18th Canadian IT Law Association
Trade-Marks and Domain Names
Martin Kratz QC
Bennett Jones LLP
Trade-Marks and Domain Names
• 2014 has been a very active year and is setting the stage for
dramatic changes for 2015 and beyond
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Trade-Marks and Domain Names
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Annual Update on IP Issues for Information Technology
Adherence to Trademark treaties
Bill C-31 – a New Trademarks Act
Quebec Language law and trademarks
Expansion of International domain name system
Trademark Clearinghouse
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Bill C-31 – a New Trademarks Act
• CETA – Canada gives an undertaking to implement treaties
• Madrid Protocol
• Nice Agreement
• Singapore Treaty
• CETA text requires Canada to make reasonable efforts to
comply with the Singapore Treaty and to accede to the Madrid
Protocol
• C-31 tabled in Parliament January 2014
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Madrid
• Madrid protocol permits an application to be filed on the basis
of a national application
• Claim in one or more contracting jurisdictions
• Madrid would permit a Canadian to file such an application
using the Canadian Trademarks Office as the office of origin
• Applicant needs a sufficient connection to Canada
• Canadian Trademarks Office to address completing the
application and forward application to International Bureau of
the World Intellectual Property Organization (IB)
• Madrid requires international fee to IB
• benefits in the reduction of application and renewal fees -directly
proportional to the number of countries where protection is sought
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Madrid
• Effect of International registrations in Canada
• Article 4(1)(a) Madrid Protocol:
“From the date of the registration or recordal effected in accordance with
the provisions of Articles 3 and 3ter, the protection of the mark in each of the
Contracting Parties concerned shall be the same as if the mark had been
deposited direct with the Office of that Contracting Party. If no refusal has
been notified to the IB in accordance with Article 5(1) and (2) or if a refusal
notified in accordance with the said Article has been withdrawn
subsequently, the protection of the mark in the Contracting Party concerned
shall, as from the said date, be the same as if the mark had been registered
by the Office of that Contracting Party.”
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Nice Agreement
• Provides for a system of international classification of goods
and services for the purpose of registering trademarks
• Makes applying for trademarks internationally a more
streamlined process
• The trademark offices of the nations signatory to the Nice
Agreement agree to employ the designated classification codes
in their official documents and publications
• Canada will need to identify and employ the classification
codes
• Hence, applicants and registrants will need to address the
classification codes applicable
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Nice Agreement
• Advantages:
• Trademark applications coordinated under a single classification system
• Filing is simplified, as the goods and services for a given mark will be
classified the same in all countries that have adopted the system
• Nice Classification exists in several languages saving applicants work
when filing internationally
• Disadvantages:
• Estimated 80% of applications in USPTO face issues of classification
• Expect more examination objections on classification issues
• Cost and complexity for Canada (and trademark owners) to transition
the entire trademark system into a classification system
• Risk of errors and inconsistency
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Nice Agreement
• Examples
• Goods (1-34) and services (35-45) are allocated among classifications e.g.
• Goods: Class 1 Chemicals used in industry, science and photography, as
well as in agriculture, horticulture and forestry; unprocessed artificial
resins, unprocessed plastics; manures; fire extinguishing compositions;
tempering and soldering preparations; chemical substances for
preserving foodstuffs; tanning substances; adhesives used in industry
• Services: Class 35 Advertising; business management; business
administration; office functions.
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Example and explanatory notes: http://www.wipo.int/classifications/nice/en/
Search tool: http://www.en.mktu.info/goods/1/
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Nice Agreement
• Need to assess classification :
For goods:
Finished goods are classified based on their purpose or function. In case if the purpose or
function are not specified the finished goods shall be classified by analogy to similar items,
indicated in the list of goods and services.
Example: dressed sunflower seeds are attributed to 29 class of the Nice Classification whereas
raw sunflower seeds are attributed to 31 class of the Nice Classification.
If functions and purposes are not revealed then it is necessary to follow supplementary
criteria, such as — material the item made of or the operating principle of the item.
For services:
It is necessary to classify services on the basis of the direction of the activity specified in the
title or explanation to the class.
Consultations, advice, information are attributed to the same classes as services which are
the object of the consultation itself, for example: construction is attributed to 37 class,
correspondently, consultations on construction projects shall be specified in 37 class.
