Protection & Enforcement

Trademark Interlocutory Injunction Denied

By In Case Law, Protection & Enforcement, Trademark Oppositions

A recent decision of the Saskatchewan Court of Appeal, setting aside the interlocutory injunction granted by the Chambers judge, illustrates how difficult it is to obtain an interlocutory injunction absent convincing evidence that satisfies the three part test for an interlocutory injunction.  In Kulyk v. Wildman (Weight Loss Forever Consulting), the Saskatchewan Court of Queen’s Bench granted the plaintiff an interlocutory injunction precluding the defendant from using or carrying on business under the plaintiff’s alleged business name and trademark, “Global Healthcare Connections” and directing the defendant to remove all references to the plaintiff’s mark on social media sources.  In assessing the plaintiff’s application, the Chambers judge looked to Potash Corp. of Saskatchewan Inc. v. Mosaic Potash Esterhazy Limited Partnership which set out the well‑established test for an interlocutory injunction:  

(1) the strength of the plaintiff’s case;

(2) the presence of a meaningful risk of irreparable harm if the injunction is not granted; and,

(3) whether the balance of convenience favours the granting of the injunction. 

The Court of Appeal allowed the appeal and held that the plaintiff’s application for injunctive relief was based on the common law tort of passing off, which in turn, required evidence of goodwill, deception of the public due to misrepresentation, and actual or potential damage to the plaintiff.  The Court stated that the plaintiff’s case was weak because she failed to put forth any evidence to establish the existence of goodwill associated with the name Global Healthcare Connections.  The plaintiff’s affidavit referred to various steps she had taken to launch her business, but it also stated that she had had difficulty launching her business because of the defendant’s actions.  Thus, there was no evidence that the plaintiff or her services were known in the market.

The Court found it unnecessary to assess the remaining elements of the common law tort, although it did comment on these.  With respect to the element of irreparable harm, the Court disagreed with the Chambers judge’s finding that the plaintiff had suffered loss of business, finding instead, that the similarity between the names used by the parties would likely result in a benefit rather than harm to the plaintiff’s business.  Noting that a balance of convenience analysis could be “compendious”, the Court was satisfied that the balance of convenience also favoured the defendant, given the weakness of the plaintiff’s case and given that irreparable harm favoured the defendant.  Thus, the Chambers judge’s decision could not stand.

Injunction for Trademark Infringement: Québec

By In Branding, Case Law, Protection & Enforcement, Uncategorized

In Solutions Abilis Inc. v. Groupe Alithis Inc., the Québec Superior Court granted the plaintiff an interlocutory injunction precluding the defendant from using ALITHIS as part of its corporate name or trade name or as a trademark.  The test for an interlocutory injunction in Québec turns on whether the rights which the plaintiff invokes are clear, doubtful or non-existent.  If those rights are clear an injunction should be granted if serious harm would otherwise result.  If those rights are doubtful the court must also consider the balance of convenience.  This test is similar, although not identical, to the test used in the common law provinces where the courts must consider whether there is a serious issue to be tried, irreparable harm and the balance of conclusive irreparable harm. 

After setting out the test the Court then considered the plaintiff’s trademark rights, starting from the premise that trademarks are a guarantee of origin and intended to protect the public by indicating the source of the goods and services.  The Court then focused on whether there was confusion, finding that the plaintiff’s marks,

 abilis it           abilis ti

were inherently distinctive, since the included word, ABILIS, was a coined term with 3 syllables that created a strong sonority – “ab-il-is” and because of the use and position of the “it” and “ti” symbols in the marks.  The defendant’s mark,

alithis

 also used 3 syllables and a symbol.

The length of time also favoured the plaintiff and the nature of the trade was similar, namely computer consulting services.  The Court was not willing to accept the defendants’ argument that persons purchasing computer services would take time to determine the source, noting that initial interest confusion was sufficient and might, among other things, result in the plaintiff not being invited to bid for a potential customer’s work.  The Court was also convinced there was a sufficient degree of resemblance, referencing a number of Québec cases where the degree of resemblance led to a finding of confusion even where the goods or services were different. 

Since the likelihood of confusion was clear, a loss of goodwill and clientele were presumed and therefore the injunction was granted.  A decision regarding the balance of convenience was not necessary, but the Court noted, in the event of an appeal, that it favoured the plaintiff, particularly given the shorter period of time the defendants had been in the market.

