Case Law

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Stripes Applied to Toothpaste: A Registrable Trademark

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In Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc. the Federal Court agreed with the Opposition Board that none of the six grounds advanced by Procter & Gamble, the opponent, could succeed against Colgate-Palmolive’s application to register its Striped Toothpaste Design – Green/White/Blue Stripes (the “Design”).

Three of the grounds advanced are of interest:

(1) that the Design was not registrable as of the filing date of the application (1994) because the Design was being applied to the wares for the purpose of decoration only and not for the purpose of distinguishing the applicant’s wares;

(2) that the Design was not registrable as of the filing date because the Design was primarily functional and registration would give Colgate-Palmolive a monopoly on functional elements or characteristics (i.e. stripes) of toothpaste; and Read more

No Summary Expungement of Trademark if Sublicensing Properly Documented

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In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP, a section 45 summary expungement action, the Registrar was satisfied that Tucumcari Aero, Inc., the owner of the trademark MOTO MIRROR & Design, had established use of the mark in association with truck and commercial vehicle mirrors. However, the Registrar also concluded that the evidence regarding the licences in place and Tucumcari’s control over the character and quality of the wares was ambiguous.

On appeal to the Federal Court the central issue was whether Tucumcari had filed sufficient additional evidence regarding its licensing arrangements, which involved a licensee and sublicensee, so as to establish that it had control over the character and quality of the wares. The Respondent agreed that sublicensing was permitted under section 50(1) of the Trade-marks Act, but argued that the indirect control contemplated by the Act required an express condition in the sublicensing agreement requiring the registrant to determine whether the character and quality of the wares are maintained. The Court disagreed, holding that the  registrant’s control of its contractual rights through the intermediary was sufficient and express language was not required.

The Court was also satisfied that an express provision authorizing sublicensing was not required and, even if Tucumcari had not specifically agreed to the sublicensing, there was evidence it had acquiesced. Moreover, a provision that allowed the sublicensee to ultimately buy the trade-mark did not mean Tucumcari was not using the mark in the interim, since it retained ownership and had an interest in preserving the goodwill until such time as it ultimately assigned its interests.

Special Circumstances Excuse Non-Use of Trademark

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Cobalt Brands, LLC v. Gowling Lafleur Henderson LLP concerned the registration of the mark USQUAEBACH & Design for use in association with blended Scotch Whiskey. The mark was registered in 1977 by a U.S. company which suspended production and sales in 2003 after the death of two owners holding a 95% interest. Van Caem, a Dutch liquor company and creditor, acquired the mark and assigned it to its Belgian subsidiary, but the owner of Van Caem died and Van Caem and its subsidiaries were forced to liquidate, which involved a lengthy process. The registered owner, Cobalt Brands, purchased the mark in 2007 and the assignment to Cobalt Brands was recorded by the Registrar. However, the section 45 expungement notice sent by the Registrar was not received by Cobalt Brands and the Registrar expunged the registration.

Cobalt Brands appealed. Cobalt Brands agreed the mark had fallen into disuse, but argued that special circumstances excused the non-use and the Court agreed.

The Court noted that Cobalt Brands was not prohibited from adducing evidence before the Federal Court simply because none was produced before the Registrar and that it was entitled to produce more than one affidavit. Read more

A Confusing Trademark VIBE

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In Vibe Media Group LLC v. Lewis Craig Trading as VIBETRAIN the Federal Court of Canada set aside a decision of the Opposition Board and allowed the opposition to the application to register the mark VIBETRAIN.  The application was based on proposed use in Canada in association with wares and services that included sound recordings, printed promotional materials, magazines, clothing and souvenir items and entertainment services involving the provision of musical and entertainment performances in live, television, video and Internet media.  The opponent was a company with which Quincy Jones had an association and held the trademark rights, including an application and two pending applications, for VIBE, a popular magazine focusing on urban culture.

The Opposition Board member found that “vibe” was not inherently distinctive, relying on an earlier decision of the Court, Vibe Ventures LLC v. 3681441 Canada Inc.  The Board also found that VIBETRAIN consisted of two ordinary dictionary words that were disconnected from their respective meanings and which, when juxtaposed, were inherently distinctive.  The Board member referred to the Oxford English Dictionary for the definition of “vibe”.  Before the Court, the  Opponent argued that other dictionaries did not define “vibe” and it was therefore not an ordinary dictionary word.

On appeal, the Court found that “vibe” may no longer be inherently distinctive, but through continuous use it had become suggestive of the Opponent’s magazine, something the Board had acknowledged in its decision.  The Opponent also submitted new evidence on the appeal to show that the word “train” suggested a series of musical performances, that no other magazine titles in Canada began with VIBE and that VIBE had been used in Canada with programs, websites, books and recordings related to music.

The Court concluded there was a broad overlap in the music, culture and clothing wares and services that the VIBE and VIBETRAIN trademarks sought to identify, as well as similar channels of trade, since both targeted people with an interest in music, entertainment and culture.  Thus, there was a likelihood of confusion for a “casual consumer somewhat in a hurry”.

Confusing CANNABIS CULTURE

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The Friendly Stranger Corporation v. Avalon Sunsplash Ltd.was an appeal of a decision of the Trade-marks Opposition Board refusing several trademark applications filed by the Applicant.  The Applicant sells products related to hemp and marijuana through its Toronto store, The Friendly Stranger Cannabis Culture Shop, and sought to register CANNABIS CULTURE SHOP, CANNABIS CULTURE SHOP & Design and FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design.  The Opponent, Avalon Sunsplash Ltd., publishes a bi-monthly magazine called “Cannabis Culture”, operates a store in Vancouver and maintains a website at cannabisculture.com.

