Red Cross Lawsuit Settled

In an earlier post discussing the protection of the Red Crystal in Canada, we noted that the American arm of the Red Cross movement had been sued by Johnson & Johnson over its licensing of the iconic red cross emblem to for-profit companies for use on commercial products.

In a pair of court decisions–one released last November and in a second released in in mid-May–the court dismissed the bulk of Johnson & Johnson’s claims that the American Red Cross could not use the symbol in commercially competitive activities.

On Tuesday, the parties announced that they had settled the outstanding matters in their dispute. Though the terms of settlement were not released, both the American Red Cross and Johnson & Johnson will continue to use the emblem in conjunction with their endeavors.

New .CA Whois Policy Now In Place – With A Twist

In a recent post, we reviewed the pending changes to the .CA Whois policy. On June 10, 2008, those changes were implemented. The biggest change is the cloaking of most of the Whois information for individual registrants, regardless of whether the domain names of such registrants are being used for commercial, unlawful or other purposes. In response to concerns of both law enforcement officials and the owners of intellectual property rights, CIRA has also implemented special procedures to permit the disclosure of personal information about individual .CA Registrants, provided various requirements are met.

For intellectual property owners, those requirements are numerous, including that the Requestor must have a good faith “Dispute” (as defined) in process with the Registrant, the Requestor must agree to provide CIRA with whatever supporting documentation CIRA may require from time to time, the Requestor must have attempted to send a message to the Registrant through the Interested Party Contact Procedure no less than 14 days prior to this request with no resolution of the Dispute.

The term “Dispute” is exhaustively defined and requires that a Requestor reasonably believe in good faith that a Registrant’s domain name and/or its content (presumably this reference to content is to content of a website that the domain name in question links to, rather than the content of the domain name itself) infringes the Requestor’s registered Canadian trademark, copyright or patent or registered Canadian (Federal or Provincial) corporate, business or trade name. A Dispute can also involve the use of the Requestor’s personal information without their knowledge or consent to commit identity theft.

From “Hockey Night” to Trademark Fight?

Much has been written in the Canadian popular press in the last week respecting “The Hockey Night in Canada Theme”, sometimes called “The Hockey Theme” – the familiar music which has accompanied broadcasts of the Canadian Broadcasting Corporation’s “Hockey Night in Canada” telecasts nearly every Saturday night during the hockey season, for the last 39 years. The music is well-known to most Canadians, hockey-lovers or not: it is frequently referred to “Canada’s Second National Anthem.”

Late last week, it appeared that negotiations to renew the recently expired license agreement between the CBC and Copyright Music and Visuals (agent for the rights-holder, Dolores Claman) fell through: Copyright Music and Visuals announced the CBC had elected not to renew their license, ending their long relationship with Claman. The popular press quickly picked up on the news: articles bemoaning the end of the long and storied history of the song on the CBC filled the weekend papers; hockey fans on radio call-in shows and on the internet grieved the loss of the song; Facebook groups were organized to prepare petitions for the “Preservation of the Hockey Night in Canada Theme”.

With a new week, came new hopes: on Monday morning, the CBC announced it had appointed a well-known entertainment lawyer to assist it in making a deal for a new licensing arrangement. Then, in a somewhat surprising move, rival network CTV (owner of the popular TSN and RDS sports stations) announced it had “saved” the song, completing a deal that, according to press reports, gives it the right to use the song “in perpetuity” in association with its NHL hockey broadcasts, as well as in association with its hockey coverage as part of the 2010 Olympics and Paralympic Winter Games. Read more

Motion For Particulars: Part of a Larger Trademark Battle

A Federal Court decision on a procedural point is apparently just one more step in a larger legal battle, according to an article entitled “Despite lawsuit, restaurateur tries again under a new name, familiar format” in the March 29, 2008 edition of the The Globe and Mail.

