No Trademark Expungement Although Language Describing Wares Outdated

Loro Piana S.P.A. v. Canadian Council of Professional Engineers is a further example of the importance of providing proper evidence in response to a Registrar’s notice requiring evidence of use within the previous three years pursuant to the summary expungement provisions in section 45 of the Trade-marks Act. The Applicant had, in 1989, registered the trademark ING. LORO PIANA & C. for use in association with “textile fabrics, bed covers, blankets, scarves, mufflers, shawls and gloves”. On the basis of the affidavit submitted by the Applicant, the Hearing Officer concluded that use of the mark in association with “textile fabrics” had been shown, but not use in association with the remaining wares.

On appeal to the Federal Court, Trial Division, the Applicant filed further evidence and the Court, applying a standard of correctness, concluded that use of the mark in association with each of the listed wares had been shown. In doing so, the Court was also satisfied that the sale of “stoles” constituted the sales of “mufflers” and that the sale of “bed covers” or “blankets” constituted the sale of “throws”. The Applicant provided evidence explaining its use of the terms.

The Court referred to the 2006 decision of Levi Strauss & Co. v. Canada (Registrar of Trade-marks) which held that a section 45 proceeding is intended to be a simple, expeditious procedure to get rid of “deadwood” and is not intended to be a meticulous verbal analysis and stated, “where the language used to describe a ware has changed with common usage, but the use of the trade-mark has continued, the use of the outmoded word will be allowed to remain”.

The Court was also satisfied that while the use of the trademark deviated slightly from the trademark as registered, the differences were unimportant and would not mislead an unaware purchaser.

Non-Use of a Trademark – Evidence of Special Circumstances Required

Jose Cuervo S.A. de C.V. v. Bacardi & Company Ltd. and the Registrar of Trade-marks was the second time that Bacardi had sought summary expungement, pursuant to section 45 of the Trade-marks Act, of the trade-mark CASTILLO for use in association with rum. This time, the Federal Court Trial Division agreed with the Registrar and expunged the mark for non-use. At issue before the Federal Court was the standard of review and whether special circumstances justified the non-use.

In the course of the earlier expungement action, the Appellant’s predecessor in title to the trademark had, on appeal, produced evidence of a sale of 41 cases of CASTILLO rum on November 21, 1994 to the Ontario Liquor Control Board. Thus, in Quarry Corp. v. Bacardi & Co (1996) 124 F.T.R. 264, the Court concluded the transaction was in the normal course of trade and set aside the Registrar’s decision to expunge. On further appeal, the Federal Court of Appeal upheld the Trial Division’s decision, but commented that a “single sale divorced from all context” would not normally be sufficient use. In other words, a single sale contrived to protect a trademark was not sufficient.

On October 26, 2005, at Bacardi’s request, the Registrar again issued a section 45 notice requiring evidence of use within the previous three years. The manager of Jose Cuervo’s legal department provided an affidavit dated June 23, 2006 attaching the invoice of November 21, 1994 evidencing the sale to the Ontario Liquor Control Board and an invoice of November 24, 1999 evidencing 100 cases sold to the Alberta Liquor and Gaming Commission (neither sale being within the 3-year limit). The manager also deposed that the Appellant had undertaken a new marketing strategy in 2002 to incorporate a secondary trademark, COHIBA, into the label (owned by a related company), but the co-branding strategy had triggered a worldwide dispute, including threatened litigation that was not yet resolved.

The Registrar concluded there was no use within the requisite 3-year period and, while threatened litigation might be a reasonable excuse for a short period, six years was not reasonable. Relying on the reasoning in Scott Paper Ltd. v. Smart & Biggar (previously discussed) the Registrar concluded that there were no special circumstances.

On appeal, Jose Cuervo provided an affidavit stating that it had resumed use of CASTILLO on August 4, 2008 and attached an invoice for a consignment to the Alberta Liquor and Gaming Commission. The Court noted that the standard of review should be resonableness. The new evidence was not such that it would have affected the Registrar’s decision (being evidence of use well after the 3-year limit) and therefore the standard of review was not correctness.

The Court affirmed the Registrar’s decision, noting that Jose Cuervo produced no evidence as to why the co-branding could not be suspended, stating that it ws “illogical to suspend the use of a valid Canadian trade-mark because of a threat of impending trade-mark litigation with respect to a secondary trade-mark”. The decision to suspend use of CASTILLO in Canada was voluntary and a trade-mark dispute over a secondary mark did not constitute exceptional circumstances.

Court Considers Colour Marks

Peak Innovations Inc. (the “Applicant”) filed 31 applications to register trademarks for various of its products, namely wood to wood and concrete and masonry connectors, most of which are used in deck building. A competitor, Simpson Strong-Tie Company Inc. (the “Opponent”) filed statements of opposition in respect of all 31 applications.

On appeal, the Federal Court recently considered two of the applications agreeing with the Opposition Board and dismissing the appeals. At issue were a mark for the colour green (Application 1,187,491) and a mark for the colour greyish-green (PANTONE 5635C) (Application 1,205,529), both as applied to fastener brackets, claiming use in association with fastener brackets for attaching deck boards.

The Opponent filed additional evidence on its appeal to the Federal Court, but the Court did not agree there was evidence of third parties in the Canadian marketplace using grey or khaki green on items for purposes that included deck building. Thus, there was no confusion.

The Court also refused to consider the Opponent’s arguments concerning non-distinctiveness, since those allegations were raised for the first time on appeal, and “while a party is open to raise new evidence on appeal, it cannot raise new issues”.

