When are domain names so descriptive or generic that they can’t function as a trade-mark? 

A Montreal lawyer registered and used the domain name canadavisa.com for immigration law services.  He then challenged the owner of canadavisa.ca claiming that the use of the dot-ca domain name for similar services would constitute bad faith contrary to the dispute resolution policy.  In a recent arbitration decision Cohen v. 3824152 Canada Inc. the panel decided that CANADA VISA cannot function as a trade-mark for services related to obtaining visas for Canada, since under trade-mark law both CANADA and VISA would have to be disclaimed as being purely descriptive of the services.  Since the domain name could not function as a “mark” under the rules, the complaint failed. 

Compare this with the recent complaint by a Toronto realtor who used yourcommunityrealty.com.  The realtor complained about the registration of yourcommunityrealty.ca, which was directed to a page featuring ads for competing realtors.  Is YOUR COMMUNITY REALTY generic for real estate services?   In the decision Risi v. Fattahi, the panel relied on the complainant’s Canadian trade-mark registrations for YOUR COMMUNITY REALTY.  Because she had chosen a slightly more distinctive mark, and had taken the step of registering trade-mark rights several years before, the complainant avoided the problem of proving distinctiveness or acquisition of secondary meaning (the problem which foiled the complaint in the Canada Visa case).  The complaint was successful.

In the recent Trade-mark Opposition Board decision in London Drugs v. Total Care Pharmacy (April 28, 2008), the board refused to permit the registration of the proposed mark CROSSBORDERPHARMACY.COM for an online pharmacy because the mark was clearly descriptive.   

There are several lessons for business:

1. A domain name does not need to be distinctive to be successful as a website address (canadavisa.com reportedly enjoyed popularity as a site), but without a distinctive element, the domain name cannot function as a trade-mark and this will always limit enforcement options in the case of infringement or domain name disputes;
2. Trade-mark registration can be a very useful tool - in the Community Realty case, the complainant could likely have pursued a trade-mark infringement case, but the domain name arbitration was cheaper and quicker, and the trade-mark registration proved critical for success in that venue;
3. Defensive domain name registrations are also good practice: if the owner of canadavisa.com had registered the dot-ca and other variations as a defensive measure, then the lack of distinctiveness would be irrelevant.

Related post: Update: Generic Trade-marks 

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We have previously commented on the series of defamation lawsuits  commenced by Wayne Crookes.  These lawsuits are resulting in court judgements which have established some guidance in this emerging area.  The latest decision, Crookes v. Wikimedia Foundation Inc., 2008 BCSC 1424 has established that linking to defamatory content does not, in itself, amount to publication of that content.  In other words, the publisher of an article which links to the defamatory content, without reproducing it, is not liable for the defamation. The court stated that “the mere creation of a hyperlink in a website does not lead to a presumption that persons read the contents of the website and used the hyperlink to access the defamatory words.”  And the court went on to say that “reference to an article containing defamatory content without repetition of the comment itself should not be found to be a republication of such defamatory content”.  

The court’s analysis refers to evidence of whether anyone linked to and read the defamatory content, leaving open the question of whether different facts would have resulted in a different conclusion.  Liability may arise where there is ample evidence that numerous readers used the link to access the defamatory content, or in a situation where the linked content is used to refer directly to the defamed person.  The court speculated that if an article states “the truth about [the defamed person] is found here” and “here” is hyperlinked to the specific defamatory words, then the publisher of the article may be liable. 

There was also a recent defamation decision in Ontario, giving rise to $50,000 in damages for online defamation. 

A third decision, in Manson v. Moffat, [2008] O.J. No. 1697, resulted in a damage award of $20,000 for internet libel, and an injunction was issued against the U.S. defendant.  The case arose from false statements posted online relating to the plaintiff’s patent. 

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It is very common for Canadian companies to expand their customer base into the US, and it is also common for Canadians to encounter difficulties when they discover that they have the same brand name as a US competitor. Trade-mark law permits the same trade-mark to owned by different companies in different countries. But internet marketing blurs those lines, leading to trade-mark disputes and turf wars.

An American court has saddled a Canadian company with “corrective advertising compensatory damages” or what might be termed “Google damages”. The decision in Punch Clock Inc. v. Smart Software Development, No. 07-61684 (S.D. Fla., April 7, 2008) started as a complaint by the owner of PUNCH CLOCK, a US trademark registered for payroll and time-keeping software. The Canadian defendant marketed a competing product in Canada, also under the mark PUNCH CLOCK. When the US company launched a lawsuit in Florida, the Canadians changed their mark to LION CLOCK, but they never responded to the lawsuit, and the US company won a default judgment.

