November 2008

“Bad Faith” Decision Bad News for Applicants?

By In Case Law, Legislation, Trademark Oppositions

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

By In Famous Marks, Registration

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.

Canada™: Second Best?

By In Branding

Continuing on with the recent spate of brand rankings we’ve commented upon recently, news that Canada has been rated the second best global brand in the 2008 FutureBrand Country Brand Index. The Index purports to be a comprehensive study, combining the views of 2,700 business and leisure travelers from nine countries together with expert opinions and relevant statistics to determine the world’s brightest country-brands.

The winners? For the third year in a row, Australia. The United States was nipping at Canada’s heels to finish third, with Italy and Switzerland rounding out the top five.

Review of the report’s various categories suggests that Canada’s second place finish was largely the product of generally consistent rankings across the board, with bright spots to be found in such categories as “Ease of Travel” (where we finished third), “Outdoor Activities and Sports (where we also finished third), “Families” (where we finished first) and “Easiest In Which To Do Business” (where we finished first, just ahead of the US). Read more

The Perils of Insufficient Evidence in Trademark Cases

By In Case Law, Protection & Enforcement

Whatever the advantages of not submitting certain evidence, such as expediency, complexity, or risk of ambiguity, the Federal Court of Appeal decision, Shell Canada Limited v. P.T. Sari Incofood Corporation demonstrates the significant risk of this course of action.

Shell Canada opposed the registration of JAVACAFE in relation to coffee products, arguing that it was not distinctive, but rather descriptive of the geographical source of the coffee products. Submitting various evidence regarding the definitions of the component words, the parties curiously omitted any evidence regarding the meaning of the word java in French. Noting this omission, the Registrar looked up the word in a 1968 edition of Larouse, discovered that it meant a type of dance, and concluded that Shell’s evidence fell short of its contention that a Canadian Francophone would associate JAVACAFE with coffee from the island of Java. Read more