Canadian Lawyer Magazine recently published an article entitled “Uses and abuses of trademarks online“, which illustrates the difficulty that trademark lawyers face when trying to determine whether a particular online display of a foreign trademark will (or will not) be deemed “use” of that trademark within Canada.
Here’s a good, straightforward article on why a business should trademark their business name.
Toronto based firm i4i, Inc. has been getting a fair bit of press lately as the tiny firm that took on Microsoft Corp. and succeeded in winning an injunction against sales of certain versions of Microsoft Word software in the United States as well as a US$290-million award for damages, willful infringement and prejudgment interest.
See, for example, Financial Post’s article entitled Canadian firm’s lawsuit halts some Microsoft Word sales in U.S. or the Globe and Mail’s Canadian firm gets patent win over Microsoft
i4i, Inc.’s press release regarding its win can be found on its website here (pdf) and shows that the verdict was issued on May 20, 2009 for infringement of U.S. patent number 5,787,449 issued by the USPTO in 1998.
Surprisingly, however, there was no mention of any corresponding Canadian patent in i4i’s press release. There was also no indication as to whether there would be any legal proceedings here in Canada against Microsoft Corp.
A quick check at the Canadian Intellectual Property Office shows that this is likely because i4i, Inc’s corresponding Canadian patent (CA 2,150,765), which issued in 2000, lapsed in 2004 for failure to pay the 2003 and 2004 annual maintenance fees.
Even at today’s rates, these fees would have been insignificant in light of a multi-million dollar award – i.e. only $200 for both 2003 and 2004. All together, from 2003 to 2009, the annual maintenance fees for those seven years for CA 2,150,765 would have been a mere $825 (at the “small entity” rate).
A final check at the Canadian Intellectual Property Office, for patents issued to either i4i, Inc., Infrastructure for Information Inc. or where Michel Vulpe is the inventor does not reveal anything more other than lapsed CA 2,150,765. So it does not appear that this original Canadian patent might have been dropped in favour of some other divisional or subsequent application.
So I don’t think we will see similar litigation by i4i, Inc. against Microsoft Corp. at home here in Canada and sales of MS Word should be able to continue here without any patent infringement concern.
That’s too bad, it would have been interesting to see how the Canadian courts would have determined the issues of validity and infringement on the Canadian side of things. The Canadian patent actually issued with what appears to be broader claims as compared to the U.S. patent (at least claim 1 in the Canadian case looked broader at first glance).
The Globe and Mail reports today that the Vancouver Olympic Organizing Committee (VANOC) quietly applied to the Canadian Intellectual Property Office for trade-mark rights to the phrase “with glowing hearts” which is part of the well-known refrain in our national anthem O Canada: “With glowing hearts we see thee rise, the true North strong and free.”
Our National Anthem Act declares both the words and the music of our national anthem to be in the public domain. An unofficial copy of the schedule to that Act, showing both the words and music, is shown below (as allowed by the Reproduction of Federal Law Order)
VANOC’s recently filed application (September 12th) for the mark WITH GLOWING HEARTS (no. 1410532) includes a very lengthy list of proposed use (intent to use) wares and services, including such wares as laundry bleach, jeans, camcorders, trucks, gasoline, tankards not of precious metal, fruit drinks, apple sauce, electric accumulators and such services as legal services and radio broadcasting.
I suspect, however, that before this application registers, this long list of wares and services will be trimmed down significantly. That, or we’re going to be having a lot of goods and services offered here in Canada under the WITH GLOWING HEARTS brand by VANOC or its licensees.
I can see it now, I may soon be able to purchase a new WITH GLOWING HEARTS truck (or maybe even an SUV), drive it around town and fill up on gasoline at the local WITH GLOWING HEARTS gas station, all while wearing my WITH GLOWING HEARTS jeans, drinking some WITH GLOWING HEARTS fruit juice out of my WITH GLOWING HEARTS branded tankard (not of precious metal) and listening to a WITH GLOWING HEARTS radio broadcast. However, unless I obtain a trade-mark license from VANOC, I don’t think I’ll be offering my legal services under that mark.
