Hyundai Keeps On Motoring

An update on a battle we previously blogged about: the fight between, in one corner, Hyundai Auto Canada, a division of Hyundai Motor America (“Hyundai Canada”); and in the other corner, Cross Canada Auto Body Supply (West) Limited, Cross Canada Auto Body Supply (Windsor) Limited and AT Pac West Auto Parts Enterprise Ltd. (together, for the sake of brevity, the “Resellers”).

You may recall that in that case, the Resellers were re-selling automotive parts and accessories, including Hyundai automotive parts and accessories, in Canada. The Resellers sought expungement of five Hyundai-related marks in Canada owned by Hyundai Canada, claiming that all of the marks were non-distinctive, and further claiming that three of the marks had been abandoned.

(This central action spawned several others: in one, Hyundai Canada sought – though ultimately failed to obtain – an injunction to preclude the Resellers’ use of the Hyundai-related marks on the automotive parts packaging they offered for sale.  Other related actions included disagreements over the production of documents, and the appropriateness of photocopying and other charges.) Read more

Liberals Settle Green Shift Trademark Dispute

In an update to our previous posts on this topic, the federal Liberal party has apparently settled the dispute surrounding its use of the mark THE GREEN SHIFT, just in time for this fall’s recently called election race to begin in earnest. According to a story in the Canadian Press and the Liberals’ own website, the Liberals have reached an out of court settlement with Green Shift Inc., whereby the Liberals now have a license to use the mark THE GREEN SHIFT in association with their environmental policy. As is typical in such matters, terms of the settlement were not made public.

Green Shift Trademark Battle Steps Up

In an update to an earlier post, the battle between the Liberal Party of Canada and Green Shift Inc., over the trademark GREEN SHIFT, continues, with the Liberals having recently filed their Statement of Defence in the Court case.

In a Vancouver Sun story, the Liberals claim they never intended to intended or desired to trade off any reputation or goodwill established by Green Shift Inc. Green Shift Inc. owner Jennifer Wright disagrees strongly, citing the receipt by her company of numerous emails apparently intended for the Liberal party, seeking further information about and both panning and praising the proposed initiative, as well as Liberal party members themselves giving out incorrect references to Green Shift Inc.’s website in the House of Commons. Apparently, out of Court settlement discussions are still taking place.

Discovery Questions in Trademark Cases

Adidas AG et al v. 2690942 Canada Inc. c.o.b. Campea will be of interest to litigators. Adidas commenced a claim against Campea alleging infringement of its 3-stripes trademark registration and its copyright registration covering the Euro 2004 logo. Following discoveries, the Federal Court was asked to rule on whether a series of questions required answers.

Prothonotary Morneau applied the six-part test set out in a 1998 decision, Reading & Bates Construction v. Baker Energy Resources Corp. which, stated briefly, requires a consideration of:

  1. the relevance of documents, particularly whether they contain information allowing a party to advance its case;
  2. the scope of the questions;
  3. the relevance of questions in relation to the facts plead;
  4. whether the questions advance a party’s legal position;
  5. the usefulness of the information sought relative to the time and expense of obtaining it; and
  6. the avoidance of fishing expeditions

Read more

Applicant Fails to Prove Damages

The recent Federal Trial Court decision of Pharmacommunications Holdings Inc. v. Avencia International Inc. (“Avencia“) is a reminder to all lawyers that a successful claim requires proof of every element of the applicable legal test.

At issue in Avencia was whether the respondent’s trademark, PHARMACOMM, caused, or was likely to cause, confusion with the applicant’s trademark, PHARMACOMMUNICATION. Both companies provided marketing services to the pharmaceutical industry, although the degree of overlap was not agreed on. The applicant relied on s. 7(b) of the Trade-marks Act, which prohibits a person from directing “public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another.”

The applicant sought various relief, including a declaration, a permanent injunction and delivery up of all infringing materials. The applicant focused its submissions on the issue of confusion. The respondent denied any confusion and also argued that a trademark holder cannot appropriate descriptive words, even by combining two words together. Read more

Damages for Counterfeit Goods – Another Significant Award

We previously reported on the Federal Court case Louis Vuitton Malletier S.A. et al. v. Yang et al. (“Yang”). Louis Vuitton was back in court in June, but this time the venue was the British Columbia Supreme Court. In Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd., Louis Vuitton proceeded by way of a summary trial under British Columbia’s Rule 18A, seeking judgment against a number of defendants for trademark and copyright infringement.

In 2004, Louis Vuitton had executed an Anton Pillar Order against the defendants. In 2005, Louis Vuitton obtained a Federal Court order against the defendants and entered into a settlement agreement in 2006, whereby the defendants pledged to Louis Vuitton that they would not sell any more counterfeit merchandise.

There were four individual defendants and two corporate defendants. The principal of the enterprise was Wynnie Lee (“W. Lee”). W. Lee’s daughter, Francisca Hung-Yee Ngan (“Ngan”), W. Lee’s sister, Jacqueline Lee (“J. Lee”), and a former employee, Lisa Le Dung Tran (“Tran”) were co-defendants. W. Lee and J. Lee carried on business through W. Lee Corporation and J. Lee Corporation, respectively. However, the Court found that the corporations could not be used as a shield, because W. Lee’s and J. Lee’s actions constituted willful and deliberate infringement. Read more

Liberals’ Shift To Green Hits Trademark Roadblock

Canada’s federal Liberal Party, the official opposition to the ruling Conservatives, has been sued by a Toronto environmental consulting and supply company called Green Shift Inc. for alleged misappropriation of that company’s corporate name and trademark, GREEN SHIFT. CBC is reporting that the owner of Green Shift Inc. registered the company name in 2001 and is seeking $8.5 million for “general and special damages” and a further $250,000 for aggravated and punitive damages. The lawsuit also seeks a Court injunction to stop the Liberals from using or displaying the words “Green Shift” or any other trademark or domain name that is similar to that used by Green Shift Inc.

Under leader Stephane Dion, the Liberals have made environmental issues a major thrust of their platform for the next election, which "pursuant to fixed date election legislation" will be held on or before October 19, 2009. As a part of their initiative, the Liberals recently launched “The Green Shift”, the details of which are set out at the website www.thegreenshift.ca

Green Shift Inc. claims that it provides consulting services to different governments across Canada, and that in order to continue doing so it needs to be seen as neutral in its political affiliations. The company claims that the Liberals’ adoption of the words “Green Shift” is its causing clients, potential clients and the general public to erroneously conclude that the company has aligned itself with the Liberal party. Read more