February, 2010: APPEALS LAWYER

Famous trademarks are awarded significant protection under the Canadian Trademarks Act. The trademarks act protects the owners of trademarks from others who would use a confusingly similar trademark. Section 6 of the act defines what constitutes confusion. In particular, section 6 states that the use of a trademark causes confusion with another trademark if the use is likely to lead to the inference that the wares or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person or business, whether or not the wares or services are of the same general class. Hence, trademarks which are quite famous, can theoretically be protected against others who would use similar trademarks for completely different products or services. This has lead some to speculate that famous trademarks can be enforced beyond the scope of their original trademark registrations. Hence, the trademark registrations for the famous trademark VIRGIN, used by the Virgin group of companies, could theoretically be enforced against any person or company who used the trademark VIRGIN for virtually any product or service.

The supreme court of Canada in the recent case of Mattel Inc. V. 3894207 Canada Inc. has clarified the law concerning the issue of confusion as applied to famous trademarks. The case involved a numbered company which operated a chain of restaurants in the Montreal area under the trademark BARBIE’S. The numbered company filed a trademark application in order to protect its trademark. The application was approved by the trademarks office, but later opposed by Mattel Inc. on the basis that the mark was allegedly confusing with Mattel’s registered trademark BARBIE. The opponent, Mattel, brought forward survey evidence which demonstrated that, in the mind of the people surveyed, that there might possibly be a link between the applicant’s restaurant and the opponents trademark. Despite Mattel’s evidence, the opposition board rejected Mattel’s position. Mattel appealed to the Federal Court. The Opposition board’s decision was confirmed by the Federal Court and then again by the Federal Court of Appeal. Mattel appealed yet again to the Supreme Court of Canada.

The Supreme court dealt with two principal issues, namely the nature of confusion and the nature of the evidence used to find confusion. On the issue of confusion, the court accepted Mattel’s contention that the BARBIE trademark was famous. Indeed, the justices agreed with Mattel’s contention that the BARBIE trademark had reached the status of a cultural icon. Nevertheless, in the court’s opinion, the mark was famous only with respect to dolls and not with respect to restaurant services. While the court concluded that resemblance of the wares/services is not a requirement for a finding of confusion, a significant difference in the nature of wares/services used in association with two trademarks was an important consideration in determining confusion. Simply because the BARBIE trademark was famous with respect to dolls, that fame, in itself, did not render the mark famous in other areas such as restaurant services. In effect, the court held that since the “doll” business and the restaurant business appealed to different tastes and largely different clienteles, there was no likelihood of confusion between the two trademarks.

As to the issue of the survey evidence introduced by Mattel, the court dismissed it as irrelevant. The court noted that the test is one of likelihood of confusion, i.e. that there must be a finding that the two marks are likely to be confused. The court noted that the survey asked the question “Do you believe that the company that makes BARBIE dolls might have anything to do with this sign or logo”. The survey asked a question addressing the issue of possible confusion, not likely confusion. The court seemed to leave open the door for the possible relevance of this type of survey evidence, provided of course the wording of the question resulted in a clear test of likelihood of confusion. Of course, evidence of actual confusion would have been highly relevant; however, no such evidence was submitted.

While this case does seem to limit the scope of protection afforded to famous trademarks, the case did leave the door open to marks whose fame was such that confusion could be found even if the competing mark was used for very different wares/services. Indeed, the court sited the example of the VIRGIN trademark, which has been used with a diverse nature of wares and services including soft drinks, music, games, resorts, cellular phones, clothing, books, cosmetics, credit cards and even air lines. The fame of the VIRGIN trademark may be of such breadth that using a similar mark for an unrelated service or product may result in a likelihood of confusion. In essence, since the VIRGIN trademark is famous in such a variety of different areas, it is possible that the average consumer might be confused if confronted with a similar trademark in a line of business not presently occupied by Richard Branson’s group of companies.

Using the internet for banking and ordering with credit cards these days can be risky especially with the increase in identity theft. But are you concerned about your online affiliate identity? If not, you should be.

Conservative estimates say that anywhere from 10% to 40% of affiliate sales are lost to internet pirates. They rob you of your sales by stealing, bypassing or otherwise mutilating your affiliate link.