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Per http://www.en.mktu.info/
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Singapore Treaty
• Key elements:
• Can divide applications into two or more applications
• Beneficial where having a problem with certain goods/services
• Must classify goods and services in accordance with the Nice
Classification
• Recordal of a License
• Presently not required in Canada
• Term of registration must be 10 years
• Canada presently 15 years – reduced rights, increased costs
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Bill C-31 – a New Trademarks Act
• Bill C-31, The Economic Action Plan 2014, No. 1
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First reading March 28, 2014
No public consultation
No amendments
Royal Assent June 19, 2014
Division 25 amends Trade-marks Act
Comes into force with regulations (estimated 2015)
• Most dramatic changes to the Trademarks Act since 1950s
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Bill C-31 – a New Trademarks Act
• Overview
• Key change – no requirement of use to obtain a registration
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Definitional changes
Introduction of Nice Classification
Opposition changes
Term
Divisional applications
Does not address 'official marks' issues
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Bill C-31 – a New Trademarks Act
• The new approach
• No longer a requirement to specify a date of first use or other
ground to support a trademark application
• applicants would no longer need to select filing grounds at the time of
filing
• applicants no longer be required to provide a date of first use in Canada
or a statement of bona fide intent to use, and
• a declaration of use would no longer be required prior to obtaining
registration for applicants who propose to use their mark
• Consequence is that an applicant can get registration of a
trademark without a requirement to show use
• Possible to obtain registration without any use of the mark
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Bill C-31 – a New Trademarks Act
• Criticism
• Strong criticism by bar, trademark practitioners, INTA
• No consultations on C-31
• No amendments to C-31
• Concern that the use requirements in the Canadian system add
to the integrity of the registrations which issue
• Use requirement has the effect of screening out applicants:
• "who are unwilling or unable to make the investment of
time, energy and money to commence use
• simply want to block competitors from adopting marks, or
• wish to traffic in marks rather than use them"
Per CBA submission march 15, 2010
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Bill C-31 – a New Trademarks Act
• Concerns about the new approach
• Trademark Register will no longer be a source of reliable
information on use
• Will require more extensive investigations when a client is
considering to adopt and use a new mark
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Increase in number of trademark filings
Registration with wide claims for wares and services not in use
Increase in number of oppositions
Realistic to see 'bad faith' filings
• Section 45 proceeding still possible but not until after 3 years of
registration
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Bill C-31 – a New Trademarks Act
• Impacts of the new approach
• Adherence to the treaties amendments
• facilitate examination within time guidelines set by the Madrid
Protocol, and
• address filing details set by the Singapore Treaty
• Singapore Treaty limits what can be required re use and time frame
• But Art. 3(xvi) can permit (a) a requirement of a declaration of intent to use
or (b) declaration of actual use
• Suggestion that the change was promoted by CIPO for
administrative efficiencies
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Relationship - use & registration of a Trademark
• Masterpiece Inc. v. Alavida Lifestyles Inc. 2011 SCC 27, Rothstein J :
• Registration itself does not confer priority of title to a trade-mark. At
common law, it was use of a trade-mark that conferred the exclusive right to
the trade-mark. While the Trade-marks Act provides additional rights to a
registered trade-mark holder than were available at common law,
registration is only available once the right to the trade-mark has been
established by use. As explained by Ritchie C.J. in Partlo v. Todd (1888), 17
S.C.R. 196, at p. 200:
• It is not the registration that makes the party proprietor of a trade-mark; he
must be proprietor before he can register . . . .
• So do we now see the prospects of trademark rights in gross?
