Research in Motion Ltd. received some good news late last week, in the form of a Federal Court of Canada ruling that allows it to keep the BBM trademark for its popular messenger service. BBM Canada, a Canadian television and radio research firm that has been using the BBM mark for 60 years, commenced infringement proceedings on the basis that RIM’s use of the BBM mark confused the public. The Court disagreed, ruling that RIM’s use of the mark could peacefully co-exist with BBM’s use, which the Court said extended only to the field of broadcast measurement services. News reports on the decisions suggest that BBM will appeal the decision.
In a reversal of it’s long held position, the Canadian Intellectual Property Office (CIPO) has today announced that it is now accepting applications to register sound marks. This announcement apparently comes as a result of ongoing Federal Court of Canada proceedings regarding an application filed in 1992 by Metro-Goldwyn-Mayer Studios Inc. (MGM) to register as a trade-mark in Canada, the sound of a roaring lion that precedes most, if not all, of their film productions.
For many years, CIPO’s blanket policy has been to refuse all applications for sound marks on the basis that Section 30(h) of the Trade-marks Act requires “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed” unless the application is for a word or words not depicted in a special form. The MGM case is the first where the issue of the registrability of sound marks has been dealt with by the Federal Court.
CIPO’s new Practice Notice on applications for sound marks states that “The application for the registration of a trade-mark consisting of a sound should:
- state that the application is for the registration of a sound mark;
- contain a drawing that graphically represents the sound;
- contain a description of the sound; and
- contain an electronic recording of the sound.”
This change of tune for CIPO comes on the heels of a recent (and still outstanding) consultation on a number of proposed changes to the Trade-marks Act Regulations, including a proposal to permit registration of non-traditional marks, such as sound marks, motion marks and holograms. Time will tell how many applicants decide to take advantage of this change of policy. Certainly, there are a number of well known sound marks in the marketplace and registration of such marks has been possible in other important jurisdictions, such as the United States, for many years.
In a previous post, we reported on a Federal Court of Canada decision, upholding the decision of the Registrar of Trademarks to refuse registration of the mark TEACHERS in association with services described as “administration of a pension plan, management and investment of a pension for teachers in Ontario”. Undaunted, the Ontario Teachers’ Pension Plan Board decided to appeal that decision to the Federal Court of Appeal.
The Federal Court of Appeal has now issued its own decision in this matter, upholding the lower Court’s ruling and again refusing registration, on the basis that the mark is clearly descriptive of the character of the claimed services. In dismissing the Applicant’s arguments on Appeal, the Court of Appeal found that “the word TEACHERS’, which clearly describes those whose pension plan the appellant administers and in whose benefit the management and investment services of the pension fund are rendered, describes a highly prominent feature, trait or characteristic belonging to the appellant’s services.”
It remains to be seen whether the Applicant has learned its lesson or will seek leave to appeal to the Supreme Court of Canada.
The Federal court recently dismissed an appeal to have a trademark expunged on grounds of descriptiveness and confusion. In Movenpick Holding AG v. Exxon Mobil Corporation and Attorney General of Canada (Registrar of Trade-marks), the Court considered whether Esso’s “Marché Express” mark is too descriptive of the services it provides as a gas-station convenience store. Then it went on to consider whether it was possible to confuse “Marché Express” with Movenpick’s “Marché” mark, which it uses for its chain of restaurants.
Movenpick claimed that “Marché Express” is descriptive of the services Esso offers. Section 12(1)(b) of the Trade-marks Act provides that a trade-mark must not be “clearly descriptive” of the character or quality of the wares or services associated with the mark. So, the question before the Court was whether, in the French language, “Marché Express” was descriptive of a convenience store.
Both sides produced expert evidence of the meaning of the phrase “Marché Express”. The Court was unimpressed with this, favouring evidence of the phrase’s colloquial use rather than academic musings as to its meaning. The Court noted that one must look at the perception of the phrase by regular everyday consumers, not its meaning as derived from a scholarly analysis.