It is time to do something about this to stop these pirates from taking away your sales. And yes, there is something you can do.

“Redirecting” is one effective solution. It keeps your entire affiliate identity from being shown and only a domain name will be shown. What you do is set up a domain name and the redirect will show only that.. It will forward to the link you want to go to and your affiliate identity will remain secure. Redirecting will also give your business more credibility and customers will have more trust in you and your business.

When you choose a keyword-loaded domain name, you want it to be professional and appealing, something that portrays you personally and portrays your business. Also keep it simple and easy to remember.

Now, how do you choose a company that will forward or redirect for you. Here are some features to look for when deciding. A good company to use will:

- have only a one-time fee for set up of your domain name.

- not have a monthly hosting fee.

- not require you to buy software, now or in the future.

- offer domains that can be bookmarked. The customer will see your domain name when he goes back to the site and you will get the commission.

- offer unlimited sub-domains. This way you can manage several affiliate programs with one domain name.

- allow you to optimize search engine indexing. Most normal affiliate links rarely are indexed. You want a domain company that is designed to be indexed by all major search engines. This will allow you to quickly and easily change your title, mega description and keyword tags for your domain name.

- be user-friendly for your amount of skill. You do not want a company that requires expertise to use it.

E-mail forwarding is also something some companies offer. In this case your e-mail contact information will also only show your domain name.

Using these guidelines will help you to find the right company to secure your affiliate identity and help you to build a reliable business.

Redirecting is an answer to keeping your online affiliate identity secure. It will only cost you pennies a day and give you the security of not losing sales to internet pirates.

The Copyright, Designs and Patents Act 1988 (The Act) runs to more than 330 pages so one must accept the risks of a brief overview. In essence it gives certain right to the creators of certain material. These rights limit the freedom of others to copy, adapt, distribute, communicate to the public by electronic means, rent or lend to the public, perform in public, distort and mutilate matter subject to copyright. There is an additional right in many cases for the copyright owner to be acknowledged.

There is no requirement for the material to have any aesthetic or material value to be protected nor to be registered as copyright.

The general rule is that if someone has created it, then they or, the person to whom they have transferred the rights, own the copyright. ‘It’ includes: original artistic works including paintings, photographs, literary, dramatic and musical material, sound and video recordings, including broadcasts live or otherwise, and applies to any medium, including publishing on the internet and in email marketing.

On a practical note, if an article, picture or such has already been published then the copyright owner is often very amenable to having it seen in print again as long as there is suitable acknowledgement of source as this can provide a bit of free advertising. Even if a fee is required, it is often set quite low.

When an article is published in a magazine for instance, it is only ‘first serial rights’, briefly the right to publish it the first time, that are transferred. The copyright for further publication normally remains with the author.

You might think a photocopy of a particularly complimentary magazine article in an email or on your website might well generate reassurance amongst potential customers. But this can be quite difficult as the norm is that multiple agents have various rights to it and you might be daunted by the task of obtaining it all.

For instance, there is the person who wrote the words for the article, then those who took the pictures, frequently sourced from more than one person, the graphic artist who created the layout for the specific article and the person who owns the general page layout rights. Further, the copy might well contain items, such as tables, databases, lyrics and quotes which are sourced from other holders of copyright. And similar rights extend to any graphic advert that might be on the page as these would have copyright owners of the design and content.

But it is not all restrictions, although there are fewer exemptions than one might expect in the 45 paragraphs and 18 sub paragraphs in the relevant chapter of The Act. These include educational use and adapting copyright material for the visually impaired. When offering for sale works of art it is normally permissible to reproduce the item.

The general principle that ideas cannot be subject to copyright, only the form in which they are expressed, was challenged by some of the joint authors of The Holy Blood and the Holy Grail, when they alleged that Dan Brown, in his book The Da Vinci Code, had copied their ‘central theme’. However, on appeal it was found for Brown.

Copyright is time limited but these limits vary.

Material on the web is similarly protected, although cognisance is taken of the technical reproduction requirements of the technology. For websites and other transmitted material such as email marketing it is advised that the (c) sign be put on every page with the year of creation and the copyright holder identified.