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Bill C-31 – a New Trademarks Act
• Entitlement
• Use is not required for an application or registration … but:
• Entitlement is still determined by:
• Prior use,
• Making known in Canada, or
• Filing or priority date
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Bill C-31 – a New Trademarks Act
• New definitions
• Trademark – no longer trade-mark
• Goods, not wares
• Sign – includes a word, a personal name, a design, a letter, a numeral, a
colour, figurative element, a three-dimensional shape, a hologram, a
moving image, a mode of packaging goods, a sound, a scent, a taste, a
texture, and positioning of a sign
• Quite broad, Consistent with Singapore Treaty
• Trademark – a sign or combination of signs that is used or proposed to
be used by a person for the purpose of distinguishing or so as to
distinguish their goods or services from those of others
• or a certification mark
• No longer a definition for "distinguishing guise" … included in "sign"
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Bill C-31 – a New Trademarks Act
• Add "Nice Classification"
• Goods and services in applications listed according to Nice
classification
• Registrar can require goods and services in registered marks to
be listed according to Nice classification
• Registrar's view is final, no appeal
• Amend confusion provisions – Section 6 add factor
• 'whether or not the goods or services are of the same general class of
the Nice Classification'
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Bill C-31 – a New Trademarks Act
• Distinctiveness
• Now distinctiveness must be shown where the Registrar's
preliminary view is that the trademark is not inherently
distinctive
• Trademark consists of a colour or combination of colours
without delineated contours
• 3 D shape of any goods, integral packaging for goods
• Mode of packaging goods
• Sound, scent, taste, texture
• Other prescribed signs
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Bill C-31 – a New Trademarks Act
• Oppositions
• Two additional grounds for opposition added:
• At the filing date the applicant was not using and did not
propose to use the trademark in Canada
• At the filing date the applicant was not entitled to use the
trademark in Canada
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Bill C-31 – a New Trademarks Act
• Section 45 Non-Use Cancellation Action
• Request can now be limited to specific services or goods
• Waiting period of 3 years after registration
• Term
• Renewal is now 10 years
• Limitations
• Registration of a trademark does not prevent a person from
using any utilitarian function embodied in the trademark
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Additional Changes
• CETA also requires:
• Canada to provide protection for a large number of items
covered by Geographical Indicators
• Exceptions seek to limit prejudice to Canadian trademark owners
• Canada to enhance efforts to limit trade in counterfeit goods
• Consistent with proposals in existing law and in pending Bill C-8
Combating Counterfeit Products Act introduced September 19, 2014
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And Possibly More
• Historical issue of the official marks system
• Mihaljevic v British Columbia [1998] 23 CPR (3d) 80, once advertised by a
qualifying public authority, are “hardy and virtually unexpungeable”
• Private Member Bill C-611 introduced in Parliament June 10,
2014
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Geoff Regan, Lib., Halifax West
Defines 'public authority'
Limits to Canadian universities
Provides for opposition procedure after public notice of adoption
Prohibition last for 10 years, but can be renewed
Transitional – all prior official marks prohibition limited to 10 years
• Status uncertain
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Trademark litigation of note
• Magasins Best Buy ltee v. Québec, 2014 QCCS 1427
• Issue - conflict between the Charter of the French Language and
trademark rights
• Charter of the French Language provides for rules on inclusion of
French on public signs and advertisements
• S. 58 public signs and commercial advertising must be in French
• Another language can be used provided French is markedly prominently
• Regs requires expressions in languages other than French can be a firm
name so long as there is a generic French term accompanying it
• Regs exception 25(4) permits a trademark to be used in a language other
than French unless a French version has been registered
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Trademark litigation of note
• Magasins Best Buy ltee v. Québec, 2014 QCCS 1427
• Concerned over increasing use of English only trademarks on
storefronts Québec language office issues an opinion
• Distinguished between business names and trademarks
• Noted international commitments
• Difficult to challenge use of trademarks for provincial signage purposes
• Despite opinion Québec language agency begins to compel
businesses using English trademarks to 'francize' their business
signage and advertising
• Office changes its interpretation and requires use of a generic
French term
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Trademark litigation of note
• Magasins Best Buy ltee v. Québec, 2014 QCCS 1427
• Issue: posting trademark in a language other than French 'as
the name of a business' on the storefronts of retail businesses
without the addition of a French-language generic term
• Retail Council of Canada and numerous retailers concerned over
position requiring the addition of a French generic term
• Best Buy, Costco, GAP, Old Navy, Guess?, Walmart, Toy's "R" Us, Curves
• Plaintiffs asked Court if a trademark in English used on public
signs and advertisements must be accompanied with the
generic terms in French, where no French language version of
the trademark was filed
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Trademark litigation of note
• Magasins Best Buy ltee v. Québec, 2014 QCCS 1427
• Court reviews efforts of French to withstand the continentwide influence of English, history of language law cases
• Notes A-G's argument seeks to equate a business name (which must be
French) and Trademarks as the same
• Here, none of the Trademarks are the names of the business
• Plaintiffs come within the exception of S. 58 of the Charter of
the French language
• Trademarks recognized under the Trademarks Act
• No French version was registered
• Court allows the holders of trademarks registered in English only to
display and advertise these trademarks in Québec without being
required to add thereto a generic term or any other descriptive element
in the French language
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Domain Name impact?
