When Hillary Clinton recently accused presidential rival Barack Obama of political plagiarism by describing him as the candidate of “change you can Xerox”, trade-mark lawyers at Xerox Corporation likely winced. For years, Xerox has fought against the genericide of the XEROX brand and trade-mark. A genericized trade-mark is a mark or brand name that has become the colloquial or generic description for a particular class of product or service. The generic use of the term “Xerox” as a verb in place of the word photocopy, diminishes the value of the XEROX trade-mark in the marketplace and can result in the loss of intellectual property rights by the trade-mark holder. In the past, Xerox has attempted to police its brand use by launching advertising campaigns promoting the “XEROX machine” and has been successful in protecting the distinctiveness of the trade-mark in the United States and Canada. The brand has however, become generic in Russia, Bulgaria, Portugal and Romania. Aspirin, Band-Aid and Thermos are other examples of once distinctive marks which became victims of brand genericide.

Under trade-mark law generally, a mark should never be used as a noun (whether in singular, plural or possessive form) or as a verb. Every day phrases such as “I need a Kleenex” should be discouraged as the correct use of the mark is “I need a KLEENEX tissue”. It may seem natural and even beneficial from a marketing perspective to use a trade-mark as a noun or verb. Many like to have their trade-mark considered synonymous with the wares or services with which it is associated. However, certain trade-marks, through misuse by their owners and others, have passed into the English language by becoming generic terms. The brands Escalator, Jacuzzi, Linoleum and Tabloid were all once trade-marks denoting a specific product, but are now generic terms commonly used to describe a product category.

Linus Thorvalds, the developer of the Linux operating system and one of the founders of the open source software movement, is another recent victim of brand genercization. In 2005, the Australian Trade Mark Office refused to grant an application to register the mark LINUX by the Linux Mark Institute on the basis that the term Linux was effectively generic and did not identify the goods of any one trader. Indeed, the evidence submitted by the Applicant in the form of internet searches to support the trade-mark application showed that Linux was a term frequently used on the internet to describe open source software operating systems generally and did not demonstrate trade-mark usage. This highlights the importance of controlling a brand at the outset in order to prevent the brand from becoming ineligible for trade-mark protection.

Many organizations, aware of the threat of brand genericide, have been proactive in ensuring that their trade-marks do not lose their distinctiveness through public usage. Yahoo Inc., the company behind the popular YAHOO internet search engine, previously ran advertisements asking “Do you yahoo?”. However, the campaign was pulled when the company realised that using the YAHOO trade-mark as a verb would render the brand generic. Not all companies were as prudent. In 2002, Austria’s Supreme Court ruled that Sony did not have exclusive rights to the term Walkman for personal stereos and allowed a wholesaler to label rival players as Walkmans. The Concise Oxford English Dictionary has defined the term “Walkman”, once a protected trade-mark, as “used for a small audio portable audio player by means of headphones or ear phones”.

The problem is that the more popular a brand becomes the greater the likelihood that rivals will try to brand their own products with similar sounding names. This diminishes the goodwill associated with the original brand and causes confusion in the mind of the general public. It is a problem which Apple Computers must continuously address since its launch of the enormously popular IPOD brand. Apple has been battling against the increasing number of new products seeking to capitalize on the originality of both the term “i” meaning internet and “pod”. Apple recently sent cease and desist letters to two companies which used the word “pod” in products, namely the “Profitpod”, a device for collecting data from vending machines, and the “Tightpod”, a laptop-protecting cover. Applications to register marks such as “Qtunes” and “Jtunes” have begun to appear on trade-mark registers around the world to capitalize on the popularity of Apple’s ITUNES brand. Apple is taking the correct approach in attempting to rebuke brand abuse. Trade-mark holders who fail to take positive action to police their brands may face the same process of genericide to which other previously valuable trade-marks have succumbed.

So the next time you order a sandwich for lunch, spare a thought for one of the earliest victims of brand genericide, an 18th century English aristocrat by the name of John Montague or the 4th Earl of Sandwich. The Earl’s failure to consult a trade-mark lawyer back in 1738 to protect his sandwich invention meant that the word quickly became part of the English language. Are you doing enough to protect your brand from a similar fate?

Further to our Article in the October 2006 edition of Knowledge Bytes, the Canadian Internet Registration Authority (“CIRA”) has recently announced that its new .CA WHOIS policy will come into effect on June 10, 2008.

CIRA is the not-for-profit Canadian corporation responsible for operating Canada’s .CA internet country code top-level domain. “WHOIS” is a generic term used to describe an online directory service that allows people to look up information about internet domain names, such as the Registrant’s name and address, the administrative, technical and billing contacts and other similar information.

CIRA maintains a WHOIS look-up directory which permits queries to the .CA database to determine the availability of .CA domain names and to view the above information provided by individuals and organizations who have registered a .CA domain name. WHOIS information can be useful for a number of purposes, including investigations by trade-mark owners into ownership and use by third parties of domain names that are identical or similar to the owner’s trade-marks.

