Canadian Law Blog Awards: the 2008 Clawbies

I am happy to report that this blog has been selected as the “Best Practitioner Support Blog” in the 2008 Clawbies – the Canadian Law Blog Awards.  We are delighted to be recognized for our efforts, particularly given the number of excellent law blogs in Canada.

This award caps off a banner year for us here at the Canadian Trademark Blog: in April, we were selected as a “Top Blog” by the LexisNexis group, and our blog continues to appear on their worldwide Trademark Law Center page; in May, we received terrific coverage in the highly respected Managing Intellectual Property magazine.

Many thanks to all of you who read, comment and link to the blog; we hope that you have found the 70+ stories we posted this year both interesting and insightful.  We look forward to continuing to share our observations and analyses with you in 2009.

Happy New Year to you!

The Canadian Trademark Blog Team.

Depreciation A Possible Ground in Opposition Proceedings

In Parmalat Canada Inc. v. Sysco Corporation, the Federal Court allowed an application by Parmalat to set aside the Trade-mark Opposition Board’s refusal to amend a statement of opposition to include an additional ground of opposition. Sysco had filed an application on May 3, 2002 to register the trademark, BLACK DIAMOND, in association with various kitchen utensils, chef’s apparel, cooking pots and frying pans. Parmalat had registered various BLACK DIAMOND trademarks in Canada for use since 1933 in association with cheese and other food products. Parmalat originally filed its statement of opposition on May 4, 2004 based on a number of grounds, including confusion with Parmalat’s family of BLACK DIAMOND trademarks.

On June 2, 2006, the Supreme Court of Canada released its decision in Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Boutiques Cliquot Ltée which discussed the depreciation of goodwill contrary to section 22 of the Trade-marks Act. Subsequent to the Veuve Clicquot decision Parmalat sought to amend its statement of opposition to include depreciation of the value of the goodwill attached to its registered trademark, BLACK DIAMOND, as an additional ground of opposition. The Trade-mark Opposition Board dismissed Parmalat’s application for leave to amend on the basis that the inquiry on the issue of depreciation of goodwill was not to be decided in an opposition hearing; instead, the Federal Court had jurisdiction to decide the issue. Read more

Copyright? Wrong! Oshawa Councillor Misses the “Mark”

An Oshawa, Ontario Regional Councillor, Robert Lutczyk, recently made a brazen attempt to claim copyright in the name “University of Ontario Institute of Technology”. Lutczyk registered copyright in the name of the University and then tried to use his registration to prevent the publication "Oshawa This Week" from using the name in an article, threatening legal action if they did not comply. Lutczyk’s attempt to assert copyright appears wrong on several points.

First, there is no copyright in a name. Copyright in Canada is governed by the Copyright Act and arises in literary, artistic, dramatic and musical works. A name, without more, does not fall under the definition of a work. Read more

Trademark Blog Grows Again!

We’re pleased to advise that we’re adding yet one more person to the Canadian Trademark Blog team namely, Tasha Coulter.

Tasha has been practicing law here at Clark Wilson LLP since 2005, though we’ve only just recently been able to convince her to join our rag-tag band of bloggers. In addition to her work in the trademark law area, Tasha is engaged with a broad range of commercial law issues as well so we’re keen to add her insights to our examination of all things trademark-related.

We’re sure you’ll enjoy reading Tasha’s posts as much as we enjoy working with her. Please give her a warm welcome to the team.

Dead Frog in a Clear Bottle Leaves Sleeman Seeing Red

Sleeman Breweries has reportedly filed a lawsuit against Dead Frog Brewery over Dead Frog’s use of a clear glass bottle design, in association with its beer. Sleeman is the third largest brewery in Canada; Dead Frog is a small and relatively new enterprise located in Aldergrove, BC. Invoking references to the classic David v. Goliath story, the President of Dead Frog has stated that the lawsuit is a silly waste of time, that there are many similar clear glass bottles on the market, and that the raised glass frog design on his bottles makes his products distinctive from those of Sleeman.

For its part, Sleeman will likely rely on its Canadian Trademark Registration for a distinguishing guise. A distinguishing guise is a type of trade-mark that is a distinctive shaping of goods or their containers or a mode of packaging or wrapping such goods.  To obtain a registration for a distinguishing guise in Canada, an applicant must prove that the distinguishing guise is, in fact, distinctive of the applicant’s wares in Canada. This normally requires proof of significant sales and advertising in every region of the country over an extended period of time. Read more

“Bad Faith” Decision Bad News for Applicants?

A recent Opposition Board decision highlights a little-examined area of Canadian trademark law, raising questions pertaining to the entitlement to file a trademark application, and issues of good faith related thereto.

In Cerveceria Modelo, S.A. de C.V. v. Marcon, issued August 12, 2008, the Trade-mark Opposition Board upheld an opposition brought by Cerveceria Modelo against Marcon’s application to register the trademark CORONA for use in association with both a variety of beverages and with beverage bottling services.

The application was opposed on several grounds, including alleged confusion with Cerveceria Modelo’s familiar CORONA trademark. Additionally, the opposition was also founded on Marcon’s alleged failure to comply with s. 30(i) of the Trade-marks Act, which requires the applicant to file with the Registrar an application that contains a statement that the applicant is satisfied that “he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.” Read more

Flattery is Still Infringement

A story in the Globe and Mail this week illustrates that the use of a popular logo may be a form of flattery to the owner, but the owner will still be concerned about infringement of its IP rights. Gordon DeRosa, after 21 years of public service, is again running for re-election to the Trail City Council, Trail being a community of 8000 in the interior of British Columbia. Mr. DeRosa’s election signs used the well known Energizer Bunny, and the slogan “Re-elect DeRosa, Still Energized”. The Eveready Battery Company, which owns an extensive trademark portfolio in Canada, sent a cease and desist letter to Mr. DeRosa, advising that the use of the Energizer trademarks constituted violations of the company’s IP rights. Mr. DeRosa has taken down his election signs.

If a lawsuit had ensued it might have been argued that Mr. DeRosa was not using any trademarks in association with wares and services since he was running for political office, but presumably Eveready would have succeeded on the basis of copyright infringement.