2011

Stanley Cup Playoffs Spark Trademark Activity

By In Branding, Protection & Enforcement

The final round of the NHL Stanley Cup Playoffs is about to kick off here in Vancouver, with the hometown Canucks facing off for the first time ever in the playoffs against the storied Boston Bruins.   Perhaps not surprisingly, local businesses in Vancouver are looking to capitalize on this historic event in different ways.

For example, the Vancouver Province is reporting that the Boston Pizza chain has temporarily (and wisely) rebranded itself as Vancouver Pizza, for the duration of the series. 

Earlier in the playoffs, a local automobile dealership that was using the phrase “Go Canucks Go” and the team’s logo on the window of the dealership premises, received a cease and desist letter from the offices of the National Hockey League, demanding that the references to the CANUCKS word mark and logo be removed from their window.

No doubt as the series cranks up, other local businesses will find equally creative ways to get in on the action.

Supreme Court Has Spoken On Confusion

By In Case Law, Registration

Following up on a couple of earlier posts on this topic, the Supreme Court of Canada has this morning handed down its decision in the Masterpiece Inc. v. Alavida Lifestyles, Inc. case.  This decision has been long awaited as it appears to put to rest a critical issue in relation to the assessment of confusion in the context of who is entitled to registration of a mark in Canada.

First, a recap of the basic facts.  Alavida obtained a registration of the mark MASTERPIECE LIVING in Canada in 2007 for use in association with various real estate related services.  Its application was filed in December of 2005, based on proposed use of the mark in Canada.  Alavida commenced use of the mark in January of 2006.   Masterpiece Inc. didn’t oppose Alavida’s application, but instead sought to expunge Alavida’s registration, after it issued, on the basis, among other things, that Masterpiece Inc. had used the same or a similar mark in Canada in association with the same or similar services, prior to Alavida’s application being filed and prior to Alavida’s use of the mark in Canada.

At the Trial Division and in the Federal Court of Appeal, Alavida won and its registration was maintained, on the basis of the argument that Masterpiece Inc.’s prior use of the same mark for the same services, even if proven, was limited in time and space and was in a different part of Canada (Alberta) than where Alavida used its mark (Ontario) and that the geographic location of any alleged prior use was a factor to be looked at in determining likelihood of confusion – in essence importing into the analysis, a common law passing off test. Read more

CIPO Wares and Services Manual Contracts Again

By In Legislation, Registration

In an update to this story, this morning CIPO announced its discovery that a number of the entries it added to the Wares and Services Manual as a result of Canada’s participation in the trademark identification harmonization project conducted by the Trilateral Partners do not comply with Canadian trademark requirements.

As such, the over 12,000 Trilateral-approved entries that were added to the Wares and Services Manual yesterday are being removed today.  CIPO has provided no official word on possible solutions, or a timetable for the (re)implementation of Trilateral-approved identification entries.

Bigger! Better! Wares and Services Manual Expands

By In Legislation, Registration

After a long wait, Canadian practitioners were delighted to learn this morning that CIPO has finally approved and activated more than 12,000 new entries in the Wares and Services Manual.

By way of background, in 2009 CIPO signed a memorandum of co-operation with the United States Patent and Trademarks Office, the Japan Patent Office and the Office for the Harmonization of the Internal Market (responsible for overseeing the CTM system).  These entities – known as the Trilateral Partners – have worked in a loose association over the last few decades to promote and effect harmonization in their IP registration systems.

The Memorandum saw CIPO join the Trilateral Partners’ trademark identification project: the Partners maintain a list of identifications of goods and services that, if entered in an application for the registration of a trademark in any Partner country, will be accepted in that country.

As a condition of its accession to the Memorandum, Canada was permitted to assess the Trilateral list, and to reject a small percentage of identifications that it did not believe reflected Canadian requirements.  With today’s announcement, that process is now complete, and the acceptable terms have been added to the Wares and Services Manual.

PETA’s Use Of Canadian Club Trademark Gets Whacked

By In Case Law, Protection & Enforcement

People for the Ethical Treatment of Animals (PETA) is in the news again for its cheeky ad campaigns, which sometimes use well known trademarks of other parties to garner exposure for its views on Canada’s seal hunt.  We previously blogged about the use by PETA of an ad featuring the 2010 Winter Olympic and Paralympic Games mascots. 

A recent Globe & Mail article reports that PETA had been distributing postcards in a number of bars in Toronto, with plans to roll out the campaign across the country.  The postcards pictured on one side, a cartoon featuring a seal sitting at a bar and asking  the bartender for “Anything but a Canadian Club”.  The other side of the postcard featured a photograph of a hunter about to club a seal.

The North American distributor of Canadian Club Whisky didn’t see the humour in PETA’s cartoon and sent a cease and desist letter, claiming that the publication had caused degradation of Canadian Club’s corporate image and damage to its brand and trademark.

In response to the demand letter PETA agreed not to send out more postcards and to remove the cartoon from its website.   Notwithstanding its compliance with the demand, a spokesperson for PETA argued that it had the doctrine of fair use on its side, to permit the use of trademarks for parody or satire.  Unfortunately for PETA, fair use is a U.S. doctrine that doesn’t apply in Canada in the context of either copyright or trademarks.

Keyword Advertising Appeal Discounts Trademark Analogies

By In Case Law

Canada continues to await its first Court decision on the use of trademarks in keyword advertising.  The British Columbia Court of Appeal issued its decision this week in the case of Private Career Training Institutions Agency (the Agency)  v. Vancouver Career College (Burnaby) Inc. (VCC).  While the Trial Judge’s decision, that the use of keyword advertising in this case was not misleading in the context of the applicable Bylaw, was upheld, the reasoning of the Trial Judge, to the extent it relied on an analysis of confusion under trademark law, was overruled.

At issue was whether the use of keyword advertising by VCC, which is the operator of a private college, was offside the provisions of a Bylaw of the Agency, which is a regulatory body created by the Private Career Training Institutions Act of British Columbia.  The Bylaw in question states that an institution such as VCC “must not engage in advertising … that is false, deceptive or misleading.  Deceptive advertising includes but is not limited to an oral, written, internet, visual, descriptive or other representation that has the capability, tendency or effect of deceiving or misleading a consumer“.   The Agency went further and issued a guideline for interpretation of this Bylaw which specifically stated that keyword advertising and other similar practices would constitute false, deceptive or misleading activity. Read more

Trademark Summary Expungement Proceedings: Evidentiary Issues

By In Case Law, Registration

In 1459243 Ontario Ltd. v. Eva Gabor International, Ltd., the Federal Court set aside the Registrar’s decision expunging a trademark under section 45 of the Trade-marks Act.  The parties agreed that the standard of review was one of correctness, unless new evidence would have materially affected the decision of the Registrar.  At issue was whether the new affidavit filed by the Applicant was hearsay and, if admissible, whether the evidence would have affected the Registrar’s decision.

The Applicant’s new affidavit sought to introduce evidence that employees of the company had included promotional flyers bearing the trademark at issue when shipping other goods to customers.  On cross-examination the deponent acknowledged he was not personally involved with the flyers.  The Federal Court concluded that this evidence met the criteria of reliability and necessity required by the Supreme Court of Canada decision, R. v. Smith, particularly in the context of section 45 proceedings which are intended to be expeditious and straightforward.  The Court noted that other cases had accepted the reliability of evidence given by individuals who operate businesses.  The evidence was also necessary since requiring evidence from several employees would not be consistent with the summary procedure intended for section 45 proceedings. Read more