Canada Post battles ISV over intellectual property claim

Canada Post says it is prepared to take a Toronto software company to court over the use of the word “”post”” in an e-mail encryption product.

E-witness Inc., which manufactures

a Web-based e-mail program called StrongPost, said it has been told by Canada Post Corp. that the product’s name infringes on its trademarks. A Jan. 22 cease and desist letter from Canada Post’s lawyers demanded that E-Witness drop the name StrongPost by the end of the month or face legal action, according to the firm.

Legal experts say the conflict is an example of how technology firms can find themselves in hot water with organizations that want to protect their intellectual property.

E-witness president Don Waugh said he has no intention of caving in. “”Here’s a big bully, Canada Post, trying to squash a Canadian startup,”” he said.

Waugh said he was first contacted by Canada Post regarding the alleged infringement on Oct. 15. The Crown corporation’s charge came as a shock, Waugh said. Prior to registering the e-mail program’s name, E-witness had sought legal council and done research to make sure StrongPost was not already a registered trademark, he said, and it was given the green light to use it.

“”Our review indicated no conflict. No one else was using that name,”” he said. “”Based on our legal advice, we were able to proceed.””

Canada Post doesn’t see it that way. Although spokesperson John Caines said he wouldn’t discuss details since the case is going before the courts, he said the company has a problem with any company using the word ‘post’ in its name. Canadians associate postal services exclusively with Canada Post, he said, so any use of the word ‘post’ in a context away from the mail creates unfair brand confusion.

This is really not a question of whether Canada Post has a product called StrongPost, said Toronto lawyer James Longwell, who indicated the mail giant may very well have the law on its side.

A patent and trademark agent with Ogilvy Renault, Longwell said that Canada Post enjoys some very special legal standing when it comes to the word “”post.””

“”Because they are an official government entity they get very wide ranging trademark rights under the Trade-Mark Act that you or I could not get for our own business marks,”” he says. “”So they’re a unique case.””

Canada Post is considered a public authority, Longwell explained. As such, the 1985 federal Trade-Marks Act gives it permission to not only obtain trademarks but also official marks. Official marks are different from trademarks in that they are available only to public authorities; applications for them are not open to opposition by third parties and are not subject to the same type of scrutiny by the Registrar that regular trad

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Jim Love, Chief Content Officer, IT World Canada

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