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.

Real Estate Developers Embracing Trademark Protection?

A review of recent Canadian trade-mark filings indicates that some real estate developers in Canada are choosing to protect as trade-marks, not only their company or business names, but also the marks they have chosen for individual developments. Reflecting a more conservative industry, these trade-marks are not as edgy or creative as some of the new wine industry trademarks. However, in a competitive marketplace, this may change as developers start to see the benefits of distinguishing their projects from those of the competition and targetting specific categories of brand-conscious prospective buyers.

Recent applications and registrations include,

OSCAR (Application No. 1293873)
SPIRE (Registration TMA591399)
THE VINE (Registration No. TMA668332)
THE LAUREATES (Registration No. TMA565184)
ROUGE (Application No. 1294465)
COCONUT GROVE (Application No. 1294937)
NEW TIMES SQUARE (Registration No. TMA590427)
SOPHIA (Registration No. TMA666909)
MODE (Registration No. TMA648830)
UNIVERSITY HEIGHTS (Registration No. TMA649239)
YALETOWN PARK (Registration No. TMA627657)

The time may yet come when not every Canadian city has a PARK PLACE and a BAY TOWERS, although some of the above marks continue the practice of developers using names that are the same or similar to names used by other developers, either previously in the same geographic market or in different geographic markets.

A developer’s business or corporate name normally has a shelf life that’s longer than any single development. In many cases the name of the developer is featured as much (or more prominently) in the marketing of each development than is the name of the development itself. Because of this, the protection of such corporate or business names is likely as or more important than the protection of marks for specific development projects, particularly where the marks for development projects are not distinctive.

As creative marketers begin to shake up the industry with more interesting and distinctive marks for specific projects, the need to protect these distinctive project marks will no doubt increase.

900,000th Mark Registered Under International Trademark System

A recent press release from WIPO (the World Intellectual Property Organization) heralds the 900,000th registration under the International Trademark System, commonly known as the Madrid Protocol or system.

The Madrid system allows an applicant from a signatory country to potentially obtain protection for its mark in up to 77 member countries and the European Union by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). An International Registration obtained through the Madrid system can be maintained and renewed through a single procedure at WIPO.

The system is designed to provide a cost-effective and efficient way for trademark owners to secure protection for their marks in multiple member countries through the filing of one application. While there are debates about how well the Madrid system attains that goal, it certainly gives applicants from member countries another powerful option for international trade-mark protection strategies.

Unfortunately for many Canadian trademark owners (namely those without a presence in a Madrid protocol signatory country), this option is not available to them because Canada, alone among most developed (and many developing) countries is not a signatory to the Madrid Protocol, nor is it likely to be for at least several years. The recent accession of both the U.S. and the EU to the Madrid system has awoken the Canadian Intellectual Property Office (“CIPO”) to the need for Canada to seriously consider joining, but the process is moving very slowly. In 2002, CIPO published an analysis of the issues that need to be addressed in order for Canada to acede to the Madrid Protocol and in 2005 CIPO solicited comments from Trade-mark professionals as to the proposed modernization of Canadian Trade-mark law, including adherence to Madrid. The issue has gained little public attention and given the other priorities of the minority governments in Canada of the past several years, it’s likely to languish for several more years.