Trade mark 2

rweait's picture
header from the cipo web site

Based on the draft board minutes OSMF has received a C&D based on a registered trade mark[0]. It seems to be a valid registration, whether I think it is a stupid registration or not. This is some background on trade marks as they relate to C&Ds. You'd be stupid to take this as legal advice. It's only food for thought[1].

A trade mark registration is essentially a license to litigate. A C&D is only one step in the dance that is trade mark litigation. Part of that dance follows the rules of law in the jurisdiction of the registrant, and other parts of the dance are determined by other things like the stated or unstated goals of the parties involved, the personalities, and emotions involved.

It is possible to challenge a bad trade mark and have the registration removed. Some jurisdictions have a process for that. I think that is an entirely separate litigation. The existing litigation would still exist because a registered trade mark is presumed to be valid.

There are trade mark cases and copyright cases and others, where one side decides to reply to the other with "No way, Jose!" or harsher words. That can be part of the dance of litigation, and of settlement negotiations as well. Read the paragraph on Arkell vs Pressdram[2] for an example from British court. But there are potential side effects to such a response. One could extend the negotiations by upsetting the other party and cause the matter to take longer to resolve. That could drive the litigation costs up further than they would be without the funny response. The nature and details of a response are things to discuss as part of your litigation strategy, with your lawyer.

Many C&Ds have been published on web sites, as claimed by an earlier poster in the thread on talk@. I suggest that even more C&Ds have not been published. The decision to publish a C&D, or not, is also a decision to be made after consultation with counsel. So that's what Simon said he would do. Of those C&Ds published, I do not know how many were published immediately, and how many were published after they were read into a public record like a court document. Would a C&D be covered by copyright? Maybe yes, it is a work of prose. Would there be a legitimate copyright exemption for publishing it? Perhaps. Would that legitimate exemption have to be decided by a court, if the sender objects to the publication? What would that cost, before the matter is settled? I imagine that we will hear more about this in time. But just not right away.

Some of this "dance" of negotiation and litigation-threat will take time. OSMF is not paying the fiddler, or setting the beat. And so OSMF, according to the draft minutes, has Simon dealing with this with the guidance of counsel.

So, perhaps the answer on publishing the C&D will be 1) yes, 2) no, 3) only after the matter is complete 4) perhaps, but here are some risks to consider. Or the answer might be something else.

In the end, the answer might be "you can use the term _____ on the wiki as long as there is a disclaimer on the wiki about trade mark ____". We don't know. We are not yet at the end.

It might be that the registration will be struck, that the registrant will be declared a vexatious litigant, and the the registrant will be censured by the court. We don't know. We aren't at the end yet.

I'm not happy that this C&D was sent to OSMF. But I also think that OSMF has to deal with it with expert advice from their lawyers. I will direct my frustration at the source of the C&D. There. I'm frustrated. I direct my frustration at you, sender of the C&D.

OSMF will handle this the best way they can. I wish it would go faster, but that's just me being impatient.

If we want to fight bad trade marks in general, perhaps there is a non-profit to support in that? I don't know. But that might be a good way to vent some frustration.

A rough guess at some numbers.

Registering a trade mark in Canada can cost $250 - $300[4] to file the trade mark. If you get a lawyer to help you write the forms that could be another few thousand[5]. If your trade mark is opposed before it is registered, you can spend $50,000, or so to contest that opposition. It could cost about the same for the other side to oppose your trademark if they have to pay their lawyers. Their filing fee to oppose you is $750. Litigation over a registered trade mark in Canada can cost you a few hundred thousand, or more, or much more, for your lawyers fees and disbursements to expert witnesses, etc. This doesn't apply in this matter, I think, because this matter would likely be in the US. Again. Just rough background.

So if we, as OSMF members, want to pick a trade mark fight, then those might be the sorts of costs involved. In a "clear, cut and dried" case, the costs might be lower, but again, the registered trade mark is presumed to be valid.

I heard a lawyer[3] say that they liked it when a client says, "it's not the cost, it's the principle." because that means the lawyer can bill for more hours on a longer litigation, rather than just settling. That seems like a good reason to proceed carefully and with the guidance of a lawyer who can play the role of a Spock-like, emotionless advisor of facts and probabilities.

[0] link to discussion thread
[1] I asked a trade mark lawyer, over coffee, about the possibilities in this sort of situation. I don't have any specifics other than what we've read on this list and the draft board minutes. So the responses are needfully vague and generalized. Any errors are misunderstandings on my part. None of this is an answer; just some background from their knowledge of other trade mark matters.
[2] thank you RichardF for the reference.
[3] different lawyer. different circumstances.
[5] more or less. All of these numbers are "ball park, very rough guesses" actual billing varies depending on the matter and hand and a ton of details.

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