A Second Chance to Prove Use of a Trademark

Under section 45 of the Trade-marks Act, an applicant, upon receipt of the Registrar’s notice, must provide an affidavit or statutory declaration evidencing use within the previous three years or an acceptable excuse for non-use. In Vêtement Multi-Wear Inc. v. Riches, McKenzie & Herbert LLP, the Applicant failed to provide its attorney with all the information and documents necessary to respond to the section 45 notice and the evidence was not filed in time. Pursuant to section 56, the applicant appealed the Registrar’s determination to expunge the mark, and as allowed under section 56, filed its evidence.

The Court noted that where new evidence (or in this case, the only evidence) is filed on a section 56 appeal, the Federal Court decision is de novo. The Court also noted that the test for “use” under section 45 is not onerous. Thus, the appeal was allowed and the applicant’s trademark, L’AMADEI for use in association with ladies’ clothing, namely skirts, dresses and blouses (but not vests and sweaters) was allowed to remain on the register. The Affidavit evidenced 6 sales to Canadian companies and 10 sales to one American company. The invoices did not use the trademark, but the affidavit explained that the hang tags on the items referenced in the invoices would have used the trademark.

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

Flattery is Still Infringement

A story in the Globe and Mail this week illustrates that the use of a popular logo may be a form of flattery to the owner, but the owner will still be concerned about infringement of its IP rights. Gordon DeRosa, after 21 years of public service, is again running for re-election to the Trail City Council, Trail being a community of 8000 in the interior of British Columbia. Mr. DeRosa’s election signs used the well known Energizer Bunny, and the slogan “Re-elect DeRosa, Still Energized”. The Eveready Battery Company, which owns an extensive trademark portfolio in Canada, sent a cease and desist letter to Mr. DeRosa, advising that the use of the Energizer trademarks constituted violations of the company’s IP rights. Mr. DeRosa has taken down his election signs.

If a lawsuit had ensued it might have been argued that Mr. DeRosa was not using any trademarks in association with wares and services since he was running for political office, but presumably Eveready would have succeeded on the basis of copyright infringement.

CIPO’s Electronic Services Outage

For those of us who have embraced – and perhaps take for granted – the ease and convenience of filing documents online with the Canadian Intellectual Property Office, the last two days have been trying ones. All systems of the Canadian Intellectual Property Office, including the Trademark Database as well as the Online Filing Portal, were offline from late in the afternoon on September 30th, until earlier this morning, October 2nd. (Even now, the site seems a little shaky: pages load properly one minute and are unavailable the next.)

Recently released trade-mark statistics (which we blogged about a few months back) indicate that just over 45,000 applications were filed in the last twelve-month period for which stats are available. Of these, 90% were filed online. Crunching the numbers, that works out to be approximately 110 applications filed online, each day. 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

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

Trademark Use Not to Be Inferred: Section 45

In past blogs, we have discussed various Federal Court decisions made pursuant to section 45 of the Trade-marks Act, which is intended to be a summary and expeditious procedure for cleaning up the trade-mark register of trade-marks that have fallen into disuse.

In Grapha-Holding AG v. Illinois Tool Works Inc. the Federal Court, Trial Division allowed an appeal from the Registrar of Trade-marks, finding that the evidence the Registrar relied upon did not support her conclusion that the trademark in issue had been used during the previous three-year period. Read more