• Issue of a website / domain name under Charter of the French
Language
• Domain names function as an address to a location on the internet
• Common to use a trademark as a second level domain name
• A business with an establishment in Québec that sells in Québec products
that are advertised or sold through a corporate website must provide a
French-language translation of its website
• The website’s server location and the country code or top-level domain
name are not relevant criteria for deciding whether the Charter is
applicable
• Principal consideration remains the location of a business establishment
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Per INTA Bulletin 2008 Vol. 63, No. 10
• CIRA permits supports the use of all French characters in .CA domain names
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Endless Domain Names
• Face of the Internet will forever change
• ICANN has permitted a dramatic expansion of the number of
generic top level domain names (gTLD)
• ICANN accepted applications for more than a thousand new
gTLDs including:
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Generic words like .app, .blog, .computer, .data, .doctor, .eco, .email, .fashion, .food,
.green, .hotel, .law, .med, .restaurant, .site, .store, .style, .tech and .website.
Brands such as .amazon, .android, .apple, calvinklein, .chrysler, .dell, .google, .ibm, .intel,
.macys, .mcdonalds, .oracle and .target.
Over 100 gTLDs in Chinese or Arabic texts, including .[shopping], .[site], .[mobile], and
.[online] in Chinese text and .[network/online] in Arabic text.
Transliterations of “.com” in nine scripts, including Arabic, Cyrillic, Devanagari (Indian),
Hangul (Korean), Hebrew, Hiragana and Katakana (Japanese), Simplified Chinese, Thai and
Traditional Chinese.
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Endless Domain Names
• Names and trademark rights:
• While multiple instances of an identical trademark can co-exist without
confusion
• Only one person can get the [trademark].com
• Is the solution to permit thousands of choices?
• ICANN:
• Communities of interest can be tied to a gTLD
• Might make searching easier where gTLD serves as a signpost
• Reduce congestion
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Endless Domain Names
• Impacts for the IT Sector:
• Increase in number of registrations that registrars can sell
• Increased revenue from domain name registrations
• Greater flexibility in branding / identification options
• More security perceived to own a .brand top level domain giving control
of all addresses under the gTLD
• Perspective of Trademark owners:
• Expect a substantial increase in cyber squatting
• Expect substantial increase in domain name disputes
• Perception of 'extortion' by registrars, etc to purchase additional
unneeded domain names to avoid them becoming available to others
• Increased costs
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Endless Domain Names
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Expensive process to obtain a gTLD
$185,000 USD
Sunrise objection period re rights of trademark owners
After objection period trademark owners can still request a
Post-Delegation Dispute Resolution Procedure (PDDDRP)
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Endless Domain Names
• Trademark Clearing House (TMCH)
• Only statute, registered or court recognized trademarks, not
applications, common law marks
• Covers domain names formed solely from the trademark
• Allows holders of verified trademark rights to
• Participate in new gTLD sunrise periods (e.g. like a right of first refusal)
• Receive notice if a 3rd party registers the trademark as a domain name in
any new gTLD
• After sunrise period is 90 day trademark claims period
• Can proceed with UDRP or Uniform Rapid Suspension System (URS)
case
• Cost $150 USD per year for recordal with TMCH
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Endless Domain Names
• Domain Protected Marks List
• gTLD applicants may also offer enhanced rights protection measures
• Allows TMCH participants to identify marks for exclusion from the
registry
• Uniform Rapid Suspension System (URS)
• Applies to domain names registered in new gTLDs
• Same as UDRP but faster – designed for very clear Cybersquatting cases
• 500 word complaint limit
• Lower filing fee than UDRP
• Decision in about 3 weeks
• Remedy is to place domain name in an inactive state
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Endless Domain Names
• Post Delegation
• Delegation is the process by which a new gTDL gets assigned
to the root zone of the internet
• New gTLD operators required to execute a registry agreement
• Bad behaviour by operators is managed under a Post-Delegate
Dispute Resolution Procedure (PDDRP)
• Trademark PDDRP
• Remedy for operator who systematically promotes
infringement at the second level
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Endless Domain Names
• What can Trademark owners do?
• Consider if to register your trademarks with the Trademark
Clearinghouse
• Monitor developments – order domain name watch services
• Take advantage of sunrise periods
• Consider if to block the trademark in Domain Name Protected
Mark Lists
• Prepare in advance to file UDRP or URS proceedings
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Questions
Martin Kratz, QC
kratzm@bennettjones.com
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