The US company complained that Google searches for the terms “punch clock” produced results that listed the Canadian website above the US company’s site. Alexa searches also showed that the traffic rank for the Canadian website was much higher than for the US company’s site. As a result, the court awarded seven years worth of “corrective advertising” - specifically, the Canadians were ordered to pay the cost for the US company to purchase top placement of its website on Google search listings for five keywords for seven years. At $136 per day for seven years, the corrective advertising damages totaled $347,480, which the court tripled to $1,042,440, on the grounds that the infringement was willful.

Corrective advertising is not a new concept, but it has traditionally been employed in consumer-protection situations where it is ordered to counter false advertising. In this case, it is hard to see why one company should have a “right” to be at the top of Google search results.  There are many reasons why a site enjoys higher or lower rankings on Google search results that have nothing to do with infringement, and the court’s effort to push an aggrieved party to the top of Google’s ranking seems a bit misplaced.  Nevertheless, Canadian companies need to be aware of this risk when facing trade-mark disputes south of the border.

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The Canadian Intellectual Property Office has introduced amendments to the Industrial Design Regulations which are effective October 5, 2008. The changes allow for greater flexibility in submitting design applications with respect to the colour and size of images, and permit the filing of colour drawings and photographs. There is also more flexibility to include an article’s “environment” (i.e. subject matter that is not part of the article) in the drawings. The amendments are posted at the Canada Gazette website and a summary is listed in the FAQ section of the CIPO site.

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DBC Marine Safety Systems Ltd. invented an inflatable reversible life raft and applied for a patent (No. 2,233,846).  During the course of any patent application, it is common for the Patent Office to send an examiner’s letter to the applicant, requesting further information or amendments to comply with the Patent Act. In its reply to one such letter, DBC’s patent agent responded to one of the requests, but overlooked the other request.  The Patent Office and Patent Act are both clear that if a response is completely silent in respect of any of the requests in an examiner’s report, then the application will be deemed to be abandoned. 

The initial 6-month time period lapsed, and the notice of abandonment was issued after the 12-month reinstatement period had expired. In other words, the patent agent made a mistake by overlooking the one request, and the Patent Office failed to follow their normal practice of providing a “courtesy” notice of impending abandonment. The result was that the application was treated as abandoned and could not be reinstated.  In the recent Federal Court of Appeal decision in DBC Marine Safety Systems Ltd. v. Canada (Commissioner of Patents) (Trial Decision here ), the Federal Court of Appeal dismissed the appeal and upheld the decision of the Patent Office to treat the application as having been abandoned.   

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What do nursing homes and nightclubs have in common? In these 2 decisions, they both collect biometric data on their employees.

Biometric data can be anything that records “measurable characteristics” of an individual - from thumbprints to voice-prints to DNA. Organizations will collect and use this data with greater frequency as tracking technology becomes less costly and more reliable. So what do privacy laws say about this kind of information?

Two recent decisions from the Information & Privacy Commissioner of Alberta tackle biometric data collection issues head-on.

In Report of an investigation on the use of a hand recognition system, (August 7, 2008) the Commissioner investigated a nursing home in Calgary. The nursing home phased out employee swipe-cards, and introduced a hand-scanner as a way of tracking employee arrival and departure. The Commissioner decided that hand-scan data (measurements of a person’s hand to generate a unique identifier) does qualify as “personal information” under the Freedom of Information and Protection of Privacy Act (FOIPPA), and that the employer’s collection practices did not meet the requirements of that Act.

In Report of an Investigation into the Collection and Use of Personal Information, (August 27, 2008) the Commissioner looked into a complaint by an employee of an Edmonton nightclub, who was obliged to use a thumbprint sign-in system at the beginning of every shift. This time, the Commissioner made its analysis under the Personal Information Protection Act (PIPA) since the employer was a private sector organization. The employer did not collect thumb-prints but rather “unique numeric identifiers which represent distinct attributes of thumbprints” - a difference that should have been made clear to employees. This data qualified as “personal information” within the meaning of that Act, and in this case, by failing to explain its privacy policy, and thereby failing to obtain informed consent, the employer did not meet the requirements of PIPA.

The lessons for business? In both cases, the employers stumbled, but not on the type of data collected - the Commissioner accepted the employers’ argument that biometric data collection was reasonable and justified - but rather the employers both failed to adequately explain the collection process, answer questions and alleviate employee concerns. As the Commissioner stated: “Employers …have a heightened responsibility to be open and transparent about their practices as they relate to employees…”

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