Atlanteknology - Technology News for Atlantic Canada

Barney - Trade-mark or devil?

Here is an interesting story about the much loved (and sometimes reviled) purple T-Rex so familiar to kids.

It seems that some of those who despise Barney have been receiving not-so-happy letters from the lawyers who represent the company which owns the trade-mark for Barney. The offending behaviour? Pictures like the one shown.

The company managed to get itself sued for its actions - by a rights group which claims that the company is threatening free expression rights.

Here is what I suggest you take from this is you are a company and someone parodies your marks/images - be careful. I am sure that the negative press received from all of this more than makes up for any upside. Further, depending on the circumstances, it is an uphill battle to win a fight where someone is parodying your marks/logos.

Zinedine Zidane - hands off the head butt!

At long last, I get to blog about the now famous head butt. For those poor souls who are not soccer fans, a brief recap: During the dieing moments of the 2006 World Cup, Zinedine Zidane, who is one of the best players in the world (He won the equivalent of MVP of the World Cup) head butted an Italian player who had been (along with some of his team mates) hurtling insults at Zidane during the game. Certainly not exceptional conduct from any of them (both Zidane and the Italian were penalised afterwards).

All that aside, I saw an interesting article a few days back where a Chinese entrepreneur had trade-marked a silhouette of the incident (to avoid issues around the actual image itself). The enterprising chap hopes to sell the mark for 125k USD.

A number of issues surrounding this and it will be interesting to see how it all plays out.  I have not seen the registration particulars but  one has to wonder what goods/services he is (or may) use the mark with. I do not know Chinese trade-mark law but in Canada the fellow might have had issues with respect to the possible misappropriation of personality and depending on how things played out, with respect to passing off.

All of this is to simply point out that the simplest of ideas/actions needs to be carefully considered before you partake of a course of action - least you get head butted by your opponent.

Trade-mark Treaty Conference convened in Singapore

Some 400 participants from about 180 countries are currently attending a three-week long conference in Singapore under the World Intellectual Property Organization. The conference, which opened on Monday, is supposed to culminate in the revision of the Trade-mark Law Treaty  (circa 1994).

Why should you care?

"If successfully adopted, the proposed Treaty will introduce greater regularity and streamline administrative procedures across member countries for the registration of trade-marks. It will allow us to take advantage of advances in digital and [other] communications technology to reduce the costs of trade-mark registration," the Deputy Prime Minister and Law Minister of Singapore said, at the opening of the conference.

The skinny - anticipated additinoal savings in time, energy and money to register a trade-mark across various jurisdictions.

Stay tuned for more details.

Wyrd Stuff - What's in a business name?

I wrote an article a number of years ago on the pitfalls relating to business names. It is unfortunate but the issue comes up so often that I think it needs to be discussed again (and again).

This post is prompted by the recent Harry Potter movie. In it (so I'm told) there is a band which (in the books) is called the Wyrd Sisters. Well, it so happens that there is a real band in western Canada called the Wyrd Sisters.

The real band did not want the movie to be played in Canada as they claimed the movie was creating confusion and unwanted association. The band ultimately lost the battle to stop the movie from coming to Canada but probably won the war due to all the publicity around the matter.

There is also the ongoing case in Nova Scotia involving a fight between two moving companies over the name "Premiere".

When you are selecting a business name, make sure you think about the name and whether you are going to run in to problems in the future. Now, as a matter of procedure, the Companies Office in Nova Scotia (and elsewhere) will run searches to see if there are other companies with the same or similar names and/or trade-marks etc. with your proposed name but it is important to note that this process is not fool proof and the process only relates to whether the business name can be registered with the provincial company registry. It has virtually nothing to do with trade-marks.

Further, think about the future of your business name. If you are not planning on doing business anywhere other than your local jurisdiction then this may not be a consideration. If you are, then you can save yourself some headache by having someone do a professional search on the name you want.

If you want a name and you want to fully protect it, discuss with your advisers the usefulness of both business name registrations and trade-mark registrations.

Lego - No longer a kid's toy

I remember playing with Lego when I was a kid. My kids still play with Lego. They play with Megabloks as well. The two types of building pieces are mixed up in a giant wooden box. Our son has a large collection.

So, I have been following the legal saga of Lego vs. Megabloks almost as much as the marketing saga. The battle boils down to this - Lego claims it has the right to prevent Megabloks from using the form of building block which many of us know so well.

Now, there are differences between the two and you have people swear by one or the other. However, the legal question was whether Lego had trade-mark rights in the shape of the building block.

The Supreme Court of Canada said no. The shape of the block was a functional characteristic. The shape allowed the blocks to be stacked. The purpose of a trade-mark is not to interfere with the the competitive use of utilitarian features of a product.

On top of the that, the Court took a dim view of Lego's attempt to maintain a monopoly over building bricks. Lego's patents had expired and it was trying to do away with its competition using trade-mark law in the place of patent law. Nice try. A for effort.