The Opposition Board had concluded that “the distinctiveness of the Opponent’s mark was sufficient to negate the distinctiveness of the applied for mark”.  Notwithstanding additional evidence filed on appeal, the Federal Court agreed, noting the similarity of the wares and services, and that the only difference between the Applicant’s mark, CANNABIS CULTURE SHOP, and the Opponent’s mark, CANNABIS CULTURE was the use of the word “shop”, which was not in itself inherently distinctive.

The Opposition Board had also refused FRIENDLY STRANGER CANNABIS CULTURE SHOP on a balance of probabilities, since it resembled the Opponent’s mark and both parties targeted the same market.  However, the Federal Court was satisfied that this mark should be allowed since additional evidence shifted the emphasis to the words “Friendly Stranger” from “Cannabis Culture Shop”.

The Court also considered section 6(2) of the Trade-marks Act, which provides that a trademark causes confusion with another trademark if the use of both trademarks in the same area would lead to the inference that the wares or services associated with the trademarks are marketed by the same person.  On this point the Court referenced the finding in United Artist Corp. v. Pink Panther Beauty Corp. [1998] F.C.J. No. 441 that “the question posed by [section 6(2)] does not concern the confusion of the marks, but confusion of goods or services from one source as being from another source”.  Although the wares of the parties were similar, the Court was satisfied there was also no confusion as to source since the marketplaces were very different.  Friendly Stranger Cannabis Culture shop had a strong presence in Toronto, while the Opponent’s marketplace was Vancouver.  Moreover, the internet sales were only a small fraction of what was sold in the stores and the domain names of the parties were very different.  Presumably, if the Opponent had had a stronger internet presence the Court might have found confusion on the basis of section 6(2) since it would have then been difficult to differentiate the “marketplaces” in Vancouver and Toronto.  However, this was not the case.

Trademark Issues at Richmond Night Market

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Target Event Production Ltd. v. Paul Cheung and Lions Communication Inc. concerns a trademark and copyright claim that arose when the Defendants took advantage of a business opportunity the Plaintiff chose not to exploit.

During the summer months of 2000 through 2007 the Plaintiff operated a popular Asian night market in Richmond, British Columbia.  The market was held on land leased by the Plaintiff, and the Plaintiff in turn leased space to vendors selling a wide variety of food products and merchandise.  The Plaintiff created a logo which included the text “Richmond Night Market Summer Festival” in English and “Richmond Summer Night Market” in Chinese characters.  The market was popularly known as “Richmond Night Market” and the Plaintiff applied for that name as a trademark in English and Chinese, although only the English mark was registered at the time of the hearing of the court action.

In 2007, when the Plaintiff was unable to renegotiate its lease at a favourable price, it announced that the market might not be held in 2008, unless the Plaintiff located an alternative space, which it was unable to do.  The Defendants became aware that the space the Plaintiff had been leasing was available, negotiated a lease, obtained the necessary permits from the City and sought out vendors.  However, the Defendants adopted a name similar to that which the Plaintiff had been using, and copied various documents the Plaintiff had created, including a vendor application form and a plan for the market showing the location of food and merchandise booths.

In lengthy reasons, Madam Justice Simpson of the Federal Court carefully examined the various allegations of passing off and copyright infringement.

The Court found that the Plaintiff had acquired rights in four trademarks:  RICHMOND NIGHT MARKET, RICHMOND NIGHT MARKET SUMMER FESTIVAL and Chinese characters for each of these.  The trademarks were originally merely descriptive, but by January 2007 they were valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness in association with the Plaintiff and the location of the market.  However, the Court also concluded that the distinctiveness was not durable, and the marks lost their distinctiveness and associated goodwill when the Plaintiff failed to open another night market in 2009.

The Court then examined the allegations of passing off, taking into account the elements of confusion listed in section 6(5) of the Trade-marks Act, including the surrounding circumstances.  The Court concluded that the visitors, but not the vendors, would have been confused by the Defendants’ actions and thus passing off was established (the key elements of the tort being the existence of goodwill, deception due to a misrepresentation and actual or potential damage).  However, given that the Defendants lost money in their endeavor, there could be no accounting of profits; further, given that the Plaintiff had not operated a market in 2008 or 2009, the Plaintiff had not lost money as a result of the Defendants’ activities.  However, the Plaintiff did recover damages for copyright infringement for use by the Defendants of the Plaintiff’s site plan and application forms, but the total amount was only $15,000.00 plus costs and interest.

Thus, the Defendants had failed to adequately distance themselves from the Plaintiff’s former business when trying to take advantage of the opportuntity presented by the Plaintiff’s cessation of services.  As a result, the Court found both copyright infringement and passing off, although in the circumstances the damages were small.

Malcolm Parry’s VANCOUVER LIFE Fails to Impress Federal Court

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The Federal Court recently issued its decision in Sim & McBurney v. Malcolm Parry.  This case was an appeal by Sim & McBurney from a decision of the Trade-marks Opposition Board, relating to Sim & McBurney’s Section 45 challenge to society columnist Malcolm Parry‘s trade-mark VANCOUVER LIFE.  Toronto Life Publishing Company Limited (represented by Sim & McBurney) has a pending application to register VANCOUVER LIFE for similar wares and services.
 
Under Section 45 of the Trade-marks Act, at the request of a third party, the Registrar may require a trade-mark owner to show that the registered mark has been used in association with the wares or services specified in the registration within the past three years.  The Registrar found that there had been no use of the trade-mark VANCOUVER LIFE in association with the specified services and most of the specified wares, but maintained the registration in part, finding there had been use of the trade-mark in association with “editorial/advertising inserts into publications and periodicals”.  Sim & McBurney appealed this decision and sought to have the trade-mark expunged in association with all registered wares.  Read more