In Mövenpick-Holding v. Inter Management Services Limited et al. the Federal Court judge agreed with the prothonotary’s decision dismissing the Plaintiff’s, Mövenpick-Holding’s, motion for particulars and to strike certain paragraphs of the defence and counterclaim, noting that a discretionary order of a prothonotary ought not to be disturbed on appeal unless it is clearly wrong, having been based on a wrong principle or misapprehension of the facts.

Mövenpick-Holding brought the action alleging violation of its MARCHÉ trademarks covering restaurant services after the Defendant company and its principles, the Reicherts, opened a restaurant under the name and trademark, INNISFIL HEIGHTS MARCHE, set up like a “marché” or market, where customers visited various food stations, a system allegedly similar to the Plaintiff’s. Read more

Trademark Confusion or Chalk and Cheese

As the owner of a HÖRST brand shirt and a cyclist, I might be inclined to think there is a connection between HÖRST shirts and HORST WATERPROOF cycling bags. But I would fail to realize that HÖRST is a common German name and that I may not be a typical Canadian consumer.

A recent Québec case, Octeau et al v. Kempter Marketing Inc., illustrates that identical or similar names do not necessarily mean there is infringement, absent use in association with similar wares and for a similar purpose.

The Plaintiff had three registered Canadian trademarks, HÖRST DÜSSELDORF & Design, CULT HÖRST and H HÖRST & Design, for use in association with an extensive line of clothing. The Defendant manufactured and distributed sporting goods, including high-end cycling and ski products and introduced the HORST WATERPROOF, a waterproof cycling bag named in honour of Horst Kempter, the founder of the company.

The judge noted that there was no attempt by the Plaintiff to prove the Defendant was selling any product “comparable in either style, nature or purpose” to the Plaintiffs’ products. He also pointed out the absence of any evidence that the Defendant sold any product resembling a product produced and sold by the Plaintiff. There was also no evidence of any person drawing a connection between the Plaintiffs’ and the Defendant’s businesses.

The judge reviewed the test for confusion, noting the discussion in Mattel, Inc. v. 3894207 Canada Inc. (the Barbie case) that trademark law affords protection that transcends the traditional product lines, but the issue is whether confusion arises.

What the Plaintiff failed to prove was confusion. In Veuve Cliquot Ponsardin et al v. Boutiques Cliquot Ltée et al Justice Binnie concluded that “luxury champagne and mid-priced women’s wear are as different as chalk and cheese”, a comparison that also applies to HÖRST shirts and HORST WATERPROOF cycling bags.

Round 2 Won By Scotch Whisky Association

As a follow up to earlier postings on the ongoing battle between the Scotch Whisky Association (the “Association”) and the Canadian distillers of GLEN BRETON single malt whisky, the Association is reporting today that it has won its appeal to the Federal Court of Canada.

The Trade-marks Opposition Board denied the Association’s opposition to the application by Glenora Distilleries of Nova Scotia to register the mark GLEN BRETON, on the basis that, in the Opposition Board’s view, Canadians would not be confused by the use of the word GLEN in the mark, such that they would think they were purchasing Scotch Whisky. The Association appealed that decision to the Federal Court.

During the appeal, the Association produced evidence that GLEN BRETON was misdescribed in various retail outlets, newspaper articles, pricelists, menus and websites as a Scotch Whisky and the Federal Court agreed with its submissions that Canadian consumers would likely be confused that they were purchasing a Scotch Whisky when that was not the case.

Stay tuned for Round 3 of this battle, as CBC reports that Glenora Distilleries is already planning to file an appeal of the Federal Court decision.

Opposition and Expungement Proceeding Info Added to CIPO’s Online Database

Following up on an announcement we told you about a few weeks ago, the Canadian Intellectual Property Office has now added information respecting pending trademark opposition and Section 45 (summary expungement) proceedings to its online database.

Working with the information over the last several days, our experience has been that it is a little out of date, relative to the actual status of proceedings. Nonetheless, CIPO’s decision to enhance public access to this information will be beneficial to trademark owners, brand advisors, and their counsel.