TRADEMARK MATTERSTM
Fall 2011 Edition
TRADE-MARKS OFFICE
Wares and Services Manual – additions removed
On May 5, 2011, the Trade-marks Office announced the addition of more than 12,000 terms to the Wares and Services Manual, further to the "Memorandum of Cooperation" which occurred between the IP Offices of Canada, United States, Japan and the Office managing the Community trade-marks (OHIM).
However, on May 6, 2011, it rushed to remove these additions as they did not conform to the Canadian statement of wares and services practice. As a result, it is to be expected that statements of wares and services included in new and amended applications filed according to these additions on May 5, 2011, will be subject to refusals.
Up to date, CIPO is still working on putting in place these new entries. See CIPO's Notice at:
www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03059.html.
Source: Jeffrey Vicq, Canadian Trademark Blog:
www.trademarkblog.ca/cipo-wares-and-services-manual-contracts-again/
Trade-marks search database : new Vienna Codes
On June 16, 2011, the Registrar introduced new Vienna Codes for design trade-mark searches. These codes relate to Canadian specific characteristics such as geographical maps, typical characters (hockey players, lumberjacks), animals and birds (moose, snowy owl), the maple leaf and other provincial flower representations, fruits, traditional Canadian buildings, etc.
The complete list of the new codes is available on CIPO's website : www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/fra/wr03077.html
PRACTICE
Masterpiece Inc. vs Alavida Lifestyles Inc. – Supreme Court's decision confirms that complete availability searches are vital when choosing a trade-mark
This Supreme Court's decision, dated May 26, 2011, brings an important change for trade-mark practioners as it confirms that prior rights may be claimed on a used, but non registered trade-mark. And this applies whether the mark had been used only in a limited geographical location or extensively all around Canada.
Briefly resumed, the facts are as follows: Masterpiece continuously uses the trade-mark MASTERPIECE THE ART OF LIVING in Alberta since a period preceding December 2005. In Ontario, Alavida launches a similar business under the trade-mark MASTERPIECE LIVING. It files an application to register its trade-mark in 2005, which matures into registration in 2007.
When Masterpiece applies to register its own trade-mark in 2007, it is objected by the Registrar, based on Alavida's previous registration.
One of the questions raised by this case was whether use of the mark by Masterpiece, although geographically restricted, would allow it to pretend on exclusive rights in all Canada, prior to Alavida's registered trade-mark. It is to be recalled that registration of a trade-mark grants its owner the right to exclusively use same in all Canada. The Supreme Court found that Masterpiece had prior rights and allowed Alavida's registration to be expunged.
Exceptionally, the International Trade Association (INTA) intervened in this case to submit that, since registration of a mark allows its owner to use it exclusively in all Canada, it may not, at the time it is registered, be confusing with any other previously used trade-mark in Canada, whether it is registered or not. This principle should apply no matter where and how extensively the previous trade-mark had been used. According to Section 6.(2) of the Trade-marks Act, evaluation of confusion implies to consider whether there would be confusion if both marks were to be used in the same region. Whether the marks are in fact used in the same region or not is not relevant. It suffices to presume that they could be.
This is where this case is so important. Considering this Section of the Act on this new angle is revolutionary, as it had always been considered that marks used is geographically distant areas are not likely to be confusing.
In view of this decision, trade-mark practioners must now consider Sect. 6.(2) differently, as it confirms that a "complete" trade-mark availability search is crucial to the life of the mark. The search will enable to ensure that the mark is available and not at risk of being objected, opposed or worst, that its registration will not be expunged because of a previously used, none registered, trade-mark.
This case also raises other issues such as how to evaluate the risks of confusion between marks and the use of expert evidence.
Masterpiece Inc. vs Alavida Lifestyles Inc., 2010 CanLII 15604 (CSC), May 26, 2011.
INTERNET
New domain name extensions: ".xxx" – is your trade-mark's reputation threatened?
Internet domain name ".xxx" extensions may now be protected. A Sunrise period is open until next October 28, 2011, for trade-mark owners who wish to ensure that identical domain names with this extension will not be registered. The sunrise period allows trade-mark owners to "block" the name corresponding to their trade-mark.
Blocking the name will result in a page indicating that the name is not available. The trade-mark owner will not be able to use it or direct it to its own website.
It is questioned whether it is relevant to block the name in view of the costs to do so, evaluated at approximately $285 for a 10 year period. The cost for a regular domain name registration is approximately $15 a year. But the real question is not a matter of cost, but whether the reputation of the trade-mark is really at risk of being affected with a ".xxx" domain name registration. Each trade-mark owner will have its own answer.
Nevertheless, as consumers will need to intentionally type the ".xxx" extension, real risks of confusion are relatively low. Indeed, intentionally typing a ".xxx" domain name is different from being involuntarily directed to another website than the one the consumer is looking for. Cyber piracy occurs when the consumer is lead to a website in such a manner that he will believe he is on the real website. This is where confusion and deception arise. For example, by not knowing whether the extension of the company he is looking for is ".ca" or ".com", the consumer may be misdirected to a competitor's website which will look exactly the same as the company's website. Typo mistakes may also lead to the wrong website. It is to be expected that consumers will not be considered as being mislead to a pornographic website if they voluntarily type the ".xxx" extension.
For all other litigation with respect to domain names, trade-marks owners will still have the opportunity to call upon the Uniform domain name dispute resolution policy (UDRP).
Do not hesitate to contact us for any assistance needed in this matter.
A special thank to Mrs Nathalie Lachance from Natmark-Concept for her input in the writing of this article.
TRAINING / LECTURES
LES ENJEUX JURIDIQUES ENTOURANT LA CRÉATION DES MARQUES DE COMMERCE
(THE LEGAL CHALLENGES OF CREATING A TRADE-MARK) – in French
Sherbooke: February 8, 2012
Details: to come at www.sdgq.ca/ne_pas_manquer_details.php?id=61
Contact us to know more about our lectures and training sessions:
450-446-5300
Isabelle Deshaies is a member of the Canadian Intellectual Property Office's IP Bank of speakers.
NEWS
We moved. Did you note our new address?
26, Campbell Street, Mont-Saint-Hilaire (Qc) J3H 3T7
© Isabelle Deshaies
October 2011
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