging different amounts for this service, so shop around.

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CIPO Approves New Wares and Services Descriptions

The Canadian Intellectual Property Office (CIPO) today announced the approval of over 500 new or changed wares (goods) and services descriptions in its online Wares and Services Manual.   This is the Manual that the CIPO Examiners refer to when reviewing applications for registration of trade-marks under the Trade-marks Act (the Act).   Under Section 30(a) of the Act, an applicant is required to describe its claimed wares and services in ordinary commercial terms.

While certainly not exhaustive of all of the descriptions that an Examiner will consider to be acceptable, if an applicant’s wares and services can fit within the approved descriptions in the Manual, the processing of the application is likely to be much smoother.  

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ILN Today Post

CIRA Announces Implementation Date For New CDRP Policy and Rules

The Canadian Internet Registration Authority (CIRA), has announced that its revised Dispute Resolution Policy (CDRP) and Rules will take effect on August 22, 2011.  A summary of the changes is available on the CIRA website.

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