Supreme Court Has Spoken On Confusion

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

PETA’s Use Of Canadian Club Trademark Gets Whacked

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

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

Ontario Teachers Get A Lesson In Trademarks

The Federal Court of Canada has upheld a 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”.  The application to register this mark was filed by the Ontario Teachers’ Pension Plan Board.

The Registrar had refused registration of this mark on the basis that it was clearly descriptive of the character of the claimed services, contrary to S. 12(1)(b) of the Trade-marks Act.   On appeal, the Federal Court agreed, finding that the word TEACHERS’ in its plural and possessive form, is a distinguishing feature, and therefore the character, of this pension plan because it is a pension plan for teachers.  It clearly describes a prominent characteristic of the wares or services provided.  According to the Court, providing the applicant with a monopoly on the use of this word would prevent other pension or financial services targeted to or belonging to teachers within Ontario or in other provinces and territories from using the term.

You Know The Olympics Are Over When…

The Canadian Intellectual Property Office (CIPO) sent out a reminder today, advising that pursuant to the Olympic and Paralympic Marks Act (OPMA), marks and expressions listed on Schedules 2 and 3 of that Act will expire on December 31, 2010.   As a result, commencing on January 1, 2011, CIPO will no longer raise an objection pursuant to Section 12(1)(i) of the Trade-marks Act on the basis that an applied for mark consists of or so nearly resembles as to be mistaken for a mark or expresssion found in either of those Schedules. 

As regular readers of this blog will recall, the Canadian government enacted this legislation well in advance of the 2010 Vancouver Olympic Winter Games (Vancouver Games), to provide the organizers of the Vancouver Games (VANOC) with another very useful tool in their fight against unauthorized use of numerous trademarks and symbols that are associated with the Olympics generally and more specifically those associated with the Vancouver Games.  Schedule 1 to the OPMA, which sets out various Olympic marks that are not specific to any particular Olympic Games, will remain in force.  Schedules 2 and 3 set out various marks and expressions that are specific to the Vancouver Games and as those games are now part of history, the need to protect those marks and expressions is no longer justifiable.

It was Schedule 3 in particular that raised the ire of some pundits, since it specified that a combination of words from Part 1 with words from Part 2 of that Schedule – including seemingly innocuous combinations of words such as “21st” or “Tenth”, with words such as “Winter” or “Whistler” – could be used as evidence in support of a finding that a person was promoting their business, goods or services in a manner likely to mislead the public into believing that there was an approval, authorization or endorsement by, or a business association with, the Canadian Olympic Committee (COC) or the Canadian Paralympic Committee (CPC).  This, coupled with the ability of VANOC or the COC/CPC to obtain an interlocutory injunction without having to prove that they would suffer irreparable harm, made the effect of these provisions very far reaching.

Survey On Preparation For New gTLDs

A survey is now being conducted by World Trademark Review (WTR), seeking input from marketing and trademark professionals as to their views on how industry is preparing for the impact of the new generic top level domains (gTLD) that ICANN (the Internet Corporation for Assigned Names and Numbers) appears to be pushing forward with.    The survey is supported by a number of domain name and brand protection service providers, trademark owner associations and professional marketing associations.

As previously reported on this blog, ICANN proposes to expand beyond the current gTLDs, of which there are 21, including .com, .org and .net.  Under the proposed expansion, any company will be permitted to set up its own domain registry under any term –  for example .cars, .honda, .mapleleafs, .canucks and pretty much anything else will be possible.  This development obviously has huge implications for all brand owners.

WTR’s survey is intended to provide a sense of how well prepared brand owners are for this coming change.

First Canadian Decision on Keyword Advertising

The British Columbia Supreme Court recently issued the first Canadian Court decision dealing with the use by one party of another party’s trademarks in keyword advertising.  The case involved a defendant, Vancouver Career College (Burnaby) Inc. (VCC), that provides post-secondary career training services under different business names and trademarks.  As part of its internet marketing strategy, VCC, like numerous other businesses, uses keyword advertising, whereby VCC pays search engines such as those provided by GOOGLE and YAHOO! for links to its websites to appear as “sponsored links” or “‘sponsored results” alongside the search engine’s normal search results.  In order to use keyword advertising, VCC selected certain keywords to describe its website, including the business names and trademarks of various VCC competitors.

The plaintiff, the Private Career Training Institutions Agency (Agency) is a provincial regulatory agency charged with overseeing career training institutions that operate throughout the Province of British Columbia.  Acting on complaints received from other career training institutions in the Province, the Agency sought an injunction against VCC’s practice of using the names and trademarks of those other institutions in VCC’s keyword advertising program, on the basis that such use was false, deceptive or misleading.  The Court held that VCC’s keyword advertising program was not false, deceptive or misleading and therefore no injunction was granted.

While framed as a false, deceptive or misleading advertising complaint, rather than a trademark infringement or passing off claim, the Judge in his reasons specifically referenced trade-mark and passing off concepts when looking at the issue of what is confusing or misleading in the context of alleged improper advertising.  The Judge found that what the defendants were doing did not amount to false, deceptive or misleading advertising.  The Judge also held in his reasons that: “I also accept VCC Inc.’s argument that its practice of using Keyword Advertising is no different than the time-honoured and generally accepted marketing practice of a company locating its advertisement close to a competitor’s in traditional media (e.g., placing its Yellow Pages advertisement next to or in close proximity to a competitor’s telephone number  in the same directory so that potential customers of that competitor discover there is another company offering a similar product or service and that they, the consumer, have a choice).”

The Agency has until June 28, 2010 to file an Appeal of the decision, should it choose to do so.