See also VANOC’s official announcement wherein it states that “VANOC does not have and has no desire to own the phrases With Glowing Hearts …”. Hmmm, I wonder if that statement would be sufficient to shift the evidentiary burden back to VANOC (to try to proof that it truly intended to use that mark in relation to all those goods and services) - if someone were to oppose the application based on section 30(e) of the Trade-marks Act.
Finally, a similar article to that in the Globe & Mail was also featured today on CTV.CA.
There was an interesting article in yesterday’s Report on Business, entitled As patent cases clog courts, drugs are a lawyer’s best friend, which describes how the Federal Court of Canada judges are swamped with a rising tide of complex patent litigation and how law firms are scrambling for talent to keep up with one of the country’s fastest-growing practice areas.
The article states that currently there is a team of approximately 30 Federal Court judges devoting some or all of their time to about 350 separate pharmaceutical patent cases. It also notes that judges must wade through knee-high stacks of conflicting affidavits and scientific testimony that are about as dull as an accountant’s daybook (unless, maybe, you’re a patent lawyer).
There are some interesting quotes, including one from Mr. Justice Roger Hughes, who apparently stated that “Judges are human, not computers” after he was deluged with written and conflicting expert opinions during a drug patent case. Justice Hughes was a veteran intellectual property law litigator prior to his appointment to the Federal Court three years ago (see my previous posting here). So for him to make such a comment must really say something about the tremendous workloads faced by the Court.
The article finishes up by noting how Ivor M. Hughes, who founded a small Thornhill, Ontario based patent firm 30 years ago, agreed to close shop and move in with large law firm Heenan Blaikie.
CBC News reports that Alberta Premier Ed Stelmach is defending his decision to send lawyers after blogger Dave Cournoyer who owns the domain name edstelmach.ca (note: that domain previously redirected to his blog daveberta.ca, now redirects to a wikipedia entry).
Reading the blog, it seems like Mr. Cournoyer is not willing to comply with the demand letter sent by Premier Stelmach’s lawyers.
Actually, I thought it an interesting demand letter, laying out a number of potential causes of actions that the Premier may have against Mr. Cournoyer, including misappropriation of the Premier’s personality (see my previous post on that type of action). A pdf copy of that letter can be found here.
It’s not often that I come across news about Canadian trade-mark assets being sold, so I was intrigued when I saw the headline Electrohome completes the sale of the corporation’s trade-marks on CNW Group’s new releases.
Electrohome Limited announced that, effective yesterday, it completed the sale of its trademarks to SYNNEX Canada Limited; which was previously the major licensee using the trademarks. The trademark assets were sold for $1,500,000.
According to Electrohome’s newsroom, the company can trace its roots back to a century ago when Arthur Bell (A.B.) Pollock started making Canada’s first hornless phonograph in the small town of Berlin, (later named Kitchener) located in south western Ontario. In the 1960’s Electrohome was one of Canada’s largest manufactures of television sets. See Electrohome - Celebrating 10o Years of Canadian Heritage.
A quick look through the CIPO’s trade-mark database reveals about four active trade-mark registrations and applications that might relate to Electrohome’s corporate brand:
ELECTROHOME & Design - 1,351,178, by Electrohome Limited for a variety of home electronics and home office wares and services. It is noteworthy that this application was filed just recently, this June, 11, 2007, and was based on “proposed use“. Hmmm, what about the 100 years of Canadian Heritage and the more recent trade-mark use through its licensee Synnex Canada Limited? I suspect this is because the design portion (i.e. the stylized E) is different than was was previously used (including that the E is white on a black background vs black on a white background). Otherwise, however, this application would have some issues w.r.t. sections 30(b) and 30(e) of our Trade-marks Act - claiming proposed use when use has occured prior to filing the application.