The Court ultimately found that while the word “marché” is used to describe convenience stores (it translates strictly to “market”), the construction “Marché Express” is not something that regularly appears in colloquial French. At best, it could be construed to mean the result produced from shopping at a such a store. Thus, “Marché Express” is not “clearly descriptive”, contrary to s. 12(1)(b).
Movenpick also claimed that Esso’s mark, when used to denote a convenience store, was easily confused with its own registered trademark, “Marché”, which is used in association with the operation of Movenpick’s restaurant. Under s. 12(1)(d), a trade-mark is not registrable if it is confusing with another registered trade-mark.
The Court outlined the test for confusion from Veuve Cliquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23, wherein the Court must look for confusion in the mind of a “casual consumer somewhat in a hurry” who only has an “imperfect recollection” of the other mark. The Court also carefully considered all of the surrounding circumstances dictated by s. 6(5) of the Act. Most interestingly, the Court agreed with the Registrar’s statement that “Marché” was a weak mark. The term “Marché” is commonly used in the food and beverage industry; thus, consumers are used to seeing it in the marketplace (no pun intended!). When a mark has such a broad usage, the trademark holder cannot expect to have a wide range of protection over the mark. Consumers are able to pick up on slight differences between such weak marks, so the sphere of protection is accordingly narrower. The Court held that the inclusion of “Express” was enough for casual consumers to distinguish the two marks in question.
So, in the end, Esso was able to keep the registration of its trade-mark, and decidedly un-confused consumers are still able to both shop at the Marché Express and dine at Marché restaurants.
We are following up on a blog we posted in 2011 reporting that Target Brands Inc., the U.S. retailer, was refused an interlocutory injunction in its continuing battle with owner of the Canadian trade-mark registration for TARGET.
The U.S. retailer has plans to open in Canada beginning in 2013. However, the owner of the Canadian trade-mark registration, such ownership dating back to 2002, had begun operating a series of stores in 2010 Canada. The ongoing battle has been commented on frequently as an example of the importance of policing key trademarks in foreign jurisdictions.
The Globe and Mail is reporting on February 2, 2012 that a settlement has now been reached. The details are not known, but it is suggested that the settlement may be worth millions of dollars to the Canadian owner, who must cease all use of the TARGET trademark by January 31, 2013.
The Canadian Internet Registration Authority (CIRA) has released the results of its first consultation on its proposed implementation of .CA domains with French accent characters (known as the Latin Supplement -1 Unicode characters), such as é à ü and ç.
Under its initial implementation plan, CIRA proposed a sunrise period during which owners of .CA domain owners could register as many French accented variants of their existing ASCII (non- accented Latin-based script characters, namely the letters a-z) domains as they opted for. For example, the owner of grace.ca could also register grâce.ca during the sunrise period, before that accented variant of grace.ca (and all other French accent variants) would be opened up for registration to anyone else who otherwise qualifies to own a .CA domain.
As a result of comments received during the first consultation period, many citing concerns about increased costs to .CA domain owners, phishing and the potential for consumer confusion, CIRA is now proposing to do away with any sort of sunrise and landrush periods and instead is proposing that only the owner of a .CA domain name with ASCII characters would have the right to register any or all French accented versions of that .CA domain. In addition, under the new proposal, once a French accented .CA domain name variant has been registered, it cannot be transferred without also transferring the ASCII .CA domain name and all other registered French accented .CA domain name variants. CIRA refers to this concept as “character bundling”. In addition, CIRA is also considering the feasibility of some additional French accent characters that are commonly used.
CIRA is seeking input and comments on its revised implementation plan, during a second consultation period, running from January 24 to February 24, 2012.
As reported in our recent Knowledge Bytes publication, today marks the beginning of the Sunrise period for the new .xxx domain. Owners of registered trademarks who are not part of the adult entertainment industry may and should apply to block their registered marks from becoming part of a domain name with the new .xxx generic top level domain. This Sunrise period is in effect until October 28, 2011. Different Registrars are charging different amounts for this service, so shop around.