Round 2 Won By Scotch Whisky Association

As a follow up to earlier postings on the ongoing battle between the Scotch Whisky Association (the “Association”) and the Canadian distillers of GLEN BRETON single malt whisky, the Association is reporting today that it has won its appeal to the Federal Court of Canada.

The Trade-marks Opposition Board denied the Association’s opposition to the application by Glenora Distilleries of Nova Scotia to register the mark GLEN BRETON, on the basis that, in the Opposition Board’s view, Canadians would not be confused by the use of the word GLEN in the mark, such that they would think they were purchasing Scotch Whisky. The Association appealed that decision to the Federal Court.

During the appeal, the Association produced evidence that GLEN BRETON was misdescribed in various retail outlets, newspaper articles, pricelists, menus and websites as a Scotch Whisky and the Federal Court agreed with its submissions that Canadian consumers would likely be confused that they were purchasing a Scotch Whisky when that was not the case.

Stay tuned for Round 3 of this battle, as CBC reports that Glenora Distilleries is already planning to file an appeal of the Federal Court decision.

Our Blogging Team Is Growing

We’re pleased to welcome two new contributors to the Canadian Trademark Blog, namely Niamh Pollak and Jeffrey Vicq.

Niamh was called to the Bar in Ireland in 2004 and more recently in British Columbia. As an associate with Clark Wilson LLP’s Technology and Intellectual Property Practice Group, her practice will focus on trademark and copyright law, domain name disputes, intellectual property licensing and digital media.

Jeffrey recently completed an LLM at the University of Ottawa with a concentration in Law and Technology, before which he practised for a number of years with another Vancouver law firm. He’s a registered Canadian Trademark Agent and his practice at Clark Wilson LLP will focus on intellectual property and privacy law issues, including trademark prosecution, computer hardware and software licensing, distribution, outsourcing, maintenance and purchase contracts.

With two more contributors we hope to be able to deliver more content to our readership.

Best wishes for the holiday season!

City and Mayor Settle Up

In our posting of June 25, 2007 we reported on an application by the Mayor of the City of Vancouver to register the mark ECODENSITY in his own name. The application raised a few eyebrows because on the face of it, the program that the mark related to appeared to be one that the City had funded and it wasn’t clear why the Mayor would be filing an application in his own name rather than in the name of the City.

Following the advertisement of that application, the City of Vancouver Councillor’s Office filed an Opposition. According to the Canadian Intellectual Property Office online database, matters seem to finally have been resolved between the City and its Mayor, as the application has now been assigned to the City. As one of our readers has noted, the open question now is whether that application, which was based on proposed use, or any resulting registration will be valid, if in fact the Mayor, as he claimed in a news report at the time, never had the intention to use the mark himself.

Penny For Your Thoughts

The lowly Canadian penny (to be fair, it’s currently worth more than it’s American counterpart) has been the subject of some intense legal discussions lately, according to a recent story in the Globe and Mail. This story highlights the importance of protection for trademarks under both trademark and copyright law in Canada.

 The Royal Canadian Mint has taken issue with the apparently unauthorized use of a Canadian penny design by the City of Toronto as part of an ad campaign which appears on posters on buses and in bus shelters and on bumper stickers and buttons. The campaign is part of the City’s attempt to convince the Federal Government to provide more funding to municipalities, specifically one cent out of every six collected by the Federal Government through the Goods and Services Tax. The penny design is also featured on the City’s Onecentnow.ca webpage

According to the story, the Mint claims ownership of intellectual property rights  in the design of the penny and is demanding that the City stop all use of its design and payment of a licensing fee for past use. While the news story doesn’t get into the legal specifics, the Mint is likely  relying on both copyright and its Official Mark status for the penny design. The Mint caused the Registrar of Trade-marks to publish a notice in the Trade-marks Journal on June 2, 2004, of the Mint’s adoption and use of the penny design as an Official Mark. Once such notice is published, Section 9 of the Trade-marks Act prohibits any other person from adopting, using or registering that mark in connection with a business, as a trademark or otherwise – a very strong form of protection available only to Canadian public authorities – basically government entities and entities over which there is significant ongoing governmental control – and universities. From the article, it appears the City is asserting a defence that it is using the penny design for educational purposes, but it’s not clear that even educational use is permitted under Section 9 without the consent of the owner.

The Mint may also be able to assert its copyright against the City, irrespective of the Official Mark issue, assuming ownership, originality, subject matter, fair dealing and related issues are not a problem. Copyright provides a very different cause of action than trademark – once a copyright protected work is copied, it’s irrelevant to a claim of infringement whether the copy is being used in association with any wares or services.

Of London, Lithuania And A Popular Tree

A recent story in the London Free Press shows just how powerful Canadian trade-marks are becoming throughout the world – causing a country half a world away to drop a tree design that it had recently chosen to be the symbol for its latest tourism campaign. A similar tree design is the subject of an Official Mark Request advertised by the Canadian Registrar of Trade-marks at the request of the City of London, Ontario, known primarily, until now, as a centre for the insurance industry in Canada and as a University town. The design appears prominently on the City of London’s website.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

Canucks Unveil New Logo

Only in a Canadian city, would the unveiling of a new logo for the local hockey team be the subject of such anticipation and discussion – particularly as the start of the season is over a month away. Today, before 8,000, yes 8,000 fans inside General Motors Place in downtown Vancouver, on one of the rare sunny and warm days the city has seen this summer, the Canucks finally unveiled their new jerseys to the adoring throngs.

Though nothing is showing up on the Canadian Intellectual Property Office online trade-marks database yet, no doubt, applications to register the new logo as a trade-mark have already been filed at the Canadian Intellectual Property Office.