2008

Hyundai Keeps On Motoring

By In Case Law, Protection & Enforcement, Registration

An update on a battle we previously blogged about: the fight between, in one corner, Hyundai Auto Canada, a division of Hyundai Motor America (“Hyundai Canada”); and in the other corner, Cross Canada Auto Body Supply (West) Limited, Cross Canada Auto Body Supply (Windsor) Limited and AT Pac West Auto Parts Enterprise Ltd. (together, for the sake of brevity, the “Resellers”).

You may recall that in that case, the Resellers were re-selling automotive parts and accessories, including Hyundai automotive parts and accessories, in Canada. The Resellers sought expungement of five Hyundai-related marks in Canada owned by Hyundai Canada, claiming that all of the marks were non-distinctive, and further claiming that three of the marks had been abandoned.

(This central action spawned several others: in one, Hyundai Canada sought – though ultimately failed to obtain – an injunction to preclude the Resellers’ use of the Hyundai-related marks on the automotive parts packaging they offered for sale.  Other related actions included disagreements over the production of documents, and the appropriateness of photocopying and other charges.) Read more

Trademark Use Not to Be Inferred: Section 45

By In Case Law, Registration

In past blogs, we have discussed various Federal Court decisions made pursuant to section 45 of the Trade-marks Act, which is intended to be a summary and expeditious procedure for cleaning up the trade-mark register of trade-marks that have fallen into disuse.

In Grapha-Holding AG v. Illinois Tool Works Inc. the Federal Court, Trial Division allowed an appeal from the Registrar of Trade-marks, finding that the evidence the Registrar relied upon did not support her conclusion that the trademark in issue had been used during the previous three-year period. Read more

Liberals Settle Green Shift Trademark Dispute

By In Case Law, Protection & Enforcement

In an update to our previous posts on this topic, the federal Liberal party has apparently settled the dispute surrounding its use of the mark THE GREEN SHIFT, just in time for this fall’s recently called election race to begin in earnest. According to a story in the Canadian Press and the Liberals’ own website, the Liberals have reached an out of court settlement with Green Shift Inc., whereby the Liberals now have a license to use the mark THE GREEN SHIFT in association with their environmental policy. As is typical in such matters, terms of the settlement were not made public.

Canada’s Trademark Opposition Practice Changing Again?

By In Legislation, Trademark Oppositions

In case you missed it: the Canadian Intellectual Property Office has commenced a public consultation session concerning possible changes in practice before the Trademark Opposition Board.

These proposed changes follow on the heels of – and are likely motivated by – changes introduced to Opposition Board practice last fall. Many practitioners were surprised by those changes, and found frustration in some of the ambiguities contained in that Practice Notice, issued nearly a year ago.

The newly proposed Notice appears designed to remedy these problems: it provides greater clarity with respect to the number of available extensions and the possible duration thereof, and offers extensive guidance concerning the nature of the “exceptional circumstances” required to obtain an extension at certain stages of a proceeding. Read more

Green Shift Trademark Battle Steps Up

By In Case Law, Protection & Enforcement

In an update to an earlier post, the battle between the Liberal Party of Canada and Green Shift Inc., over the trademark GREEN SHIFT, continues, with the Liberals having recently filed their Statement of Defence in the Court case.

In a Vancouver Sun story, the Liberals claim they never intended to intended or desired to trade off any reputation or goodwill established by Green Shift Inc. Green Shift Inc. owner Jennifer Wright disagrees strongly, citing the receipt by her company of numerous emails apparently intended for the Liberal party, seeking further information about and both panning and praising the proposed initiative, as well as Liberal party members themselves giving out incorrect references to Green Shift Inc.’s website in the House of Commons. Apparently, out of Court settlement discussions are still taking place.

Applicant Deemed Not a “Person Interested” Under the Trade-marks Act

By In Case Law, Famous Marks

In Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P., the Federal Court ruled that, despite the low threshold, the applicant, Fairmont Resort Properties Ltd., was not a "person interested" for the purposes of challenging the respondent’s, Fairmont Hotel Management, L.P.’s, trade-marks (the "Hotel Marks") under s. 57(1) of the Trade-marks Act.

The applicant was incorporated in 1979 as a numbered company for the purposes of marketing timeshare units constructed by Fairmont Hot Springs Resort Ltd. ("Fairmont Hot Springs"), which, at that time, had common ownership and control with the applicant. The timeshare units were located near Fairmont Hot Springs, British Columbia. In 1985, with the consent of Fairmont Hot Springs, the applicant changed its name to its current name. By 1996, the applicant was fully independent from Fairmont Hot Springs. In 2005, it had annual revenues of over $10 million dollars and Fairmont Hot Springs had revenues of over $12 million dollars.

The respondent is a wholly-owned subsidiary of Fairmont Hotels & Resorts Inc. ("Fairmont Hotels") The hotel chain was started by Tessie and Virginia Fair with one hotel on Knob Hill in San Francisco. They alleged to have coined the word "Fairmont" by combining the surname Fair and a description of Knob Hill as a "mont" or mount. Through the respondent, Fairmont Hotels claims to be North America’s largest luxury hotel management company. In 2004, Fairmont Hotels had revenues of over $320 million U.S. Read more

Discovery Questions in Trademark Cases

By In Case Law, Protection & Enforcement

Adidas AG et al v. 2690942 Canada Inc. c.o.b. Campea will be of interest to litigators. Adidas commenced a claim against Campea alleging infringement of its 3-stripes trademark registration and its copyright registration covering the Euro 2004 logo. Following discoveries, the Federal Court was asked to rule on whether a series of questions required answers.

Prothonotary Morneau applied the six-part test set out in a 1998 decision, Reading & Bates Construction v. Baker Energy Resources Corp. which, stated briefly, requires a consideration of:

  1. the relevance of documents, particularly whether they contain information allowing a party to advance its case;
  2. the scope of the questions;
  3. the relevance of questions in relation to the facts plead;
  4. whether the questions advance a party’s legal position;
  5. the usefulness of the information sought relative to the time and expense of obtaining it; and
  6. the avoidance of fishing expeditions

Read more