The Court also concluded that the mark was not purely or primarily functional. The Opponent, based on certain statements made during the course of cross-examination, argued that green or greyish coating was added to products primarily to reduce corrosion. However, the Court noted that the coating could be produced in many colours and, following the decision of the Federal Court in Smith, Kline & French Canada Ltd. v. Registrar, concluded that “colour applied to the whole of the visible surface of an object can function as a trademark”.

Trademark Confusion: Possible Future Confusion Not Relevant

In a recent decision of Canada’s Federal Court of Appeal, Masterpiece Inc. v. Alavida Lifestyles Inc. the Appellant sought to expunge the Respondent’s registered trademark MASTERPIECE LIVING pursuant to section 18(1)(a) of the Trade-marks Act alleging that it was unregistrable as of the date of registration because it was confusing with the Appellant’s use of the same mark or similar marks.

Both the Appellant and Respondent operated in the retirement residence industry. The Respondent applied to register MASTERPIECE LIVING on December 1, 2005 on the basis of proposed use and began using the mark in January 2006. The application was granted in March 2007. The Appellant alleged it had used a series of evolving trademarks with the word “Masterpiece” beginning in 2001, and began using MASTERPIECE LIVING either in December 2005 or February 2006, depending on which exhibit was consulted. It applied to register the mark on June 29, 2006, but the application was denied on the basis that the Respondent had already applied to register the mark.

Whether the Respondent’s mark was unregistrable as of the date of registration turned on section 16(3)(a) of the Trade-marks Act which allows an applicant who has filed on the basis of proposed use to secure its registration “unless at the date of filing of the application it was confusing with (a) a trademark that had been previously used in Canada or made known in Canada by another person”. Read more

VANOC Gets Sour Taste From Lululemon

Vancouver based yoga wear retailing phenom Lululemon Atletica has tweaked the nose of the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Games (VANOC), with a new line of clothing. A story yesterday reported that Lululemon has introduced a new line of clothing named “Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition”. VANOC reportedly is upset that Lululemon has only complied with the letter and not the spirit of the laws in Canada that protect the various trademarks used to promote the Olympic Games generally, and the Vancouver 2010 Winter Olympic and Paralympic Games specifically.

The clothing line in question features various items in the national colours of Canada, the U.S., Sweden and Germany. Notably, the Canadian hoodies feature gold zippers while the zippers in the colours of other countries have silver zippers. Lululemon lost out to the Hudson’s Bay Company in its bid to be the official apparel supplier to the Canadian Olympic team for the Summer and Winter Games during the period from 2006 to 2012.

Readers of the Knowledge Bytes newsletter will be aware of the legislative hammers that are at VANOC’s disposal to enforce its trademark rights against both would-be infringers and ambush marketers alike. These include the Olympic and Paralympic Marks Act, which contains lists of specific words that either can’t be used at all, or that can’t be used in combination with other specific words–for example the combination of “Vancouver” and “2010”. Read more

Additional Evidence and Relevant Dates on Trademark Appeals

In Advance Magazine Publishers, Inc. v. Wise Gourmet Inc. the publisher of GOURMET magazine successfully appealed a decision of the Trade-mark Opposition Board that the use of WISE GOURMET in association with various food products and printed publications, namely cookbooks, newsletters, nutrition guides, food recipes and periodicals relating to food and nutrition was not confusing with the use of GOURMET in association with magazines and other publications.  On appeal to the Federal Court, Advance Magazine Publishers, the original Opponent, submitted two lengthy affidavits that were not before the Trade-mark Opposition Board.  Although the original Applicant chose not to participate in the appeal, the Court noted that its position still had to be considered.

Given the new evidence the appeal proceeded on a de novo, or fresh, basis and applying the test for confusion set out in sections 6(2) and (5) of the Trade-marks Act, the Court concluded there was confusion, such that WISE GOURMET could not be registered.  Although GOURMET was not inherently distinctive, its use over time had gained the Opponent a certain reputation in relation to its magazine and associated wares and services.  The mark had also been in use for a long time, while the Applicant was a new entry into the market.  The nature of the wares and services and the nature of the trade were similar.  There was also a fair degree of resemblance between the two marks since the Applicant had incorporated the Opponent’s mark, GOURMET, in its entirety, into WISE GOURMET.  While the first word, “wise”, helped distinguish the marks to some degree in terms of sound and appearance, the idea suggested by both marks was similar. Read more

VANOC Unravels Cowichan Sweater Trade-mark Tangle

Members of the Cowichan Tribes had the Vancouver Olympic Committee (VANOC) tied up in knots recently when it accused VANOC of stealing the Cowichan’s traditional sweater design, popularly known as the “Cowichan Sweater”. VANOC had initially asked the Cowichan Tribes to bid on the contract to supply the sweater (which is part of the Team Canada uniform) but chose instead to give the contract to an outside supplier over concerns regarding the Cowichan’s ability to deliver sufficient quantities in the required timeframe.

The Cowichan decried the move, which they saw as an infringement of their well known design. Olympic torch-relay protests were planned, but tensions quickly unravelled when VANOC and the Bay offered the Cowichan a license deal for their sweaters. As a result of these negotiations, Cowichan-made sweaters will now be available at the Bay. Cowichan knitters will be licensed suppliers to the Olympics and will be entitled to display the Olympic logos alongside Cowichan trade-marks.

The Cowichan Band Council owns several trade-marks relating to the Cowichan brand, including both Official Marks and Certification Marks. Read more