The Internet Corporation for Assigned Names and Numbers
("ICANN") has publicly revealed the applied for generic
top level domains ("gTLD"). A gTLD is the letters that
appear to the right of the "dot", such as .com, org or
now .apple, .hotel, and .bank.
A review of the list of applied for gTLDs which can be found here reveals that over 1000 applications were
made, of which many are duplicates for the same generic words such
as .movie which, by way of example, is the subject of 8
The objection period is now open and will remain open until
January 12. Trade-mark rights holders should take this opportunity
to review the list of gTLDs and consider filing legal rights
objections to any gTLD that contains, or may be confusing with, the
rights holder's common law or registered trade-marks.
Some of the factors a rights holder should consider with regard
to filing an objection are:
Is the gTLD identical or similar, including in appearance,
phonetic sound, or meaning, to your mark(s)?
Is there recognition in the relevant sector of the public of
the mark corresponding to the gTLD, as the mark of your
organization, of the gTLD applicant or of a third party?
Is the applicant for the gTLD commonly known by the mark
corresponding to the gTLD?
Is the applicant's intended use of the gTLD likely to
create confusion with your mark(s) as to the source, sponsorship,
affiliation, or endorsement of the gTLD?
What is the Applicant's intent in applying for the
BLG can assist your company by:
Reviewing proposed objections for compliance with the
Developing a proactive strategy for monitoring the second level
domain registrations on the new gTLDs for potential trade-mark
infringement and taking defensive and offensive actions on your
Advising on use of the Trade mark Clearing House to protect
The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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