Canada is Not For Sale. But you can buy the merch.

MAKE AMERICA GREAT AGAIN has worked its way into popular culture. So also has President Trump’s plan to make Canada the 51st State of the US. The two have come together with all sorts of spoofs, including the slogan that “Canada is Not For Sale” and now they have produced an interesting domain name case where that slogan was at the centre.

An enterprising group, Jackpine Dynamic Branding Inc., decided to produce a cap and other items emblazoned with exactly that message.

But another enterprising group, led by Asadallah Kassam had the same idea and not only produced their own cap with the same slogan but registered two domain names to promote their rival cap etc, <canadaisnotforsalehat.ca> and a variation, <canadanotforsalehats.ca>.

(They were not the more popular .com domain names, but Canadian .ca domains).

The first group, Jackpine Dynamic Branding Inc. took umbrage at this, and brought a domain name case to get control of the two domain names. But to succeed, Jackpine had to show that it had a trademark, so that it could then say the domain names were an infringement of its trademark.

This is where it found the first obstacle in its way. Jackpine had applied to the Canadian trademark office to register CANADA IS NOT FOR SALE as a trademark. The application had gone ahead alright, but its registration had not come through by the time Abdullah Kassam registered his two domain names.

That was not the end of the road, because Jackpine could also rely on a common law or unregistered trademark if it could prove one. So, naturally, it argued that “we may not have a registered trademark, but we have a common law one because the expression is recognized and used as our trademark, so there!”

You will note that in Canada, as elsewhere, trademarks can be registered or they can be common law trademarks where an expression becomes a trademark over time,  if it identifies the source of goods or services.

That, then, was the issue in the case: had Jackpine proved that it had a common law trademark? Answer: no.

Why? Because CANADA IS NOT FOR SALE was a political slogan used as part of a political campaign to convince people that Canada should not be and was not for sale and therefore that it should not become the 51st State of the US.

Also, no-one would have thought that the expression meant that the slogan was Jackpine’s brand that said the caps had been produced or sold by it. It was a political slogan plain and simple.

So, it failed on its claim for the two domain names in dispute and Asadallah Kassam gets to keep them. The lesson: get in first and try to get a trademark registered.

Of course, the decision means more than that. Commenting after the decision, Neil Brown KC, who was one of the 3 arbitrators who decided the case[1] summed it up when he said:

                     "The decision is an important contribution to freedom of expression and encouraging political debate. Had the slogan been held to be a trademark, it would have had a chilling effect on your freedom to express your political views by using a popular slogan of your own choice."

Too bad for Jackpine, probably the right result. But what do you think?

[1] And the founder of this website Domain Times.