Evidentiary Omissions Lead to Trademark Appeal

The recent Federal Court case of Sanders v. Smart & Biggar Intellectual Property and Technology Law is a good example of the difference that well prepared evidence can make.  The Trademarks Opposition Board expunged the applicant’s trade-mark, “UGGLY BOOTS” pursuant to section 45 of the Trade-marks Act because the applicant had not demonstrated use of the trademark in Canada.  The Board found that the applicant’s evidence was “rampant with ambiguities” and omissions. 

The applicant appealed to the Federal Court pursuant to section 56 of the Act.  The applicant was allowed to present new evidence and the appeal was treated as a new hearing.  The applicant’s new evidence consisted of the affidavits of five clients, which all showed the transfer of wares with the trademark.  The affidavits also attached invoices proving the transfers took place.  The Court found that this new evidence went beyond mere allegations of use, noting that the applicant was only required to produce “evidence of a single sale, whether wholesale or retail, in the normal course of trade” so long as the sale was not deliberately manufactured or contrived to protect the registration of the trademark.  In applying the principle of use “in the normal course of trade”, the Court also noted that good faith is presumed when there is no evidence challenging the affiant’s credibility.  Thus, the Court found in the applicant’s favour, something the Board might have done if better evidence had been presented at first instance.

Proposed Practice Notices: Professional Designations and Abbreviations, Acronyms and Initials

The Canadian Intellectual Property Office has initiated two short consultations (January 29 to February 28, 2010) for proposed Practice Notices regarding section 12(1)(b) of the Trade-marks Act.  Section 12(1)(b) provides that “a trademark is registrable if it is not, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”. The two proposed Practice Notices address the application of 12(1)(b) to professional designations and to abbreviations, acronyms and initials.

If research discloses that an applied for trademark consists of a professional designation, the examiner will apply a first impression test to determine whether a consumer would assume the goods and services are produced by a professional with a designation similar to the applied-for trademark and if so, the trademark will be unregistrable, being clearly descriptive of the persons employed in the production of the wares and services.  The addition of an abbreviation, acronym or initial to the professional designation will not make the trademark registrable.

A trademark that consists of or contains an abbreviation, acronym or initial will be considered unregistrable if considered as a whole and if as a matter of first impression the abbreviation, acronym or initial is clearly descriptive or deceptively misdescriptive of the wares and services.  Moreover, the addition of an abbreviation, acronym or initial to a clearly descriptive word or phrase will not render it registrable as a trademark.

The changes arise in light of a recent Federal Court decision, College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Nature Medicine College of Canada, that considered some 39 trademark applications and registrations containing abbreviations, acronyms and initials and allegedly confusing with certain professional designations. Read more

Books Titles Unregistrable as Trademarks in Canada

In a decision that could significantly impact rights-holders in the media and entertainment industries, the Federal Court has suggested that book titles are, prima facie, not properly registrable as trademarks in Canada.

In Drolet v. Stiftung Gralsbotchaft (2009 FC 17) the court was tasked with considering a range of copyright and trademark issues.  The litigants were all involved in the Grail Message movement—a religious movement centred around a series of writings prepared in Germany in the 1920s and 1930s. The plaintiff sought to expunge the defendant’s Canadian trademark registrations pertaining to the title of a book central to the movement for reasons relating to descriptiveness.

First applying the conventional analysis proscribed under s. 12(1)(b) of the Trade-marks Act (the “Act”) to determine if the mark was “clearly descriptive”, the court concluded the mark did not meet this test, as the title did not convey to a consumer a clear indication of the book’s contents or subject matter.  However, writing for the court Mr. Justice de Montigny went on to assert: Read more

GLAMOUR’s Appeal Denied

The Federal Court of Appeal has dismissed an appeal by Advance Magazine Publishers Inc. with respect to the Federal Court’s earlier finding in Advance Magazine Publishers Inc. v. Farelyco Marketing Inc.  As readers of this blog may recall from our earlier post on this topic, the Federal Court had found no likelihood of confusion between the Farleyco mark GHOULISH GLAMOUR for Halloween cosmetics and eyelash accessories and the Advance mark GLAMOUR used in association with magazines and related products and services.

The Federal Court of Appeal agreed with the finding of the lower court judge that there was “no factual foundation for the proposition that the appellant has expanded the scope of its GLAMOUR mark by having licensed this mark to third parties”, since the third parties were merely using Advance’s GLAMOUR magazine and website to advertise their own products.

