Limited Evidence of Use on Section 45 Proceeding

Brouilette Kosie Prince v. Great Harvesting Franchising, Inc. involved two Appeals under section 56 of the Trade-marks Act from decisions of the Opposition Board.  The Appellant had sought, unsuccessfully, to have the Registrar expunge two trademarks pursuant to section 45 of the Act, namely two design trademarks, both for GREAT HARVEST BREAD CO. & DESIGN.  The one was registered for use in association with the services of “operation and franchising of retail bakery shops”.  The second was registered for the same services, as well as services described as “franchising services, namely offering technical assistance in the establishment and/or operation of retail bakeries and retail bakery shop services” and wares described as “bakery goods, namely bread, cookies, muffins, and cinnamon rolls; wheat; jams and jellies; clothing, namely hats, sweatshirts, aprons, t-shirts and sweaters”.

The Federal Court agreed with the Opposition Board that the one mark registered solely in respect of the services could be maintained in its entirety and the other could be maintained in part.

In the course of the section 45 proceeding, the owner of the trademark had provided a Statutory Declaration that included two photographs (the first showing bread baskets sitting on a portable table in a mall, with a banner pinned to the table and the second showing the banner with the trademark in full), a page from a booklet regarding how to become a franchisee, and four labels, together with invoices of sales for one particular day in the three-year period preceding the Section 45 Notice.  No further evidence was provided by the owner of the trademark on the Appeal. Read more

Window of Opportunity: Extra savings on CTM applications until May 1, 2009

While not, strictly speaking, a Canadian trade-mark issue, many Canadian trade-mark owners will be interested in this limited time opportunity to save money while obtaining protection for their marks in the European Union.

The official fees for European Union Community Trade-mark (“CTM”) applications are being reduced by about 40% (from EU 1,600 to EU 900).

In addition, applicants who apply before May 1, 2009 can save an extra EU 150, because while the final registration fee (EU 850) has already been eliminated, the minimal increase in filing fees (from EU 750 to EU 900) does not take effect until May 1, 2009.

We encourage trade-mark owners considering CTM applications to act quickly to take advantage of the extra savings available before May 1, 2009.

Psion’s NETBOOK Trademark Under Fire

The dispute over Psion’s NETBOOK trademark registrations has crept further into the mainstream, following recent decisions by Dell and Intel to take legal action against Psion in the US.

For those of you who missed it, Psion is a mobile computing device manufacturer whose head office is located in Mississauga, Ontario, Canada. Psion holds registrations for the trade-mark NETBOOK in Canada, the US, in Singapore, Hong Kong and in the CTM system.

In December, Psion sent letters to manufacturers and retailers in an attempt to “affirm” its NETBOOK trademarks. To this end, the letters requested the recipients to stop using NETBOOK to describe ultra-portable laptop computers.  Psion followed up with similar correspondence to journalists and bloggers in January. Read more

JAVACAFÉ: Clearly Descriptive in the French Language

Following up on an earlier blog posting, we note that the Supreme Court of Canada has refused leave to appeal from the Federal Court of Appeal’s decision in Shell Canada Limited v. P.T. Sari Incofood Corporation

The Court of Appeal earlier concluded that JAVACAFÉ when sounded as two words was clearly descriptive, in French, of the claimed wares, namely, coffee products.

In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine

The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material mistatement in the processing of a registation renders the entire resulting registration void.

In Parfums de Coeur, Ltd. V. Asta the respondent individual filed a trademark application in 1999 based on proposed use of the trademark BOD in association with wares identified as “hair care, namely shampoo conditioner, treatment, styling aids, hairsprays, hairpolish, perms, … .” The respondent subsequently filed a Declaration of Use signed February 12, 2004 declaring that by himself or through a licensee he had commenced use of the trademark in association with all the listed wares. The applicant began selling body sprays in Canada in association with the trademark BOD MAN as early as 2002, but when it sought registration in Canada, the respondent’s mark was cited against it. When challenged regarding his Declaration of Use, the respondent amended the list of wares to read only “hair care, namely shampoo, conditioner”. Read more

Canadian Distiller Wins Latest Round In Trademark Battle

Just in time for Robbie Burns day, Canada’s Federal Court of Appeal has ruled that a Canadian distiller of whiskey can use the word GLEN in its trademark, without misleading Canadian consumers into thinking that its product is whiskey that is from Scotland.  This is the latest round in the battle by Bedford, Nova Scotia based Glenora Distillers to register the mark GLEN BRETON in the Canadian Intellectual Property Office in association with its single malt whiskey.  There’s no word yet on whether the Scotch Whiskey Association will appeal the decision to the Supreme Court of Canada.

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.