Until now, all WHOIS information for both individual Registrants and non-individual Registrants has been displayed in the .CA WHOIS directory. As of June 10, 2008 this will change and, by default, all personal information about individual Registrants will now be kept private, while all information about non-individual Registrants will continue to be displayed. Individual Registrants will be able, at the Registrant’s option, to have their .CA WHOIS information made public. Conversely, non-individual Registrants will be able to request that their WHOIS information be kept private in special circumstances. These changes to CIRA’s WHOIS policy have been implemented, according to CIRA, pursuant to its obligation to ensure that its policies and procedures comply with Canada’s Personal Information Protection and Electronic Documents Act (“PIPEDA”), which came into effect on January 1, 2004.

Once the new .CA WHOIS policy is implemented, the following information about individual Registrants will no longer be available publicly unless individual Registrants decide to make it available:

• The name of the Registrant;

• The name, address, phone number, email and fax number, if provided, of the administrative contact and technical contact;

• The Registrant’s CIRA assigned Registrant number;

• The CIRA assigned domain number for each domain name registration held by the Registrant; and

• The description field, which the Registrant or Registrant’s Registrar filled out during the registration process, describing the Registrant or the Registrant’s business.

After June 10, 2008, if a third party wishes to contact an individual Registrant of a .CA domain name, it will be necessary to send a message to CIRA, through an online process being developed by CIRA, which message CIRA will attempt to pass on to the Registrant. Notably, CIRA states that it cannot guarantee that such messages will be read and/or responded to by the recipient.

Registrants of .CA domain names will be required to identify to CIRA what type of Registrant they are. An individual Registrant will be a Canadian citizen, permanent resident, legal representative or an aboriginal person. All other legal types will be considered non-individual Registrants.

New non-individual Registrants will be provided an opportunity to request privacy protection during the domain name registration process. Existing non-individual Registrants will be able to request privacy protection for their WHOIS information. In order to do so, a non-individual Registrant must certify that it has a legitimate need to protect the privacy of its information, which need is greater than that of other CIRA Registrants who are not individuals, because the nature of that Registrant’s operations or activities is such that disclosure of its information via the WHOIS database will be likely to cause harm to individuals or to that Registrant. Existing non-individual Registrants will be provided with only one opportunity to submit a request for privacy protection via an online form being developed by CIRA.

Entities who operate online businesses need to be aware that a WHOIS look-up is sometimes used by SSL (Secure Sockets Layer) certificate authorities as a verification mechanism during the issuance of SSL certificates. Businesses conducting secure online transactions such as banking or online commerce often use SSL certificates. If the Registrant’s personal information is not displayed on the WHOIS, that Registrant may experience delays in getting an SSL certificate or a certification authority may be unable or refuse to issue an SSL certificate for the Registrant’s domain name.

As noted in our previous Article, the new .CA WHOIS policy does not differentiate between individual Registrants who utilize their domain names for commercial and non-commercial purposes, in contrast to the WHOIS policies in certain other jurisdictions, for example, the WHOIS policy applicable to .CO.UK domain names. The end result of all of the above is that, as of June 10, 2008, it will be virtually impossible for third parties to obtain WHOIS information about most, if not all, individual Registrants of .CA domain names as well as those non-individual Registrants who apply for and obtain privacy protection for their WHOIS information. This, in turn, may make the process of attempting to settle domain disputes amicably or on reasonable terms, much more difficult.

The BC government recently proposed legislation (Bill 24) to address issues related to the collection, ownership, access and protection of electronically-stored health information. Introduced April 10th, the Province claimed the Bill - the first of its kind in Canada - would improve access to, and enhance the privacy of, patient health records. However, privacy advocates appeared less satisfied: BC Privacy Commissioner David Loukidelis drafted an open letter to Health Minister George Abbott, calling on the government to amend a variety of the Bill’s provisions - most notably, to enhance its provisions relating to citizens’ rights to control the use and disclosure of their personal health information. We will provide you with a comprehensive review of the legislation and its potential impact once it passes through the Legislature.

The Freedom of Information and Protection of Privacy Act (“FOIPPA”) was recently amended, pursuant to Bill 13, Labour and Citizen’s Services Statutes Amendment Act, 2008. Bill 13 received Third Reading on April 7, 2008 and those provisions affecting FOIPPA will come into force on Royal Assent, likely to occur in the near future.

Public bodies need to be aware of the changes, although they will not have a significant impact on freedom of information requests or the handling of personal information.

Section 11 of FOIPPA, which governs the transfer of a request to another public body, has been amended to clarify that the 20-day period to make a transfer does not begin to run until the head of the public body is satisfied that the request is properly made under section 5.

Sections 30.2 and 30.4 have been amended to clarify that the head, an officer and a director of a public body must notify the Minister of a foreign demand for disclosure and are prohibited from making unauthorized disclosures. A new section 30.5 imposes a duty on employees, officers and directors to notify the head of a public body of an unauthorized disclosure, while amendments to section 74.1 make clear that it is an offence not to comply with section 30.5.

Section 36 has been amended to allow school boards to disclose historical information to archives and similar organizations.

Finally, the Commissioner has been granted certain additional powers, including the power not to be compelled to give evidence except in limited circumstances, a specific power to order the severing of records and the power to have orders enforced as if they were orders of the British Columbia Supreme Court.

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