Region: North America

In <i>eGalaxy Multimedia Inc v Bailey</i>, for the first time ever, the Ontario Superior Court of Justice has ordered a defendant in a cybersquatting case to pay punitive damages. Barrie Bailey had registered three domain names incorporating the words 'naked news', which eGalaxy sought to register as a trademark.

14 March 2003

In <i>Kelendji v Diplomat Fullhalter Gesellschaft Kurz & Rauchle GmbH</i>, the Federal Court of Appeal has overruled a decision to maintain the registration of the mark DIPLOMAT because the trial judge did not consider all the grounds for cancellation set out in the Trademarks Act. Accordingly, the case has been remanded to the Trial Division for further consideration.

11 March 2003

A panel appointed by the British Columbia International Commercial Arbitration Centre has issued its decision in <i>Cheap Tickets and Travel Inc v Emall.ca Inc</i>, the first contested arbitration involving a '.ca' domain name. The panel declined to transfer 'cheaptickets.ca' to the complainant.

17 February 2003

The Federal Court of Canada has refused to review the trademark registrar's decision to give public notice of the government's use of an official mark. The court held that the registrar cannot refuse to give public notice if, as here, all the criteria set out in Section 9 of the Canadian Trademarks Act are met.

05 February 2003

Resolutions Canada, one of two domain name dispute resolution providers in Canada, has released its first decision, ordering the transfer of 'browneco.ca'. This is only the second decision issued to date under the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy.

29 January 2003

Negotiations between Canada and the European Union may result in a bilateral agreement whereby Canada would remove 22 wine names and two spirit names from the lists of products referred to as 'generic' under the Canadian Trademarks Act. This would mean that the names could be registered - and therefore protected - as geographical indications in Canada.

21 January 2003

The Canadian Trademarks Office is now requiring that applicants for official trademarks provide evidence of public authority status. The test for public authority status has two prongs: (i) the applicant must be under a significant degree of government control, and (ii) the activities of the applicant must be for public benefit.

10 December 2002

The Canadian Internet Registration Authority (CIRA) has released its first decision under the new CIRA Domain Name Dispute Resolution Policy. In the case of <i>Red Robin International Inc v Greg Tieu</i>, the registrant of 'redrobin.ca' was found guilty of cybersquatting, so the domain name was transferred to the US company Red Robin.

27 November 2002

In the case of <i>Molson Canada v Oland Breweries</i>, the OntarioCourt of Appeal has dismissed Molson's passing-off action, ruling that Oland's use of its registered trademark OLAND EXPORT constitutes a complete defence against such an action.

14 November 2002

In a case involving the British Columbia Law Society, the province's supremecourt recognized that the registration and use of a domain name that incorporatesanother party's trademark may constitute unlawful passing off, and therefore issueda pre-trial injunction prohibiting the use of domain names that allegedly violatethe law society's common law rights.

30 September 2002