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

VANOC Gets Sour Taste From Lululemon

Vancouver based yoga wear retailing phenom Lululemon Atletica has tweaked the nose of the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Games (VANOC), with a new line of clothing. A story yesterday reported that Lululemon has introduced a new line of clothing named “Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition”. VANOC reportedly is upset that Lululemon has only complied with the letter and not the spirit of the laws in Canada that protect the various trademarks used to promote the Olympic Games generally, and the Vancouver 2010 Winter Olympic and Paralympic Games specifically.

The clothing line in question features various items in the national colours of Canada, the U.S., Sweden and Germany. Notably, the Canadian hoodies feature gold zippers while the zippers in the colours of other countries have silver zippers. Lululemon lost out to the Hudson’s Bay Company in its bid to be the official apparel supplier to the Canadian Olympic team for the Summer and Winter Games during the period from 2006 to 2012.

Readers of the Knowledge Bytes newsletter will be aware of the legislative hammers that are at VANOC’s disposal to enforce its trademark rights against both would-be infringers and ambush marketers alike. These include the Olympic and Paralympic Marks Act, which contains lists of specific words that either can’t be used at all, or that can’t be used in combination with other specific words–for example the combination of “Vancouver” and “2010”. Read more

Proving a Trademark Licence

3082833 Nova Scotia Company v. Lang Michener LLP and Registrar of Trade-marks illustrates the importance of providing evidence of any licences in place when confronted with a summary expungement under section 45 of the Trademarks Act:  an evidentiary burden that is not difficult to meet.

3082833 Nova Scotia Company (“3082”) owned the registered mark ENTRE NOUS for use in association with “telecommunication services, namely long distrance telephone services”.  The mark was originally owned and used by 3362426 Canada Inc. (“3362”) carrying on business as Primus Telecommunications Canada Inc. (“PTC”).  3082 acquired the mark in the course of a reorganization and the mark was used by PTC, which had become 3082’s wholly owned subsidiary.

In response to a section 45 summary expungement, 3082 put forward invoices issued by PTC as evidence of use, but the Registrar concluded that they only referred to “Primus Canada” and there was no evidence that 3362 or 3082 had used the mark and no evidence of a licence. Read more

BTO Members Taking Care of Legal Business

Fans of the 70’s Canadian super group, Bachman Turner Overdrive (also commonly known as BTO), may have noted the report of a legal dispute between current and former band members over the rights to the band’s trademarks.  The mark BACHMAN-TURNER OVERDRIVE  is the subject of two registrations in the Canadian Intellectual Property Office and there are several pending applications for similar marks. 

While disputes between ex-band mates are not unusual, this one has an added twist in that it pits one brother (Randy Bachman, widely considered the most talented member) versus another (Robbie).

While this appears to be primarily a contractual dispute, the trademark issues are front and centre and serve to highlight the value of branding to musical groups, both during their heydey and into later years when remaining members (and often non-members) continue to live off the avails of a group’s prior glories.

Perhaps one day someone will turn this family feud into a Broadway musical – “Peg Boys” might be a nice nod to the Winnipeg roots of the band.

Counterfeit Goods: Statutory and Punitive Damages

Microsoft Corporation v. 1276916 Ontario Ltd. et al is not a trademark case.   However, it is a further illustration of Canadian courts’ willingness to award substantial statutory damages under the Copyright Act, together with punitive damages, in counterfeit goods cases.

In this case Microsoft had received ten reports of software privacy.  An investigator attended the Mississauga, Ontario store operated by the defendant numbered company and was offered a computer system with unlicensed software.  A cease and desist letter was sent, but Microsoft continued to receive piracy reports.  An investigator subsequently bought a computer system with various unauthorized software loaded on it and Microsoft commenced the action.  The action was initially defended by the defendant numbered company and its owner, but the defence was struck out after the owner failed to attend discoveries, alleged the store was out of business, when it was not, and failed to appoint new counsel.

Microsoft applied for default judgment. Read more

More Beer Brand Wars

You can tell that it’s Fall up here in the Great White North.  The weather is turning cooler, the NHL preseason is in full swing and another trademark battle between Canadian brewery icons Molson and Labatts has started. 

A recent report indicates that Molson Coors Brewing Company has launched a lawsuit in Canada’s Federal Court against Labatt Breweries of Canada, claiming that the mountain imagery in new ads for Labatt Kokanee beer infringes the copyrighted images that Molson uses on its Coors Light beer products in Canada.  Molson is reportedly seeking $10 million in damages.

For its part, Labatts says that mountain imagery has been part of its branding for four decades and that the new graphics feature the same Kokanee Glacier that the beer is named after.

Limey! Another Beer Battle a-Brewing

News today that another battle is brewing in Canada’s notoriously litigious beer industry: Waterloo’s Brick Brewing Co. Ltd.–makers of Canadian beer brands Laker, Formosa, Red Cap, Red Baron and Waterloo–has been sued by Anheuser-Busch Co. and Labatt Brewing Co. over its labels for its Red Baron Lime beer product.

In the suit filed August 28 in Federal Court, Anheuser and Labatt take umbrage with the promotional material for Brick’s Red Baron Lime product.  In particular, they allege the labeling scheme used on Red Baron Lime products, including the use of the colours silver and green together with the depiction of a half a lime, will confuse consumers into believing there is a connection with their own Bud Light Lime product, whose label uses the colours green and white together with the depiction of a wedge of lime.

Additionally, Anheuser and Labatt have claimed that Brick’s promotional website for Red Baron Lime–located at lustforlime.com–will lead to consumers to believe there is a connection with the product and the promotional website for Bud Light Lime located at budlightlime.com.  Both sites feature prominent use of the colour green and images of young people in swimsuits. Read more