Supreme Court Has Spoken On Confusion

Following up on a couple of earlier posts on this topic, the Supreme Court of Canada has this morning handed down its decision in the Masterpiece Inc. v. Alavida Lifestyles, Inc. case.  This decision has been long awaited as it appears to put to rest a critical issue in relation to the assessment of confusion in the context of who is entitled to registration of a mark in Canada.

First, a recap of the basic facts.  Alavida obtained a registration of the mark MASTERPIECE LIVING in Canada in 2007 for use in association with various real estate related services.  Its application was filed in December of 2005, based on proposed use of the mark in Canada.  Alavida commenced use of the mark in January of 2006.   Masterpiece Inc. didn’t oppose Alavida’s application, but instead sought to expunge Alavida’s registration, after it issued, on the basis, among other things, that Masterpiece Inc. had used the same or a similar mark in Canada in association with the same or similar services, prior to Alavida’s application being filed and prior to Alavida’s use of the mark in Canada.

At the Trial Division and in the Federal Court of Appeal, Alavida won and its registration was maintained, on the basis of the argument that Masterpiece Inc.’s prior use of the same mark for the same services, even if proven, was limited in time and space and was in a different part of Canada (Alberta) than where Alavida used its mark (Ontario) and that the geographic location of any alleged prior use was a factor to be looked at in determining likelihood of confusion – in essence importing into the analysis, a common law passing off test. Read more

CIPO Wares and Services Manual Contracts Again

In an update to this story, this morning CIPO announced its discovery that a number of the entries it added to the Wares and Services Manual as a result of Canada’s participation in the trademark identification harmonization project conducted by the Trilateral Partners do not comply with Canadian trademark requirements.

As such, the over 12,000 Trilateral-approved entries that were added to the Wares and Services Manual yesterday are being removed today.  CIPO has provided no official word on possible solutions, or a timetable for the (re)implementation of Trilateral-approved identification entries.

Bigger! Better! Wares and Services Manual Expands

After a long wait, Canadian practitioners were delighted to learn this morning that CIPO has finally approved and activated more than 12,000 new entries in the Wares and Services Manual.

By way of background, in 2009 CIPO signed a memorandum of co-operation with the United States Patent and Trademarks Office, the Japan Patent Office and the Office for the Harmonization of the Internal Market (responsible for overseeing the CTM system).  These entities – known as the Trilateral Partners – have worked in a loose association over the last few decades to promote and effect harmonization in their IP registration systems.

The Memorandum saw CIPO join the Trilateral Partners’ trademark identification project: the Partners maintain a list of identifications of goods and services that, if entered in an application for the registration of a trademark in any Partner country, will be accepted in that country.

As a condition of its accession to the Memorandum, Canada was permitted to assess the Trilateral list, and to reject a small percentage of identifications that it did not believe reflected Canadian requirements.  With today’s announcement, that process is now complete, and the acceptable terms have been added to the Wares and Services Manual.

Trademark Summary Expungement Proceedings: Evidentiary Issues

In 1459243 Ontario Ltd. v. Eva Gabor International, Ltd., the Federal Court set aside the Registrar’s decision expunging a trademark under section 45 of the Trade-marks Act.  The parties agreed that the standard of review was one of correctness, unless new evidence would have materially affected the decision of the Registrar.  At issue was whether the new affidavit filed by the Applicant was hearsay and, if admissible, whether the evidence would have affected the Registrar’s decision.

The Applicant’s new affidavit sought to introduce evidence that employees of the company had included promotional flyers bearing the trademark at issue when shipping other goods to customers.  On cross-examination the deponent acknowledged he was not personally involved with the flyers.  The Federal Court concluded that this evidence met the criteria of reliability and necessity required by the Supreme Court of Canada decision, R. v. Smith, particularly in the context of section 45 proceedings which are intended to be expeditious and straightforward.  The Court noted that other cases had accepted the reliability of evidence given by individuals who operate businesses.  The evidence was also necessary since requiring evidence from several employees would not be consistent with the summary procedure intended for section 45 proceedings. Read more

Off-colour Trademark Decision Leaves Glaxo Purple With Frustration

In reasons issued late last year, the Federal Court of Appeal has upheld a decision to expunge a trademark registration obtained by Glaxo Group Limited (“Glaxo”) for two-tones of the colour purple as applied to the visible surface of an asthma inhaler. The decision raises interesting questions both about primary and secondary marks, and about the amount of evidence necessary to support a finding that a mark is distinctive.

