Sunday, September 27, 2009

Salam Toronto! Undefended Trademark Infringement Case Dismissed.

In a remarkable decision by the Federal Court of Canada dated, January 9, 2009, the Honourable Madam Justice Simpson brilliantly dismissed an unmeritorious claim against a domain name owner - even though the domain name owner didn't even defend.

The publisher of a local Toronto Iranian-Canadian newspaper, called Salam Toronto, had brought an action for trademark infringement against the domain name registrant of SALAMTORONTO.COM.

The newspaper publisher operated under the domain names salamtoronto.net and salamtoronto.ca. The publisher also had a registered trademark for SALAM TORONTO in connection with newpaper publication, since February, 2004. the publisher's friend had previously registered the disputed domain name, SALAMTORONTO.COM on the publisher's behalf, but had let it lapse. It was picked up by a "Salam Toronto" Immigration Services.

The Plaintiff publisher brought an action for tradmeark infringement against the domain name owner. The Plaintiff alleged that the domain name, a web site, an automated reply email from the Immigation company, and its letterhead, all "infringed" the Plaintiff's registered trademark.

The Judge efficieintly and correctly dismissed the claim, even though it was undefended, simply because ""Salam Toronto" was an "inherently distinctive trademark" and was therefore "weak". Furthermore, and more importantly, there was  "no confusion" between newspaper publication and immigration services.

This is a fundamental tenet of tradmeark law, where a mark is not particularly famous or distinctive, more than one trader can use the mark, albeit in connection with sufficeintly different wares or services.

Good for the judge and congratulations to the domain name owner!

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