Punitive Damages: Trademark and Copyright Infringement

By In Branding, Counterfeit goods, Famous Marks, Foreign Protection, Protection & Enforcement

The most recent case from the Federal Court continues the Court’s tough stance with respect to trademark and copyright infringement in Canada. 

In Harley-Davidson Motor Co. Group LLC v. Manoukian, the Court awarded significant compensatory and punitive damages against the Defendant company and its principal.

The Plaintiffs, H-D Michigan, LLC (“MI”), Harley-Davidson Motor Company Group, LLC (“MCG”) and Harley-Davidson Company, Inc. (“MCI”), hired an investigator to conduct an investigation into the alleged manufacture, offering for sale and sale of counterfeit Harley-Davidson clothing by the Defendants.  The investigator attended two separate locations of the Defendants.  While in attendance at both locations, the investigator was shown and purchased a number of counterfeit items including t-shirts, cloth and leather jackets and hooded sweatshirts, all of which contained unauthorised productions of the Harley-Davidson trademarks.

The Court was satisfied the matter could proceed on a motion for summary judgment.  In determining the damage award, the Court noted that where Defendants provide no records to substantiate the manufacture and sale of counterfeit wares, it is difficult to assess damages.  However, in these circumstances, the Court will apply a minimum compensatory damage award on a per infringing activity basis.

Following such cases as Ragdoll Productions (UK) Ltd v. Jane Doe and Oakley Inc. v. Jane Doe, the Court awarded damages for trademark infringement of $3,625 for each of the three occasions on which the Defendant was observed selling counterfeit goods at a flea market and $7,250 for each of the two occasions on which the Defendant was observed selling wares from a fixed retail establishment.  As the Plaintiffs were seeking damages on behalf of the trademark owner, MI, and the licensee/distributor, MCI/Fred Deeley, these amounts were doubled for a total of $65,250, payable jointly and severally by the Defendants.

In addition, although the Defendants’ lack of records made an accurate assessment of profits impossible, the Court found that the Plaintiffs were entitled to punitive damages of $50,000 to sanction the “blatant disregard” of the law by the Defendant.  In awarding the punitive damages, the Court noted that the Defendants had been offering for sale and selling counterfeit Harley-Davidson merchandise since as early as October 2006, and continued to do so despite the cease and desist letter served on the Defendants in 2010.  The Court also noted that there was evidence that the Defendant Manoukian, was well aware of the illegal nature of his trade.

The Court refused to award solicitor-client costs, since the evidence that the Defendants had missed a number of deadlines was not the kind of conduct attracting solicitor-client costs.  Further, the Defendants’ unjustifiable and inexcusable violation of the Plaintiff’s rights was covered by the punitive damages.

An Interplay of Canadian Official Marks and Canadian Trademarks

By In Protection & Enforcement, Registration

A February 2010 blog, “Professional Designations and Abbreviations, Acronyms and Initials” discussed the summary judgment and permanent injunction obtained by the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (“the College”) against the Council of Natural Medicine College of Canada (“the Council”) pursuant to which certain trademarks which the Council had registered, such D.C.T.M (DOCTOR OF TRADITIONAL CHINESE MEDICINE) and REGISTERED D.P.C.M, were expunged on the basis that the marks were clearly descriptive or deceptively misdescriptive (contrary to s.12(1)(b) of the Trade-Marks Act) and recognised in Canada as designating the services of doctors of Traditional Chinese Medicine and acupuncturists (and therefore contrary to s.10).  The Council was also enjoined from registering similar trademarks.  The Council appealed this decision, but subsequently discontinued the appeal.

The Council did, however, bring an application for judicial review asking the Federal Court to set aside the notice given by the Registrar of Trade-marks of the adoption and use by the College of various official marks, including D.C.T.M (DOCTOR OF TRADITIONAL CHINESE MEDICINE) and REGISTERED D.P.C.M.  Section 9(1)(n)iii) grants protection to “any public authority” in Canada that adopts and uses a mark and in respect of which the Registrar of Trade-marks has given notice.  In Council of Natural Medicine College of Canada v. College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia the Federal Court concluded that the official marks were valid and that section 9(1)(n)(iii) was constitutional.

