Case Law

Additional Evidence and Relevant Dates on Trademark Appeals

By In Case Law, Registration, Trademark Oppositions

In Advance Magazine Publishers, Inc. v. Wise Gourmet Inc. the publisher of GOURMET magazine successfully appealed a decision of the Trade-mark Opposition Board that the use of WISE GOURMET in association with various food products and printed publications, namely cookbooks, newsletters, nutrition guides, food recipes and periodicals relating to food and nutrition was not confusing with the use of GOURMET in association with magazines and other publications.  On appeal to the Federal Court, Advance Magazine Publishers, the original Opponent, submitted two lengthy affidavits that were not before the Trade-mark Opposition Board.  Although the original Applicant chose not to participate in the appeal, the Court noted that its position still had to be considered.

Given the new evidence the appeal proceeded on a de novo, or fresh, basis and applying the test for confusion set out in sections 6(2) and (5) of the Trade-marks Act, the Court concluded there was confusion, such that WISE GOURMET could not be registered.  Although GOURMET was not inherently distinctive, its use over time had gained the Opponent a certain reputation in relation to its magazine and associated wares and services.  The mark had also been in use for a long time, while the Applicant was a new entry into the market.  The nature of the wares and services and the nature of the trade were similar.  There was also a fair degree of resemblance between the two marks since the Applicant had incorporated the Opponent’s mark, GOURMET, in its entirety, into WISE GOURMET.  While the first word, “wise”, helped distinguish the marks to some degree in terms of sound and appearance, the idea suggested by both marks was similar. Read more

Proving a Trademark Licence

By In Case Law, Protection & Enforcement, Trademark Oppositions

3082833 Nova Scotia Company v. Lang Michener LLP and Registrar of Trade-marks illustrates the importance of providing evidence of any licences in place when confronted with a summary expungement under section 45 of the Trademarks Act:  an evidentiary burden that is not difficult to meet.

3082833 Nova Scotia Company (“3082”) owned the registered mark ENTRE NOUS for use in association with “telecommunication services, namely long distrance telephone services”.  The mark was originally owned and used by 3362426 Canada Inc. (“3362”) carrying on business as Primus Telecommunications Canada Inc. (“PTC”).  3082 acquired the mark in the course of a reorganization and the mark was used by PTC, which had become 3082’s wholly owned subsidiary.

In response to a section 45 summary expungement, 3082 put forward invoices issued by PTC as evidence of use, but the Registrar concluded that they only referred to “Primus Canada” and there was no evidence that 3362 or 3082 had used the mark and no evidence of a licence. Read more

BTO Members Taking Care of Legal Business

By In Case Law, Protection & Enforcement

Fans of the 70’s Canadian super group, Bachman Turner Overdrive (also commonly known as BTO), may have noted the report of a legal dispute between current and former band members over the rights to the band’s trademarks.  The mark BACHMAN-TURNER OVERDRIVE  is the subject of two registrations in the Canadian Intellectual Property Office and there are several pending applications for similar marks. 

While disputes between ex-band mates are not unusual, this one has an added twist in that it pits one brother (Randy Bachman, widely considered the most talented member) versus another (Robbie).

While this appears to be primarily a contractual dispute, the trademark issues are front and centre and serve to highlight the value of branding to musical groups, both during their heydey and into later years when remaining members (and often non-members) continue to live off the avails of a group’s prior glories.

Perhaps one day someone will turn this family feud into a Broadway musical – “Peg Boys” might be a nice nod to the Winnipeg roots of the band.

Counterfeit Goods: Statutory and Punitive Damages

By In Case Law, Protection & Enforcement

Microsoft Corporation v. 1276916 Ontario Ltd. et al is not a trademark case.   However, it is a further illustration of Canadian courts’ willingness to award substantial statutory damages under the Copyright Act, together with punitive damages, in counterfeit goods cases.

In this case Microsoft had received ten reports of software privacy.  An investigator attended the Mississauga, Ontario store operated by the defendant numbered company and was offered a computer system with unlicensed software.  A cease and desist letter was sent, but Microsoft continued to receive piracy reports.  An investigator subsequently bought a computer system with various unauthorized software loaded on it and Microsoft commenced the action.  The action was initially defended by the defendant numbered company and its owner, but the defence was struck out after the owner failed to attend discoveries, alleged the store was out of business, when it was not, and failed to appoint new counsel.

Microsoft applied for default judgment. Read more

More Beer Brand Wars

By In Branding, Case Law, Protection & Enforcement

You can tell that it’s Fall up here in the Great White North.  The weather is turning cooler, the NHL preseason is in full swing and another trademark battle between Canadian brewery icons Molson and Labatts has started. 

A recent report indicates that Molson Coors Brewing Company has launched a lawsuit in Canada’s Federal Court against Labatt Breweries of Canada, claiming that the mountain imagery in new ads for Labatt Kokanee beer infringes the copyrighted images that Molson uses on its Coors Light beer products in Canada.  Molson is reportedly seeking $10 million in damages.

For its part, Labatts says that mountain imagery has been part of its branding for four decades and that the new graphics feature the same Kokanee Glacier that the beer is named after.

Limey! Another Beer Battle a-Brewing

By In Branding, Case Law, Protection & Enforcement

News today that another battle is brewing in Canada’s notoriously litigious beer industry: Waterloo’s Brick Brewing Co. Ltd.–makers of Canadian beer brands Laker, Formosa, Red Cap, Red Baron and Waterloo–has been sued by Anheuser-Busch Co. and Labatt Brewing Co. over its labels for its Red Baron Lime beer product.

In the suit filed August 28 in Federal Court, Anheuser and Labatt take umbrage with the promotional material for Brick’s Red Baron Lime product.  In particular, they allege the labeling scheme used on Red Baron Lime products, including the use of the colours silver and green together with the depiction of a half a lime, will confuse consumers into believing there is a connection with their own Bud Light Lime product, whose label uses the colours green and white together with the depiction of a wedge of lime.

Additionally, Anheuser and Labatt have claimed that Brick’s promotional website for Red Baron Lime–located at lustforlime.com–will lead to consumers to believe there is a connection with the product and the promotional website for Bud Light Lime located at budlightlime.com.  Both sites feature prominent use of the colour green and images of young people in swimsuits. Read more

Whiskey War Waxes On

By In Case Law, Protection & Enforcement, Trademark Oppositions

In several earlier posts, we’ve tracked the ongoing battle between Glenora Distillers and the Scotch Whiskey Association respecting the propriety of Glenora’s use of the word GLEN in its trademark GLEN BRETON.   Most recently, the Federal Court of Appeal found that Glenora was able to use GLEN without misleading Canadian consumers into thinking its product originated in Scotland.

News today that this brouhaha may not be over quite yet: it appears that the Scotch Whiskey Association has sought leave to appeal to the Supreme Court of Canada.

Stay tuned!