Trademark Confusion: Possible Future Confusion Not Relevant

In a recent decision of Canada’s Federal Court of Appeal, Masterpiece Inc. v. Alavida Lifestyles Inc. the Appellant sought to expunge the Respondent’s registered trademark MASTERPIECE LIVING pursuant to section 18(1)(a) of the Trade-marks Act alleging that it was unregistrable as of the date of registration because it was confusing with the Appellant’s use of the same mark or similar marks.

Both the Appellant and Respondent operated in the retirement residence industry. The Respondent applied to register MASTERPIECE LIVING on December 1, 2005 on the basis of proposed use and began using the mark in January 2006. The application was granted in March 2007. The Appellant alleged it had used a series of evolving trademarks with the word “Masterpiece” beginning in 2001, and began using MASTERPIECE LIVING either in December 2005 or February 2006, depending on which exhibit was consulted. It applied to register the mark on June 29, 2006, but the application was denied on the basis that the Respondent had already applied to register the mark.

Whether the Respondent’s mark was unregistrable as of the date of registration turned on section 16(3)(a) of the Trade-marks Act which allows an applicant who has filed on the basis of proposed use to secure its registration “unless at the date of filing of the application it was confusing with (a) a trademark that had been previously used in Canada or made known in Canada by another person”. Read more

Additional Evidence and Relevant Dates on Trademark Appeals

In Advance Magazine Publishers, Inc. v. Wise Gourmet Inc. the publisher of GOURMET magazine successfully appealed a decision of the Trade-mark Opposition Board that the use of WISE GOURMET in association with various food products and printed publications, namely cookbooks, newsletters, nutrition guides, food recipes and periodicals relating to food and nutrition was not confusing with the use of GOURMET in association with magazines and other publications.  On appeal to the Federal Court, Advance Magazine Publishers, the original Opponent, submitted two lengthy affidavits that were not before the Trade-mark Opposition Board.  Although the original Applicant chose not to participate in the appeal, the Court noted that its position still had to be considered.

Given the new evidence the appeal proceeded on a de novo, or fresh, basis and applying the test for confusion set out in sections 6(2) and (5) of the Trade-marks Act, the Court concluded there was confusion, such that WISE GOURMET could not be registered.  Although GOURMET was not inherently distinctive, its use over time had gained the Opponent a certain reputation in relation to its magazine and associated wares and services.  The mark had also been in use for a long time, while the Applicant was a new entry into the market.  The nature of the wares and services and the nature of the trade were similar.  There was also a fair degree of resemblance between the two marks since the Applicant had incorporated the Opponent’s mark, GOURMET, in its entirety, into WISE GOURMET.  While the first word, “wise”, helped distinguish the marks to some degree in terms of sound and appearance, the idea suggested by both marks was similar. Read more

Can’t Stop, Won’t Stop: CIPO Changes Section 45 Procedures

It’s been a busy year for CIPO, and the organization is yet again amending some of its practices.  This time it has s. 45 in its sights.

As regular readers know, s. 45 of the Trade-marks Act provides a mechanism by which an interested party can seek to summarily expunge a registered trade-mark for three years of non-use.  CIPO sought public input on a proposed changes to s. 45 practice earlier this year, and last week introduced its new practice notice, which is slated to come into effect on September 14, 2009.

Like the recent changes to Opposition proceedings, the changes to s. 45 practice appear aimed at streamlining the process.  Most notably, the planned changes limit the extensions of time available for the submission of evidence.  The current standard is an extension of three months with additional extensions available on consent or if exceptional circumstances are shown.  The new standard provides for one extension of four months, and establishes that grants of additional extensions will be rare: neither the the consent of the parties to additional extensions, nor the parties’ engagement in settlement discussions  will be seen by the Office as sufficient reason to provide additional time. Read more

Ch-ch-ch-ch changes!

Following up on one of our earlier posts, the Canadian Intellectual Property Office recently adopted a couple of revisions to its examination practices.

Since June 17, the Office has been providing six month periods to respond to Examiner objections, as opposed to the four month window previously provided.  In addition, the Office is no longer issuing ‘doubtful case’ or ‘courtesy letters’ – those letters that were sent to trade-mark applicants identifying co-pending applications for allegedly confusing marks having a later entitlement date.

This latter change reinforces the importance of both having watch services in place, and regularly reviewing the Trade-marks Journal for the advertisement of marks of interest.

…and then quickly wanes.

An update to the post below: the Supreme Court of Canada announced this morning that the Scotch Whiskey Association has been unsuccessful in obtaining leave to appeal before the Court.  A panel of three judges dismissed the Association’s leave request, with costs.

As such, the decision from the Court of Appeal will stand: Glenora Distillers will be permitted to register its application for GLEN BRETON.

Psion Capitulates In Netbook Battle

Following up on a story we reported earlier this year, Mississaugua, Ontario-based Psion Teklogix appears to have resolved its trademark dispute with Intel Corporation by undertaking to withdraw all of its NETBOOK trademark registrations.  As regular readers of our blog will recall, Psion’s registrations for NETBOOK were being challenged in a number of jurisdictions, including Canada, by Intel and others on the bases of non-use and non-distinctiveness.

While the Psion press release makes no specific reference to the terms of settlement, it seems likely that Intel persuaded Psion to formally abandon the NETBOOK brand by providing a cash payment to the Canadian company.  It is not clear to what extent, if any, Dell Inc. – who had joined Intel in attacking Psion’s registrations – was a formal part of any such settlement.

The news of the settlement is not particularly surprising: Psion had a long and expensive row to hoe defending the various actions in the jurisdictions in which it was under attack, let alone asserting its rights around the world to stave off allegations of non-distinctiveness / genericide.  Moreover, Intel and Dell no doubt both had more resources to apply to the case than Psion did.  Given all of that, the cost-benefit analysis pushes one to settlement pretty quickly. Read more

Ch-ch-ch-ch Changes? CIPO’s Client Consultations Continue

The Canadian Intellectual Property Office has engaged in a number of client consultations recently.  Considering changes to Section 45 practice, changes to practice before the Opposition Board – even changes to the method by which it publishes practice notices – CIPO has been soliciting client and stakeholder views.  (On the Opposition point, CIPO’s changes to practice before the Board came into effect on March 31, 2009.)

CIPO is now engaged in a new consultation – this one concerning three separate issues.  The first concerns deadlines for responding to Examiner reports.  CIPO is proposing to extend the deadline for responding to such reports from four to six months.

The second concerns deadlines for responding to CIPO’s requests for outstanding information concerning transfers.  Here, CIPO is proposing doing away with such deadlines altogether, though of course the transfer will not be effected it CIPO’s records until all required materials have been provided. Read more