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Google Wins AdWords Case in Europe

This decision was a bit of a surprise to me.

It concerns Google's practice of "selling" priority in search results to advertisers who pay to be "associated" with a TM that is not their own. This includes retailers honestly trying to promote their genuine brand name products in their stores as well as competitors trying to trade on the good will of a famous mark to draw attention to their products/servies.

For obvious reasons, TM owners object to the "use" of their trademarks by competitors for this purpose and Google is facing lawsuits around the world about the issue. The question has always been whether this "use" of the trademark should be considered unlawful on its face. For instance, comparative advertising is not unlawful per se, but difficult to do without crossing the often "hazy" legal line.

My impression had been that Europe was generally more "pro" TM owner than free enterprise, but this decision seems to break that mold.

TM Owner Recovers 1017 Confusing Domain Names

In a precedent-setting decisionunder the mandatory Uniform Dispute Resolution Policy for .com domain name registrations, the owner of FREECREDITREPORT.COM was granted an order transferring into its control 1,017 domain name registrations considered confusingly similar to its TM. The registrations were all variations and misspellings of the FREECREDITREPORT.COM trademark or so-called "typosquatting" registrations.

Given that FREECREDITREPORT.COM may be considered a descriptive term on its face, the decision provides a good example of some of the difficulties encountered when attempting to enforce exclusive rights in such a mark.

Descriptive marks are not immediately eligible for protection as TM's. However, they can become eligible for such protection if used exclusively by one party for an extended period of time so that the mark acquires "secondary meaning" as a TM. The fact that the owner managed to get FREECREDITREPORT.COM registered as a TM in the US on this basis was critical to its success in this case.

Walmart & Union Fight over Colourable Use of TM's

As noted previously in this blog, there are no recognized exceptions (yet) in the Canadian law respecting trademarks and copyright to provide an outlet for freedom of expression. In previous legal wrangling between Unions and TM owners, the Unions have been less than successful in convincing the courts that such an exception should be made. But its a fight that will, no doubt, be fought again and again.

Now the NY Times reports that Wal-Mart is relying on TM law in an attempt to shut down a web site operated by the UFCW which is, of course, trying to recruit union members from Walmart employees.

To my mind, the interesting question is whether a freedom of expression exception should be made for unions who are often in the position of criticizing employers for the collective good of their employees (and arguably the public good). In other words, why should trademark owners be entitled to prohibit any negative associations with their marks if those associations are true or at least "fair"?

Americans Coveting our Maple Leaf?

A clothing manufacturer known as American Clothing Associates has filed an application to register a maple leaf design as a TM in Europe. The design mark also includes the letters RW below the leaf design. However, the leaf design does bear a striking similarity to the iconic maple leaf that appears on the Canadian flag, etc.

So far their application has been refused as confusing with Canada's national symbol (protected under international law), but the decision is under further appeal. If interested in a more legal analysis, check out the commentary on the IPKAT blog.

Counterfeiting via the Internet

Law.com published an excellent article by Besunder and Sherwin on March 18, 2009 concerning a legal dispute between Tiffany Jewellers and eBay that has been winding through the US courts for some time now. The case concerns liability for the sale of counterfeit goods via the Internet.

Counterfeit goods are products that are sold in association with a trademark without the authorization of the trademark owner. Its the most subversive form of  trademark infringement.

As discussed in detail in the article, the heart of the issue is whether Internet auction sites - like eBay - have a positive duty to investigate potential infringers and prevent the sale of counterfeit articles on their web site and, if so, when that duty may be triggered.

Its reported that eBay's official policy on counterfeit goods is a "notice and take down" regime. This requires trademark owners to monitor the eBay web site and give it notice of each instance where counterfeit goods are advertised via the web site. For many brand owners, this type of policy may be satisfactory. However, this policy is less satisfactory when counterfeit goods for one brand are routinely sold via the web site, in some cases by repeat offenders.

According to the article, Tiffany reported 20,000 instances of counterfeiting to eBay in 2003 and 135,000 in 2006. It argues that eBay cannot avoid a positive duty to police potential infringement in these circumstances.

While the law generally does not impose liability on "common carriers" like telephone and courier companies for the actions of their customers, the law generally does not condone willful blindness either. My expectation is that the court will find a solution in the middle of the two positions and impose liablity on eBay beyond a certain threshold.

The difficult policy question will then be where that threshold should be placed and how it should be triggered. Some trademark owners fail to police their marks at all so it would be nonsensical and unfair to place that burden on eBay. However, where a trademark owner does actively policy their mark, there has to be a tipping point where the routine sale of counterfeit goods on a single web site should not be tolerated by either the trademark owner or the operator of the web site. In the long run, its bad business of everyone.

Organic Products Regulations Amendments Published

On February 14, 2009, amendments to the Organic Products Regulations (OPR) were published in the Canada Gazette.

