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Further to Patrick's previous thread regarding this case (for which I thank him), and Frank Schilling's Blog, I was the attorney for the succesful domain name registrant. Below is the press release, which details the story. You can also read a copy of the decision at DNattorney.com
Zak Muscovitch
[email protected]
TORONTO, March 9 /CNW/ - The Federal Court of Canada has ruled that
everyone has the right to sell "Cheap Tickets". In ruling that two registered
trademarks, "Cheap Tickets" and "Cheap Tickets and Travel", should be struck
from the trademarks registry, The Honourable Justice Barry Strayer decided
that no one should have the monopoly over describing their tickets as "cheap".
Montreal-based Internet developer, Emall.ca Inc., had taken
Victoria-based travel agency, Cheap Tickets and Travel Inc. to Federal Court
to strike its registered trademarks. The lawsuit was in response to the travel
agency's previous attempts to force Emall.ca Inc. to turn over its domain
name, CheapTickets.ca. The travel agency had unsuccessfully complained to the
Canadian Internet Registration Authority, and then sued Emall.ca Inc. for
trademark infringement in British Columbia.
Peter Maxymych, the President of Emall.ca Inc. said, "This is a victory
for every business person in Canada. Everyone should have the right to
accurately describe what they are offering. I am thankful that the Judge
agreed and ordered that the travel agency's trademarks be struck from the
registry so that it does not enjoy an unfair monopoly."
In his written decision released this week, Justice Strayer said that the
travel agency admitted that it used "Cheap Tickets" and "Cheap Tickets and
Travel" descriptively of the services that it provided, and that, "In effect
these combinations are withdrawn from use in the commercial world in Canada by
anyone other than the Respondent. I do not believe this should be permitted
because I am satisfied that these trademarks are clearly descriptive."
Harold Simpkins, Vice-President of Marketing at Emall.ca Inc., and a
Professor of Marketing at Concordia University, said "Of course everyone has
the right to describe the good or services that they are selling. It would
turn the commercial world on its head if only one company could describe their
tickets as "cheap". In fact, all you have to do is look on Google to see that
Air Canada, Sears, and Expedia all offer "cheap tickets" in Internet
advertising, so there is no reason why just one company should have the
exclusive right to do so."
Internet lawyer, Zak Muscovitch, who successfully represented Emall.ca
Inc., said "This dispute started off with the travel agency claiming that they
had a right to my client's domain name, CheapTickets.ca, because they had
registered trademarks. The dispute has ended with my client rightfully keeping
its domain name, and the travel agency losing its registered trademarks. They
should never have been issued them in the first place. This is a lesson for
overreaching trademark owners. We are ecstatic about the decision. Justice was
definitely served."
Descriptive domain names have become extraordinarily valuable with the
explosive growth of the pay-per-click internet advertising revenue model.
Accordingly, registrants of good descriptive domain names tend to fiercely
resist challenges to their registration. Emall.ca Inc. is a pioneer in the
registration of .ca domain names, and recently sold nearly four hundred of its
generic .ca domain names to the Yellow Pages Group for 2.5 million dollars.
Said Mr. Maxymych, "We have collected the best .ca domain name portfolio in
the country and we see a very bright future for .ca domain names as Internet
advertising continues to grow so dramatically."
For further information: Peter Maxymych, President, Emall.ca Inc., (514)
844-3332, [email protected]; Harold Simpkins, Vice-President of Marketing,
Emall.ca Inc., (514) 844-3332, [email protected]; Zak Muscovitch, Barrister &
Solicitor, (416) 450-7656 (cell), [email protected] (for a copy of the
decision)
Zak Muscovitch
[email protected]
TORONTO, March 9 /CNW/ - The Federal Court of Canada has ruled that
everyone has the right to sell "Cheap Tickets". In ruling that two registered
trademarks, "Cheap Tickets" and "Cheap Tickets and Travel", should be struck
from the trademarks registry, The Honourable Justice Barry Strayer decided
that no one should have the monopoly over describing their tickets as "cheap".
Montreal-based Internet developer, Emall.ca Inc., had taken
Victoria-based travel agency, Cheap Tickets and Travel Inc. to Federal Court
to strike its registered trademarks. The lawsuit was in response to the travel
agency's previous attempts to force Emall.ca Inc. to turn over its domain
name, CheapTickets.ca. The travel agency had unsuccessfully complained to the
Canadian Internet Registration Authority, and then sued Emall.ca Inc. for
trademark infringement in British Columbia.
Peter Maxymych, the President of Emall.ca Inc. said, "This is a victory
for every business person in Canada. Everyone should have the right to
accurately describe what they are offering. I am thankful that the Judge
agreed and ordered that the travel agency's trademarks be struck from the
registry so that it does not enjoy an unfair monopoly."
In his written decision released this week, Justice Strayer said that the
travel agency admitted that it used "Cheap Tickets" and "Cheap Tickets and
Travel" descriptively of the services that it provided, and that, "In effect
these combinations are withdrawn from use in the commercial world in Canada by
anyone other than the Respondent. I do not believe this should be permitted
because I am satisfied that these trademarks are clearly descriptive."
Harold Simpkins, Vice-President of Marketing at Emall.ca Inc., and a
Professor of Marketing at Concordia University, said "Of course everyone has
the right to describe the good or services that they are selling. It would
turn the commercial world on its head if only one company could describe their
tickets as "cheap". In fact, all you have to do is look on Google to see that
Air Canada, Sears, and Expedia all offer "cheap tickets" in Internet
advertising, so there is no reason why just one company should have the
exclusive right to do so."
Internet lawyer, Zak Muscovitch, who successfully represented Emall.ca
Inc., said "This dispute started off with the travel agency claiming that they
had a right to my client's domain name, CheapTickets.ca, because they had
registered trademarks. The dispute has ended with my client rightfully keeping
its domain name, and the travel agency losing its registered trademarks. They
should never have been issued them in the first place. This is a lesson for
overreaching trademark owners. We are ecstatic about the decision. Justice was
definitely served."
Descriptive domain names have become extraordinarily valuable with the
explosive growth of the pay-per-click internet advertising revenue model.
Accordingly, registrants of good descriptive domain names tend to fiercely
resist challenges to their registration. Emall.ca Inc. is a pioneer in the
registration of .ca domain names, and recently sold nearly four hundred of its
generic .ca domain names to the Yellow Pages Group for 2.5 million dollars.
Said Mr. Maxymych, "We have collected the best .ca domain name portfolio in
the country and we see a very bright future for .ca domain names as Internet
advertising continues to grow so dramatically."
For further information: Peter Maxymych, President, Emall.ca Inc., (514)
844-3332, [email protected]; Harold Simpkins, Vice-President of Marketing,
Emall.ca Inc., (514) 844-3332, [email protected]; Zak Muscovitch, Barrister &
Solicitor, (416) 450-7656 (cell), [email protected] (for a copy of the
decision)