ELECTROHOME - UCA20671, for a variety of home electronics and home office wares and services, originally registered to Electrohome Limited (back in 1944), but now owned by ELHP General Partnership. Huh? Who is ELHP General Partnership? Probably a related entity, since it has the same Kitchener, Ontario address as Electrohome Limited. Transfer of ownership, to ELHP General Partnership, was apparently on August 31, 2006. Therefore, I see a few ownership and predecessor-in-title issues with this registration (such as, how can a limited company in 2008 sell a trade-mark that’s owned by a partnership since 2006).
E Design - TMA142,060, also for a variety of home electronics and home office wares and services and originally registered to Electrohome Limited (back in 1965), but now also owned by ELHP General Partnership. Again, I see a some ownership and predecessor-in-title issues with this registration.
E Design - 1,351,179, by Electrohome Limited for a variety of home electronics and home office wares. Like the other application, this one was also filed this June, 11, 2007 and based on “proposed use“. Again, the stylized E is slightly different from the one now owned by ELHP General Partnership and I suspect that the “proposed use” basis is probably accurate.
Anyway, it’s interesting to find some publicly available information about Canadian trade-mark asset sales; especially one from a company with such a significant historic background.
The Canadian Intellectual Property Office (CIPO) release a warning yesterday, noting that it has been made aware of companies offering alternative methods of protecting inventions. CIPO recommends that inventors contact a registered patent agent for advice.
See also the Competition Bureau Canada’s Warning regarding Invention Promotion Firms.
See the Globe & Mail’s recent article about why copyright is cool and sexy.
For something that’s still mostly speculation (both Michael and Howard acknowledge not yet having seen the actual contents of the upcoming copyright reform Bill), there has a remarkable outpouring of interest from numerous individuals on the issue of Canadian copyright reform, not the least of which is:
- The Facebook group Fair Copyright for Canada which now has over 12,500 members;
- The Globe and Mail’s article yesterday: New copyright law starts Web storm;
- Cory Doctorow’s continuing coverage on Boing Boing;
- The gathering of critics at an open house even held by our Industry Minister;
- The CBC’s Search Engine asks Questions of Industry Minister Jim Prentice; and
- The anti-DMCA rally at Industry Canada Minister Jim Prentice’s office in Calgary held on Saturday.
All indications suggest that the new Bill will be introduced sometime this week. Perhaps it won’t contain strong anti-circumvention legislation and will instead contain flexible fair dealing provision and parody exceptions, time shifting and device shifting exceptions and expanded backup provisions. But, like Michael and Howard, I’d be very surprised if it did.
Michael now reports that the Canadian DMCA’s introduction will likely be delayed (although he’s not sure on whether it will be delayed for a day or two, or for longer). Perhaps, as Michael notes, the Industry Minister will take this opportunity to engage in broader consultation prior to the Bill’s introduction.
See also Dierdre McMurdy article in today’s Ottawa Citizen’s, entitled Prentice to unveil his answers to copyright law disputes, about why the issue of copyright has this power to polarize people so much. According to the article, copyright is the single most lobbied issue in Ottawa. Copyright also affects everything from movies and music to video games and software, to radio and tv broadcasts, to books and eduational materials. No wonder people have philosophical differences over how much, or how little, copyright protection there ought to be.
Further to my earlier posting, and a nice email from Strategis’s Web Information Quality Assurance staff just now, Industry Canada has merged strategis.gc.ca with ic.gc.ca to provide a single point of entry to Industry Canada’s programs and services at the ic.gc.ca domain. Industry Canada’s notice about the merger can be found here.
As a result, some of the pages previously included on strategis.gc.ca have new URLs; which will be automatically redirected to the new page for a limited period of time. The full integration and conversion of all Industry Canada web products is scheduled to be completed by December of 2008.
The layout now also reflects the new look and format seen on other Government of Canada websites.