The new regulation proposes various changes. In particular, a new section limits the application of the regulations to food and drink intended for human consumption and food intended to feed livestock, including agricultural crops used for those purposes and the cultivation of plants.

From the perspective of advertising and marketing law, a new logo is introduced as well as strengthened rules for labelling to ensure that prepared foods identified as organic have minimal non-organic ingredients.

New CDN TM Opposition Procedure

As of March 31, 2009, the Canadian Intellectual Property Office (CIPO) will start implementation of a new practice notice concerning the conduct of opposition proceedings.

In Canada, all trademark applications may be opposed by any interested third parties if a statement of opposition (or a request for an extension of time) is filed within 2 months after the mark is advertised in a government publication called the Trademarks Journal. This advertisement occurs after the trademark application is approved by CIPO and before it is allowed for registration.

Other than clarifying some issues, the new practice notice introduces an entirely new concept - a "cooling-off" period. This extension of time is available only on consent of both parties and may last up to 18 months long. It is intended to allow the parties to negotiate a resolution of their dispute without having to actively pursue the opposition proceeding by filing pleadings, evidence, etc.

Starting in October 2007, in an effort to streamline its processes, the opposition board has made it increasingly difficult to obtain extensions of time. While no one disputes that the board needs to accelerate its opposition process, its refusal to grant routine extensions of time has proven to be controversial in some quarters, especially if the extensions of time are requested on consent of all parties.

It is particularly problematic where oppositions are proceeding simultaneously in multiple countries - Canada is not often the jurisdiction of primary importance in these disputes and is therefore not in a position to dictate the pace of the litigation.

Some counsel have also expressed concern that in demanding more detailed reasons for requested extensions of time (over and above standard extensions), the opposition board is threatening to compromise the confidentiality of ongoing settlement negotiations.

Hopefully, this new opposition practice notice will prove to be more acceptable than the last... 

Another Parody Case

According to the Globe & Mail, CanWest is suing some political activists in the BC courts for copyright and trademark infringement over a four-page paper published in 2007 which bore the banner headline "Seriously Zionist since 2001," a reference to the Vancouver Sun's motto of "Seriously Westcoast since 1912."

The defendants have apparently argued that this is a freedom of expression fight dressed up as copyright and trademark infringement. It will be interesting to see if the defendants have the legal resources to vigorously pursue the argument all the way to trial and then to see how the court reacts. So far, the precedents are against them...

Wine Names No Longer Generic

As of December 31, 2008, Canadian wine producers can no longer use the following words as trademarks for their domestic products:

BURGUNDY

BOURGOGNE

RHINE or RHIN

SAUTERNE or SAUTERNES

The amendments to the law were introduced to implement one of Canada's obligations under a trade agreement negotiated in 2003 between Canada and the European Community. One of Canada's commitments under the Agreement is to progressively phase out a list of names for wines that were previously considered generic so that only the relevant European producers may use these names as geographical indications (GIs) in Canada.

GIs are a form of trade-mark right that, at present, are only protected in Canada in relation to wines and spirits. Sometimes referred to as “appellations of origin”, GIs identify wines and spirits as originating from a region where a characteristic of the wine or spirit is essentially attributable to its geographical origin. A protected GI can only be adopted in connection with wines and spirits originating from the indicated geographic region.

On December 31, 2013, the names "Chablis", "Champagne", "Port", "Porto" and "Sherry" will also become unavailable to Canadian wine producers. Eventually, the names "Bordeaux", "Chianti", "Claret", "Madeira", "Malaga", "Marsala", "Medoc", "Médoc", "Mosel" and "Moselle" will also be reserved for European producers.

73% of Canadians Support Gov't Action against Counterfeit Goods

Environics recently announced the results of a survey it conducted to measure the attitude of Canadians to the sale of counterfeit goods. Apparently, 73% would support a party that promises to impose laws and enforcement against counterfeit goods and 63% want tougher measures introduced if organized crime is involved.

With over 25% of Canadians in the survey acknowledging that they have purchased counterfeit goods, it is a serious economic and safety issue. However, it is curious to me that the survey results don't specify the nature of the "laws" and "enforcement" that are allegedly supported by Canadians. The fact is that there are already laws on the books prohibiting the sale of counterfeit goods in Canada. So the question in my mind is what specific legal tools are missing that would be supported by Canadians - that conform to our expectations about privacy, human rights and "fair dealing".

It is also important to note that the survey was commissioned by the Canadian Intellectual Property Council (CIPC) which is a coalition of businesses seeking tougher laws in Canada for the infringement of intellectual property rights. For this reason, I am somewhat suspicious of the results. As a lawyer, I know that the form of the question can have enormous influence over the answers received. For this reason, the form of the specific questions are subject to alot of scrutiny whenever a party seeks to file survey evidence in court. I'd like to see the survey questions, but those don't seem to be available on the Environics web site.