Court Considers Colour Marks

Peak Innovations Inc. (the “Applicant”) filed 31 applications to register trademarks for various of its products, namely wood to wood and concrete and masonry connectors, most of which are used in deck building. A competitor, Simpson Strong-Tie Company Inc. (the “Opponent”) filed statements of opposition in respect of all 31 applications.

On appeal, the Federal Court recently considered two of the applications agreeing with the Opposition Board and dismissing the appeals. At issue were a mark for the colour green (Application 1,187,491) and a mark for the colour greyish-green (PANTONE 5635C) (Application 1,205,529), both as applied to fastener brackets, claiming use in association with fastener brackets for attaching deck boards.

The Opponent filed additional evidence on its appeal to the Federal Court, but the Court did not agree there was evidence of third parties in the Canadian marketplace using grey or khaki green on items for purposes that included deck building. Thus, there was no confusion.

The Court also refused to consider the Opponent’s arguments concerning non-distinctiveness, since those allegations were raised for the first time on appeal, and “while a party is open to raise new evidence on appeal, it cannot raise new issues”.

The Court also concluded that the mark was not purely or primarily functional. The Opponent, based on certain statements made during the course of cross-examination, argued that green or greyish coating was added to products primarily to reduce corrosion. However, the Court noted that the coating could be produced in many colours and, following the decision of the Federal Court in Smith, Kline & French Canada Ltd. v. Registrar, concluded that “colour applied to the whole of the visible surface of an object can function as a trademark”.

VANOC Gets Sour Taste From Lululemon

Vancouver based yoga wear retailing phenom Lululemon Atletica has tweaked the nose of the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Games (VANOC), with a new line of clothing. A story yesterday reported that Lululemon has introduced a new line of clothing named “Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition”. VANOC reportedly is upset that Lululemon has only complied with the letter and not the spirit of the laws in Canada that protect the various trademarks used to promote the Olympic Games generally, and the Vancouver 2010 Winter Olympic and Paralympic Games specifically.

The clothing line in question features various items in the national colours of Canada, the U.S., Sweden and Germany. Notably, the Canadian hoodies feature gold zippers while the zippers in the colours of other countries have silver zippers. Lululemon lost out to the Hudson’s Bay Company in its bid to be the official apparel supplier to the Canadian Olympic team for the Summer and Winter Games during the period from 2006 to 2012.

Readers of the Knowledge Bytes newsletter will be aware of the legislative hammers that are at VANOC’s disposal to enforce its trademark rights against both would-be infringers and ambush marketers alike. These include the Olympic and Paralympic Marks Act, which contains lists of specific words that either can’t be used at all, or that can’t be used in combination with other specific words–for example the combination of “Vancouver” and “2010”. 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

Proving a Trademark Licence

3082833 Nova Scotia Company v. Lang Michener LLP and Registrar of Trade-marks illustrates the importance of providing evidence of any licences in place when confronted with a summary expungement under section 45 of the Trademarks Act:  an evidentiary burden that is not difficult to meet.

3082833 Nova Scotia Company (“3082”) owned the registered mark ENTRE NOUS for use in association with “telecommunication services, namely long distrance telephone services”.  The mark was originally owned and used by 3362426 Canada Inc. (“3362”) carrying on business as Primus Telecommunications Canada Inc. (“PTC”).  3082 acquired the mark in the course of a reorganization and the mark was used by PTC, which had become 3082’s wholly owned subsidiary.

In response to a section 45 summary expungement, 3082 put forward invoices issued by PTC as evidence of use, but the Registrar concluded that they only referred to “Primus Canada” and there was no evidence that 3362 or 3082 had used the mark and no evidence of a licence. Read more

Whiskey War Waxes On

In several earlier posts, we’ve tracked the ongoing battle between Glenora Distillers and the Scotch Whiskey Association respecting the propriety of Glenora’s use of the word GLEN in its trademark GLEN BRETON.   Most recently, the Federal Court of Appeal found that Glenora was able to use GLEN without misleading Canadian consumers into thinking its product originated in Scotland.

News today that this brouhaha may not be over quite yet: it appears that the Scotch Whiskey Association has sought leave to appeal to the Supreme Court of Canada.

Stay tuned!

Osteoporosis Marks a Bone of Contention: NPS Pharmaceuticals v. Biofarma

The Federal Court recently issued its judgment in NPS Pharmaceuticals, Inc v. Biofarma, Société Par Actions Simplifiée.   This case was an appeal by NPS from a decision of the Trade-marks Opposition Board, which had refused NPS’s application to register PREOS, on the basis that it was confusing with Biofarma’s prior application for PROTOS.   Both marks were associated with osteoporosis medications.

The Board analyzed the facts with respect to the criteria laid out in Section 6(5)  of the Trade-marks Act and also considered the issue of drug errors and whether or not Biofarma would actually use the PROTOS mark.   When considering the nature of the wares and the channels of trade for the two marks, the Board found that although the PREOS and PROTOS drugs would be administered in very different forms (PREOS being self injected and PROTOS being dissolved in a glass of water) and could be aimed at different groups of patients, the description of the wares in the applications for both drugs covered identical wares and were not limited as to physical form, dosage and mode of application.   The Board also found a “fair degree of resemblance” between the marks, rejecting the “microscopic analysis” by NPS regarding the differences in appearance and sound of the marks.   On the issue of possible drug administration errors, the Board held that this was not directly relevant to the issue of confusion.   In addition, the Board found that Biofarma was entitled to rely on its allowed application for PROTOS (which was in good standing) to oppose PREOS, despite uncertainty surrounding whether the PROTOS mark would ever be used in Canada.   Based on all the factors considered, the Board held that the PREOS mark was confusing with PROTOS. 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