The Need for Proper Evidence of Trademark Use

A previous blog commented on the importance of proper evidence of use when the registered owner of a Canadian trademark is faced with a potential expungement pursuant to section 45 of the Trade-marks Act.

Curb v. Smart & Biggar, on appeal to the Federal Court from a decision of the Registrar is a further illustration.  Mike Curb, a well-known American record producer was the registered owner of CURB RECORDS for use in association with wares described as “audio and audio-visual recordings; printed materials, namely posters; clothing, namely t-shirts and caps” and services described as “entertainment services provided by pre-recorded and live music; and the production, publishing and distribution of audio and audio-visual recordings”.  On the basis of the Affidavit evidence filed by the Senior Vice-President of Curb Records, the Registrar concluded there was use in association with audio and audio-visual recordings, but insufficient evidence of use in association with the other wares and all the services during the three years preceding the section 45 request. Read more

Trademark Damages Following Termination of Franchise

The British Columbia Supreme Court recently considered the right to damages for the improper use of a trademark following the termination of a franchise agreement. In Fruiticana Produce Ltd. v. 575760 B.C. Ltd. et al., after determining that certain amounts remained unpaid under the  terms of a franchise agreement, the Court also concluded that the franchise agreement had been terminated and the defendants continued to use the trademark FRUITCANA for a period of time following the termination. Nominal damages were calculated on the basis of the formula set out in Louis Vuitton Mulletier S.A. v. 486353 B.C. Ltd. and the Plaintiff awarded $12,000. A permanent injunction was also granted.

Copyright? Wrong! Oshawa Councillor Misses the “Mark”

An Oshawa, Ontario Regional Councillor, Robert Lutczyk, recently made a brazen attempt to claim copyright in the name “University of Ontario Institute of Technology”. Lutczyk registered copyright in the name of the University and then tried to use his registration to prevent the publication "Oshawa This Week" from using the name in an article, threatening legal action if they did not comply. Lutczyk’s attempt to assert copyright appears wrong on several points.

First, there is no copyright in a name. Copyright in Canada is governed by the Copyright Act and arises in literary, artistic, dramatic and musical works. A name, without more, does not fall under the definition of a work. Read more

Dead Frog in a Clear Bottle Leaves Sleeman Seeing Red

Sleeman Breweries has reportedly filed a lawsuit against Dead Frog Brewery over Dead Frog’s use of a clear glass bottle design, in association with its beer. Sleeman is the third largest brewery in Canada; Dead Frog is a small and relatively new enterprise located in Aldergrove, BC. Invoking references to the classic David v. Goliath story, the President of Dead Frog has stated that the lawsuit is a silly waste of time, that there are many similar clear glass bottles on the market, and that the raised glass frog design on his bottles makes his products distinctive from those of Sleeman.

For its part, Sleeman will likely rely on its Canadian Trademark Registration for a distinguishing guise. A distinguishing guise is a type of trade-mark that is a distinctive shaping of goods or their containers or a mode of packaging or wrapping such goods.  To obtain a registration for a distinguishing guise in Canada, an applicant must prove that the distinguishing guise is, in fact, distinctive of the applicant’s wares in Canada. This normally requires proof of significant sales and advertising in every region of the country over an extended period of time. Read more

The Perils of Insufficient Evidence in Trademark Cases

Whatever the advantages of not submitting certain evidence, such as expediency, complexity, or risk of ambiguity, the Federal Court of Appeal decision, Shell Canada Limited v. P.T. Sari Incofood Corporation demonstrates the significant risk of this course of action.

Shell Canada opposed the registration of JAVACAFE in relation to coffee products, arguing that it was not distinctive, but rather descriptive of the geographical source of the coffee products. Submitting various evidence regarding the definitions of the component words, the parties curiously omitted any evidence regarding the meaning of the word java in French. Noting this omission, the Registrar looked up the word in a 1968 edition of Larouse, discovered that it meant a type of dance, and concluded that Shell’s evidence fell short of its contention that a Canadian Francophone would associate JAVACAFE with coffee from the island of Java. Read more

Comparing Apple to Apple

A report in the Globe and Mail tells the story of a small Vancouver Island school’s run in with tech heavyweight Apple Inc. in a dispute over the use of the school’s logo. Victoria School of Business and Technology (VSBT) reportedly adopted, three years ago, a logo featuring an apple with a silhouette of a mountain and the letters VSBT superimposed over top. VSBT’s apple has three bumps at the top of the apple, uses the colours blue, white and green quite prominently, and the apple is whole: no bite appears to have been taken out of it, as is the case with Apple Inc.’s well known logo. Apple’s logo, which is the subject of numerous registrations at the Canadian Intellectual Property Office (CIPO) and which has been in use for over 30 years, features a bite taken out of the right side, two bumps at the top and no letters or other figures superimposed on it. In the marketplace, the logo is often depicted in an off-white colour; historically, it also often appeared in stripes and other colours as well.

As is often the case in these disputes, the media is portraying the issue as pitting VSBT’s “David” against Apple’s “Goliath.” The school’s website states that “VSBT is the leading provider of computer and business training for government ministries, corporation and individuals,” and indicates that training is available on both IBM-style personal computers as well as Apple’s MACINTOSH-brand computer systems. At the time of writing, we could locate no record in CIPO’s online trademark database of an application to register VSBT’s logo. Read more

Latest Olympics Trademark Dust Up Is Of Anthemic Proportions

A Canadian Press Story today reports that the Vancouver Organizing Committee for the 2010 Winter Olympic Games (VANOC) has recently filed applications with the Canadian Intellectual Property Office (CIPO) to register the phrases WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as trademarks. These applications are filed based on proposed use in Canada in association with a lengthy shopping list of goods and services. They also claim priority from earlier filed European Community Trademark (CTM) applications, filed with the Office for Harmonization in the Internal Market (OHIM) in March of 2008. Interestingly, the CTM applications are filed in the name of Filemot Technology Law Ltd. and not VANOC.

Canadian readers will immediately recognize WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as phrases from “O Canada”, the Canadian national anthem. Copyright buffs out there might already know that the anthem was long ago placed in the public domain by the Government of Canada pursuant to the National Anthem Act. Read more