Back a couple of years ago I blogged about how Canadian industrial design registrations were made publicly available through the launch of CIPO’s (then) new Canadian Industrial Designs Database. At that time over 10,000 Canadian industrial designs were made public through this new database (i.e. those registered as of June 15, 2002).
Now CIPO has announced that the complete collection of Canadian industrial design registrations is available through the Industrial Design Database. It currently has over 110,000 Canadian industrial designs that can be accessed. Thanks CIPO.
I like Registration Number 1 for a design of stove / heater which goes all the way back to the 1860’s.
In addition to my periodic postings about fun trade-marks, I thought it might also be amusing to see what new trade-mark oppositions are being filed.
Looking back through CIPO’s database for the last couple of weeks, I note the following interesting new oppositions and proposed oppositions:
FACEBOX - 1,316,122, by Incrowd B.V.B.A. for an on-line community services website, namely on-line chat room. Good thing they’ve renamed themselves Netlog, but I still see why the opponent, Facebook Inc., jumped all over this application.
INK YOUR RIDE - 1,325,772, by Mark Dorey and Jason Farren carrying on business in partnership as Eminent Custom Graphics for application of graphic designs on motor vehicles material. Check out their website www.inkyourride.ca. I can see why opponent Viacom International Inc. opposed this (i.e. their PIMP MY RIDE registration and their ongoing series on MTV), but I also see room to argue that there is no likelihood of confusion.
CHEERS & Design - 1,120,929. First of, wow!, this application by CBS Studios Inc. for use of their well know Cheers logo in relation to actual restaurant and bar services since 1994 (as opposed to a tv series about a bar) took almost six (6) years to get from filing to advertisement in the Trade-marks Journal. I suspect mostly due to delay to try to get consent from the Province of B.C. who has the Official Mark for CHEERS. Now, after being advertised, it finds itself in a Proposed Opposition by Cheers Bar Services Inc., perhaps the same as this company.
On a more local level, Calgary based SwizzleSticks hair salon and spa is also facing a Proposed Opposition to their application for SWIZZLESTICKS - 1,304,761, by a yet to be identified opponent. Back when I lived in Calgary, I used to drive by this hair salon located in the trendy Kensington area. As far as I know, the salon has been around for quite a long time (the application claims since 1982) and the application isn’t overly broad (mind you, it does contain claims beyond hair care services and goes into services such as lifestyle, career and business coaching, psychology services, valet parking and day care services, all since 1982). So I’m mostly at a loss to see what basis this potential opponent might have against this well established business.
NAKED MINERALS - 1,336,605, by Yem Inc. for cosmetics and mineral make-up that, according to their website, is so light and comfortable a wearer won’t know she/he is wearing it and will therefore experience a “naked effect”. Hmmmm, I see some descriptiveness issues with this mark, but atleast it disclaimes the right to the exclusive use of the word MINERALS (see here for why I think disclaimers are still a good idea).
MADE BY REALLY NICE CANADIANS! & Design - 1,342,304, by Frank T. Ross & Sons Limited, in relation to proposed use for biodegradable, non-toxic cleansers and the like. Again, I see some descriptiveness issues with this mark, as in being descriptive of the persons employed in the production of these wares.
LAW & ODOR WATCH THE MOVIE & Design - 1,343,773, by Electrolux Home Care Products, Ltd. in relation to proposed use for vacuum cleaner bags and filters. I can see NBC maybe having some potential concerns with this application, in light of their well know TV show Law & Order, but even Mattel, Inc.’s rights in the famous mark BARBIE were not enough to for our Supreme Court to find a likelihood of confusion with a restaurant operating under the name Barbie’s (Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22). So I think Electrolux probaby has a reasonable chance at getting this past Opposition, should NBC decide to oppose. Then again, that added slogan which states to “watch the movie” might be enough to create a likelihood of confusion, suggesting a possible tv/movie entertainment connection.