By David A. Utter
Staff Writer
Article Date: 2006-01-05
Google had to discontinue using the Gmail name in the United Kingdom after being unable to resolve a legal challenge, but faces a less-threatening challenge in Canada.
Which is more important, the first date a trademark application is filed, or when the trademark first went into use? In Canada, an opinion that "first come, first served" may leave Google in second place and Gmail out of Canada.
Sander Gelsing's blog entry about the tussle between Google and a web services company called Gossamer Threads indicated how stare decisis may derail Google's Gmail filing.
Our Federal Court of Appeal, in the Canada (Attorney General) v. Effigi Inc. case, recently ruled that the Registrar of Trade-marks, when faced with two confusing co-pending trade-mark applications, should adopt a "first come, first served" policy and should no longer consider the claimed dates of first use as a relevant consideration.
The problem could be rendered moot should Gossamer Threads not respond before February 22nd to a notice from the Canadian Trade-mark Office about the filing, Gelsing wrote. Without a response, the claim would be considered abandoned and likely allow Google's filing to proceed.
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