No Trademark Expungement Although Language Describing Wares Outdated

Loro Piana S.P.A. v. Canadian Council of Professional Engineers is a further example of the importance of providing proper evidence in response to a Registrar’s notice requiring evidence of use within the previous three years pursuant to the summary expungement provisions in section 45 of the Trade-marks Act. The Applicant had, in 1989, registered the trademark ING. LORO PIANA & C. for use in association with “textile fabrics, bed covers, blankets, scarves, mufflers, shawls and gloves”. On the basis of the affidavit submitted by the Applicant, the Hearing Officer concluded that use of the mark in association with “textile fabrics” had been shown, but not use in association with the remaining wares.

On appeal to the Federal Court, Trial Division, the Applicant filed further evidence and the Court, applying a standard of correctness, concluded that use of the mark in association with each of the listed wares had been shown. In doing so, the Court was also satisfied that the sale of “stoles” constituted the sales of “mufflers” and that the sale of “bed covers” or “blankets” constituted the sale of “throws”. The Applicant provided evidence explaining its use of the terms.

The Court referred to the 2006 decision of Levi Strauss & Co. v. Canada (Registrar of Trade-marks) which held that a section 45 proceeding is intended to be a simple, expeditious procedure to get rid of “deadwood” and is not intended to be a meticulous verbal analysis and stated, “where the language used to describe a ware has changed with common usage, but the use of the trade-mark has continued, the use of the outmoded word will be allowed to remain”.

The Court was also satisfied that while the use of the trademark deviated slightly from the trademark as registered, the differences were unimportant and would not mislead an unaware purchaser.

Court Considers Colour Marks

Peak Innovations Inc. (the “Applicant”) filed 31 applications to register trademarks for various of its products, namely wood to wood and concrete and masonry connectors, most of which are used in deck building. A competitor, Simpson Strong-Tie Company Inc. (the “Opponent”) filed statements of opposition in respect of all 31 applications.

On appeal, the Federal Court recently considered two of the applications agreeing with the Opposition Board and dismissing the appeals. At issue were a mark for the colour green (Application 1,187,491) and a mark for the colour greyish-green (PANTONE 5635C) (Application 1,205,529), both as applied to fastener brackets, claiming use in association with fastener brackets for attaching deck boards.

The Opponent filed additional evidence on its appeal to the Federal Court, but the Court did not agree there was evidence of third parties in the Canadian marketplace using grey or khaki green on items for purposes that included deck building. Thus, there was no confusion.

The Court also refused to consider the Opponent’s arguments concerning non-distinctiveness, since those allegations were raised for the first time on appeal, and “while a party is open to raise new evidence on appeal, it cannot raise new issues”.

The Court also concluded that the mark was not purely or primarily functional. The Opponent, based on certain statements made during the course of cross-examination, argued that green or greyish coating was added to products primarily to reduce corrosion. However, the Court noted that the coating could be produced in many colours and, following the decision of the Federal Court in Smith, Kline & French Canada Ltd. v. Registrar, concluded that “colour applied to the whole of the visible surface of an object can function as a trademark”.

Trademark Confusion: Possible Future Confusion Not Relevant

In a recent decision of Canada’s Federal Court of Appeal, Masterpiece Inc. v. Alavida Lifestyles Inc. the Appellant sought to expunge the Respondent’s registered trademark MASTERPIECE LIVING pursuant to section 18(1)(a) of the Trade-marks Act alleging that it was unregistrable as of the date of registration because it was confusing with the Appellant’s use of the same mark or similar marks.

Both the Appellant and Respondent operated in the retirement residence industry. The Respondent applied to register MASTERPIECE LIVING on December 1, 2005 on the basis of proposed use and began using the mark in January 2006. The application was granted in March 2007. The Appellant alleged it had used a series of evolving trademarks with the word “Masterpiece” beginning in 2001, and began using MASTERPIECE LIVING either in December 2005 or February 2006, depending on which exhibit was consulted. It applied to register the mark on June 29, 2006, but the application was denied on the basis that the Respondent had already applied to register the mark.

Whether the Respondent’s mark was unregistrable as of the date of registration turned on section 16(3)(a) of the Trade-marks Act which allows an applicant who has filed on the basis of proposed use to secure its registration “unless at the date of filing of the application it was confusing with (a) a trademark that had been previously used in Canada or made known in Canada by another person”. Read more