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HomeMy WebLinkAboutCOD-036-08 Cl!l!ington REPORT CORPORATE SERVICES DEPARTMENT Meeting: General Purpose and Administration Committee June 16, 2008 Resolution #:~P+1-3~"~o& Date: Report #: COD-036-08 File#: By-law #: Subject: TOTAL HOCKEY OFFICIAL MARK/OFFICIAL DESIGN REGISTRATION Recommendations: It is respectfully recommended that the General Purpose and Administration Committee recommend to Council the following: 1. THAT Report COD-036-08 be received; 2. THAT Council approves the release of the Total Hockey Official Mark for the sum of $ 2,500.00 (CON) identified as the amount paid by the Municipality for the purpose of registering the mark. Submitted b ie Marano, H.B.Sc., C.M.O. Director of Corporate Services Reviewed bd~ ~ Franklin Wu Chief Administrative Officer MM/GW/gj CORPORATION OF THE MUNICIPALITY OF CLARINGTON 40 TEMPERANCE STREET. BOWMANVILLE, ONTARIO L 1C 3A6 T (905)623-3379 F (905)623-5506 REPORT NO.: COD-36-08 PAGE 2 1.0 BACKGROUND In May of 2006 the Communications & Tourism Division initiated the process of registering the Total Hockey logo and logo design as official marks with the Canadian Intellectual Property Office. To complete this task, the Thomson Law Firm (Trade Mark Agent), located through the Canadian Intellectual Property Office, was retained. The process was completed by July 2006 with the certificate of official registration being delivered to the Municipal Clerks Office for inclusion in the Municipality's official records. 2.0 CURRENT STATUS On March 28, 2008 the Manager of Communications received an email correspondence from the Trade Mark Agent. They had received written correspondence from another Trade Mark Agent, representing the Minnesota based company Total Hockey Worldwide (www.totalhockevusa.com) requesting the release of the Canadian rights to the Total Hockey trademark/official mark. This company holds the American rights to the Total Hockey official mark and is in the process of expanding their operations into Canada. Upon trying to register this trade mark in Canada, they were informed that the trade mark is owned by the Municipality of Clarington. The Municipality is being asked to release their rights to the Total Hockey trade mark since the facility is no longer in operation. 3.0 Recommendation The cost of registering the Total Hockey trade mark was approximately $2,500.00 Canadian including all legal and registration fees and incidental REPORT NO.: COD-36-08 PAGE 3 expenses incurred during the registration process. The funds used for this process were from the Communications & Tourism operating budget. It is recommended that, since there is no other obvious use for this trade mark, there is no legal reason for the Municipality to retain the rights to the Total Hockey trade mark. However, it is further recommended that the trade mark only be released on the proviso that the Municipality is able to recover the original costs of the registration process - the sum of $2,500.00. The Trade Mark Agent has been contacted to inquire if Total Hockey Worldwide would be interested purchasing the trade mark. To date, there has been no response however, it is noted that this type of process takes significant time. Should Total Hockey Worldwide not be interested in paying for the rights to the Total Hockey trade mark, it is recommended that the trade mark rights be retained until such time as there is a willing buyer.