Of London, Lithuania And A Popular Tree

A recent story in the London Free Press shows just how powerful Canadian trade-marks are becoming throughout the world – causing a country half a world away to drop a tree design that it had recently chosen to be the symbol for its latest tourism campaign. A similar tree design is the subject of an Official Mark Request advertised by the Canadian Registrar of Trade-marks at the request of the City of London, Ontario, known primarily, until now, as a centre for the insurance industry in Canada and as a University town. The design appears prominently on the City of London’s website.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

Canucks Unveil New Logo

Only in a Canadian city, would the unveiling of a new logo for the local hockey team be the subject of such anticipation and discussion – particularly as the start of the season is over a month away. Today, before 8,000, yes 8,000 fans inside General Motors Place in downtown Vancouver, on one of the rare sunny and warm days the city has seen this summer, the Canucks finally unveiled their new jerseys to the adoring throngs.

Though nothing is showing up on the Canadian Intellectual Property Office online trade-marks database yet, no doubt, applications to register the new logo as a trade-mark have already been filed at the Canadian Intellectual Property Office.

EcoDensity and the Mayor

An Article in the Vancouver Sun this past weekend raises questions about why the Mayor of the City of Vancouver has applied to register in his own name, the mark ECODENSITY for a housing density initiative that is funded and run by the City. The Mayor indicates in the story that he filed the proposed use application a few days before the initiative was publicly unveiled in order to stop others from doing so.

As the mark was not used by the City at the time the Mayor’s application was filed, the City would have been unable to properly request at that time, that the Registrar give public notice of the City’s adoption and use, as a public authority, of the mark as an Official Mark, pursuant to Section 9 of the Trade-marks Act. Official Mark requests are commonly submitted by all levels of government in Canada, including the City of Vancouver itself, to protect what they consider to be their proprietary marks.

An alternative to filing an application in the Mayor’s own name, would have been to file the proposed use application in the name of the City, as such an application doesn’t require prior adoption and use by the City. It’s also not clear why, now that the City has publicly started promoting its EcoDensity Plan, it has not submitted an Official Mark Request to the Registrar.

In a follow up story today, the Vancouver Sun reports that Vision Vancouver, the opposition civic party, will request an extension of time to oppose the Mayor’s application on or before the deadline to do so.

Establishing a Trademark’s Distinctiveness: Recent Case Law

In Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai Motor America, the Applicant (the reseller of automotive parts and accessories and the Defendant in an ongoing trademark action brought by the Respondent) sought to expunge five of the Respondent’s trademark registrations: HD Design, HD & HYUNDAI Design, HMC Design, HYUNDAI and SONATA. In 1985 the Respondent’s parent company had assigned three of the marks to the Respondent’s predecessor, which in turn assigned the marks to the Respondents, in 1996, but the assignment was only registered in August 2004. The other two marks were assigned to the Respondent in September 2004.

The Applicant argued that the marks were not distinctive of the Respondent, the relevant date for determining distinctiveness in this case being the date the expungement action was commenced, because the the consuming public was not advised during the 1985 -2004 period of the change in ownership.

The Court noted that distinctiveness is the cardinal requirement of a trademark and it is a question of fact whether a clear message has been given to the public that the wares associated with the mark are those of the trademark owner and not those of another party. Relying on survey evidence, the Court concluded that the purchasing public was not confused about the source of the wares and always understood the Respondent to be the source of the vehicles, even though they were sold through dealers.

Moreover, since 1985 the Respondent and its predecessor, although they had not officially registered the assignment, had built up goodwill through extensive advertising.

The Court distinguished the Respondent’s situation from the earlier cases (Wilkinson Sword (Canada) Ltd. v. Juda and Breck’s Sporting Goods Co. v. Magder ) where a transfer of marks by a foreign parent company to its Canadian subsidiary and sales in Canada by a third party of wares purchased from the parent company resulted in a loss of distinctiveness. In the earlier cases there was no evidence that the source of the goods had become identified with the Canadian subsidiary. In this case, however, the Court was convinced by the expert evidence that the consuming public identified the source of the goods as the Canadian subsidiary.