As explained in the decision, the Council is a private non-profit company incorporated under federal legislation which created educational programs in traditional Chinese medicine.  The courses were offered by affiliated private schools.  Prior to the earlier Federal Court decision the Council also entered into trademark licence agreements with the graduates of its programs.  The College, however, had been established under the British Columbia Health Professions Act to regulate the practice of traditional Chinese medicine, including the titles that could be used by practitioners.  Read more

Significant Amendments to Canada’s Trade-marks Act Closer To Reality

By In Counterfeit goods, Legislation, Protection & Enforcement

Canada’s federal Government introduced Bill C-56 on March 1, 2013 – the Combating Counterfeit Products Act.   The primary focus of this Bill is to improve the ability of copyright and trade-mark owners to combat the manufacture, importation, sale and distribution of counterfeit goods in Canada. 

 While the primary focus of the Bill is on counterfeit goods, the Bill calls for amendments to both the Copyright Act and the Trade-marks Act that will have effects beyond counterfeiting. 

Should this Bill go through as is, the changes to the Trade-marks Act (the “Act”) include the following: 

–         “Wares” will become “goods” and the definition of a “distinguishing guise” will be repealed

–          “distinctive” in relation to a trademark will describe a trademark that actually distinguishes or that is inherently capable of distinguishing the goods and services of the trademark’s owner from those of others

–          The references to “mark(s)” throughout the Act will now be references to a “sign or combination of signs”

–          “sign” will include a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign

–          A trademark will not be registrable if its features are dictated primarily by a utilitarian function (codifying recent case law)

–          In order to make a priority filing date claim, an applicant will no longer be required to have a real and effective industrial or commercial establishment in the country where the first application to register the trademark was filed. 

–          A Counterstatement to a Statement of Opposition will only need to state that the applicant intends to respond to the opposition.

–          It will be made clear that the Trade-marks Opposition Board can, in applicable circumstances, refuse some goods/services and let the remainder of the goods/services through to Registration, when dealing with Opposition proceedings

–          Divisional applications will be permitted, as well as mergers of registrations that stem from an original application that was divided

–         Applications for proposed certification marks will be permitted

–          The Bill contains many provisions relating to offences arising out of manufacturing, sale, possession, importation, distribution, and the like of counterfeit goods, labels and packaging, with fines of up to $1,000,000 or imprisonment for up to 5 years, if convicted on indictment.  There are also a number of provisions dealing with detention and destruction of infringing goods

There are, unfortunately, a number of  other provisions in the Act that could have been modified, deleted or clarified, which this Bill does not currently deal with.  Time will tell what changes are made to this Bill as it proceeds through the legislative process, with input from various committees and special interest groups.

Bodum Gets French Pressed by Federal Court In Trademark Dispute

By In Case Law, Protection & Enforcement, Registration

Canada’s Federal Court has recently handed Bodum USA, Inc. (Bodum) another loss in its ongoing fight to enforce its trademark and other intellectual property rights in this country.  In the most recent decision, the Court has found that the Canadian Registration for the trademark FRENCH PRESS is invalid and unenforceable.  This Registration is owned by Pi Design AG (Pi), a related entity to Bodum and the licensor of the mark to Bodum in Canada and covers wares described as non-electric coffee makers.

As a result,  Bodum’s infringement claims against Meyer Housewares Canada Inc. (Meyer) over its use of the FRENCH PRESS mark have been dismissed.  Even worse for Bodum, the Registration for FRENCH PRESS has been ordered expunged on the grounds that it should never have been issued in the first place and even if it was properly registered, that Registration is now invalid on the basis that the mark is descriptive and not distinctive of Bodum as the sole source of the goods that this mark is registered in association with.

When assessing the evidence presented by the parties, the Court found that the term “French Press” was already in widespread use in North America as a generic term describing a popular type of coffee making device in 1995, which Pi was aware of when it sought to register the mark in Canada and thereby claim exclusive rights to the mark.  The Registration for this mark issued in 1997.

Read more

RIM Wins Right To Continue Using BBM Trademark

By In Case Law, Protection & Enforcement

Research in Motion Ltd. received some good news late last week, in the form of a Federal Court of Canada ruling that allows it to keep the BBM trademark for its popular messenger service.  BBM Canada, a Canadian television and radio research firm  that has been using the BBM mark for 60 years, commenced infringement proceedings on the basis that RIM’s use of the BBM mark  confused the public.  The Court disagreed, ruling that RIM’s use of the mark could peacefully co-exist with BBM’s use, which the Court said extended only to the field of broadcast measurement services.  News reports on the decisions suggest that BBM will appeal the decision.