Inhaler - Front ViewBy way of background, Glaxo registered its mark (depicted right, below) in May of 2007. A collection of generic drug manufacturers brought a Federal Court application to expunge the mark about 6 months later, alleging that the mark was not distinctive.

In its decision, the Federal Court concluded that for the mark to be distinctive the constituency of consumers for the inhaler (including physicians, pharmacists and patients) must relate the trade-mark to a single source, and thereby use the mark to make their prescribing, dispensingInhlaler - Top/Side View and purchasing choices. In market sectors where purchasing decisions are made by or on the advice of professionals, commercial distinctiveness of such marks will be inherently more difficult to establish: such persons will make purchasing or prescription decisions based on the specific properties of the product, and not on the packaging or marks associated with those products. Read more

Ontario Teachers Get A Lesson In Trademarks

The Federal Court of Canada has upheld a decision of the Registrar of Trademarks to refuse registration of the mark TEACHERS’ in association with services described as “administration of a pension plan, management and investment of a pension for teachers in Ontario”.  The application to register this mark was filed by the Ontario Teachers’ Pension Plan Board.

The Registrar had refused registration of this mark on the basis that it was clearly descriptive of the character of the claimed services, contrary to S. 12(1)(b) of the Trade-marks Act.   On appeal, the Federal Court agreed, finding that the word TEACHERS’ in its plural and possessive form, is a distinguishing feature, and therefore the character, of this pension plan because it is a pension plan for teachers.  It clearly describes a prominent characteristic of the wares or services provided.  According to the Court, providing the applicant with a monopoly on the use of this word would prevent other pension or financial services targeted to or belonging to teachers within Ontario or in other provinces and territories from using the term.

Certification Mark Under the Trade-marks Act Refused: Evidence of Use by Others

In Ministry of Commerce and Industry of the Republic of Cyprus v.  Les Producteurs Laitiers du Canada et al. the Federal Court set aside two decisions of the Registrar of Trade-marks, but allowed a third to stand in part, which was sufficient to prevent registration of the Applicant’s certification mark, HALLOUMI, in association with cheese.

The Registrar concluded that contrary to sections 38(2)(a) and 30(a) of the Trade-marks Act, the Applicant had not discharged its initial burden of proving that it was in fact the authority that issued licences authorizing the use of the Mark in association with cheese.  Section 23(2) of the Act provides that only the owner of a certification mark may authorize others to use the mark in association with wares that meet the defined standard.  Relying on the Applicant’s own affidavit material the Registrar concluded that it was the Ministry of Health, in collaboration with the Department of Veterinary Services of the Ministry of Agriculture, National Resources and the Environment, that issued licences.  On appeal by the Applicant, the Ministry of Commerce and Industry, filed additional evidence explaining the internal operations of the Cypriot government in terms of the responsibility for monitoring the use of the Mark.  The Court accepted this evidence, applied a correctness standard of review given the new evidence, and concluded that the Applicant was the authority with the power to authorize use of the Mark.

The Applicant also appealed on the basis that the Registrar incorrectly concluded that the Mark had become recognized in Canada by ordinary and bona fide commercial usage as designating a type of cheese, contrary to sections 38(2)(b), 10 and 12(1)(e) of the Act.  No new evidence was filed on this point and the standard of review was therefore reasonableness.  The Court agreed that one of the Opponents, the Cheese Council, had filed evidence before the Registrar, including packaging from cheese purchased in Ottawa and various cities in Quebec, establishing that marks resembling the Mark and likely to be mistaken for it had been used in Canada to designate a type of cheese.

The other two opponents could not rely on the evidence filed by the Cheese Council and therefore, given the Court’s finding on the other issue, their oppositions failed with the appropriate cost consequences.  Nevertheless, success by the Cheese Council meant the certification mark could not be registered, with costs to the Cheese Council on its opposition.