There was delay in the registration of the assignment, but no reliable evidence of any public confusion that the source of the goods was other than the Respondent.

The Court was, however, convinced that one of the marks had been abandoned, not having been used in Canada for a long time and there being no justifiable excuse for non-use. The other four marks had not been abandoned and thus the Respondent was successful and awarded costs.

Wine Trademark Trends

We recently reported on the increased appearance of creative trademarks for wine, based on applications to the Canadian Trade-marks Registrar over the last few months. Thanks to the creative talents of wine marketing trendsetters like B.C.’s own Bernie Hadley-Beauregard of Brandever Strategies, this movement appears to be continuing.

Recent applications include some animal references such as SPEEDY TURTLE (Application No. 1,299,250), FOUR EMUS & Design (Application No. 1,280,221), CAT’S TAIL (Application No. 1,305,983) and RED KANGAROO (Application No. 1,277,928).

Many Canadian companies have taken the lead with some less traditional names for wine appearing as recently advertised marks in the Canadian Trade-marks Journal. They include: from Ontario, BARE NAKED (Application No. 1,302,240, but apparently opposed by Bear Naked, Inc.), and from Québec, SEXY LIZARD (Application No. 1,299,249) and LOST BIKINI (Application No. 1,299,255), giving new meaning to the phrase “in vino veritas“. Other applications showing a little more restraint include LITTLE BLACK DRESS (Application No. 1,282,547) and QUEEN OF HEARTS & Design (Application No. 1,300,388).

Despite the move to more creative wine brands, the more prevalent trend seems to be in favour of old world references. Many recent applications for trade-marks for wines in Canada refer to the foreign language names of origin, invoking images of warm Mediterranean climates and rambling vineyards and include: from France, TERRA DI CORSICA (Application No. 1,295,086), from Italy, BELLA TAVOLA (Application No. 1,293,966) and TORRAE DEL SALE (Application No. 1,303,138), from Spain, GRAN SANGRE DE TORO (Application No. 1,287,621), GRAN VIÑA SOL (Application No. 1,287,627) and MAS LA PLANA (Application No. 1,287,622), from Portugal QUINTA NOVA DE NOSSA SENHORA DO CARMO (Application No. 1,287,990), from Quebec, AMBROZZI DI CHANTIO (Application No. 1,264,858), from Argentina VALLE PERDIDO & Design (Application No. 1,295,840). ¡Salud!

Yes, Virginia, Santa Claus is Trademarked

We understood it to be well established (at least since 1897 and the New York Sun’s reply to Virginia’s letter) that there is indeed a Santa Claus.

Unfortunately, the Canadian Intellectual Property Office seems intent on ignoring this important fact. Paragraph 12(1)(a) of the Trade-marks Act specifically provides that a trademark is not registrable if it is “primarily merely the name or the surname of an individual who is living”.

However, our recent visit to the CIPO website reveals at least three registrations for SANTA CLAUS – for use in association with “soaps of all kinds”, “ribbons, bows, gift wrapping papers and paper tableware” and, of all things, “ornamental plants”. The existence of these registrations suggests that CIPO considers St. Nick to be a fictional character rather than a living person.

We are pleased to note that two other SANTA CLAUS trademark registrations have been expunged (for use in association with “ice cream” and “soaps, detergents and toilet preparations”) but interested to learn that Coca-Cola has gone so far as to trademark a picture of the jolly old elf.

Of course, it is now seven years since the USPTO created a stir by allowing one Stephen Bottomley (a Brit, no less) to register SANTA CLAUS on their database.

We’ll have to wait and see whether Santa Claus commences proceedings for the unauthorized use of his name and likeness. Of course, Santa could always move to Australia, where they have not yet gone so far as to register his entire name (although there is a SURFING SANTA and a SWINGING SANTA). But then again – Australia has no snow in December.