Clark Wilson

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

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

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

Applicant Fails to Prove Damages

By In Case Law, Protection & Enforcement

The recent Federal Trial Court decision of Pharmacommunications Holdings Inc. v. Avencia International Inc. (“Avencia“) is a reminder to all lawyers that a successful claim requires proof of every element of the applicable legal test.

At issue in Avencia was whether the respondent’s trademark, PHARMACOMM, caused, or was likely to cause, confusion with the applicant’s trademark, PHARMACOMMUNICATION. Both companies provided marketing services to the pharmaceutical industry, although the degree of overlap was not agreed on. The applicant relied on s. 7(b) of the Trade-marks Act, which prohibits a person from directing “public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another.”

The applicant sought various relief, including a declaration, a permanent injunction and delivery up of all infringing materials. The applicant focused its submissions on the issue of confusion. The respondent denied any confusion and also argued that a trademark holder cannot appropriate descriptive words, even by combining two words together. Read more

Damages for Counterfeit Goods – Another Significant Award

By In Case Law, Famous Marks, Protection & Enforcement

We previously reported on the Federal Court case Louis Vuitton Malletier S.A. et al. v. Yang et al. (“Yang”). Louis Vuitton was back in court in June, but this time the venue was the British Columbia Supreme Court. In Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd., Louis Vuitton proceeded by way of a summary trial under British Columbia’s Rule 18A, seeking judgment against a number of defendants for trademark and copyright infringement.

In 2004, Louis Vuitton had executed an Anton Pillar Order against the defendants. In 2005, Louis Vuitton obtained a Federal Court order against the defendants and entered into a settlement agreement in 2006, whereby the defendants pledged to Louis Vuitton that they would not sell any more counterfeit merchandise.

There were four individual defendants and two corporate defendants. The principal of the enterprise was Wynnie Lee (“W. Lee”). W. Lee’s daughter, Francisca Hung-Yee Ngan (“Ngan”), W. Lee’s sister, Jacqueline Lee (“J. Lee”), and a former employee, Lisa Le Dung Tran (“Tran”) were co-defendants. W. Lee and J. Lee carried on business through W. Lee Corporation and J. Lee Corporation, respectively. However, the Court found that the corporations could not be used as a shield, because W. Lee’s and J. Lee’s actions constituted willful and deliberate infringement. Read more

Trademark Expungement Despite Plans for Future Use

By In Case Law, Registration

In Scott Paper Limited v. Smart & Biggar, the Federal Court of Appeal overturned a string of case law that deviated from the wording of section 45. The appellate court agreed with the trial judge that the Registrar erred in deciding not to expunge the trade-mark “VANITY” despite 13 years of non-use. We previously discussed different aspects of this “use-it or lose-it” provision.

The issue in this case was whether plans to use the trademark in the immediate future saved an unused trademark from expungement. In determining that future use amounted to special circumstances, the Registrar purported to rely on the three criteria laid down in Registrar of Trade-marks v. Harris Knitting Mills, namely the length of time during which the trademark has not been in use, whether reasons for the absence were due to circumstances beyond the control of the owner, and a serious intention to shortly resume use.

However, the Federal Court of Appeal found that the Registrar was “in fact, relying upon the gloss put upon Harris Knitting Mills in … Lander Co v. Alex E MacRae and Co.. Later in the Scott Paper judgment, the Federal Court of Appeal explained that “[i]t is important to distinguish between explaining an absence of use and excusing an absence of use”. Thus, special circumstances must explain the absence of use and the three criteria are used to determine if the absence is excused. Read more