GLAMOUR Mark Fails to Dazzle Federal Court

The Federal Court recently handed down its decision in Advance Magazine Publishers Inc. v. Farleyco Marketing Inc., an appeal from an earlier decision by the Registrar of Trade-marks that had found no likelihood of confusion between the Farleyco mark GHOULISH GLAMOUR for Halloween cosmetics and eyelash accessories and the Advance mark GLAMOUR used in association with magazines and related products and services.  New evidence was filed that went significantly beyond that which had been considered by the Registrar, so the Court considered the matter afresh.

The Court found that both marks were inherently weak as both were suggestive of their wares and services but considered whether Advance’s GLAMOUR mark had “an acquired distinctiveness through use and promotion… sufficient to warrant a wide scope of protection”.

The Court determined that while the GLAMOUR mark was well known in Canada in association with magazines (and thus had acquired distinctiveness), it was not associated with all wares and services that make up the glamour industry.  Advance argued that the wares of both parties belonged to the same general class of goods, namely cosmetic, fashion and beauty, but the Court found: “Just because cosmetic products are advertised, discussed, or otherwise featured in Advance’s magazine and related wares does not mean…  that any acquired distinctiveness of the GLAMOUR mark should extend to cover such products.”

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Yee Shall Seek… Declaratory Judgment

Updating our previous post on the ROYAL CHINET trademark, the Nova Scotia Supreme Court in CKF Inc v. Huhtamaki Americas Inc. has confirmed “that declaratory relief is specifically available in the context of intellectual property disputes”, notwithstanding that such relief is not expressly provided for in the applicable act. In this case, the Plaintiff launched an action in Nova Scotia seeking, among other things, a declaratory judgment that it as an unconditional owner of certain trademarks in Canada. The Defendant, which commenced its own actions against CKF with respect to the same trademarks in Ontario and Maine, applied to strike CKF’s action on several bases, including that the Court could not grant CKF the declaratory relief it was seeking.

Finding that it had inherent jurisdiction to make the declaratory judgment sought, and that the declaration was not purely “hypothetical” or “speculative” since it related to an actual dispute between parties, and was practically necessary for the resolution of this dispute, the Court refused the Defendant’s application to strike.

Cybersquatter Targets MP Keith Ashfield

CBC News reported recently that Conservative MP Keith Ashfield registered the domain name during the 2008 election.  When Mr. Ashfield failed to renew the registration, it was quickly scooped up by an apparent cybersquatter.  Cybersquatters (as they are commonly known), often register famous names or trade-marks in order to benefit from the associated goodwill to drive traffic to their websites.  Often these websites are “pay-per-click” sites which generate revenue for the cybersquatter.

The website now resolves to a site offering details on how to get prescription drugs without a prescription.  Exactly who holds the domain name is unclear, as this information has been privacy protected by the registrar, Namespro Solutions Inc., at the request of the owner. Under the current CIRA privacy policy, personal information of owners who are individuals is permitted to be cloaked, even if the domain name links to a commercial site. Read more

Practitioners Warm to Cooling-Off Periods

Regular readers of the Canadian Trademark Blog will recall that this past fall we reported on a public consultation undertaken by the Canadian Intellectual Property Office respecting proposed revisions to trademark opposition proceeding practices.

CIPO has recently released a compendium of the comments and suggestions it received during the consultation process.

While the submissions touch upon a broad number of issues implicated by the proposed practice notice, their common thread relates to the proposed “cooling-off” period.  Nearly all of the submissions argue that to make the “cooling-off” period available only prior to the filing of a counter-statement is counterproductive to the amicable settlement of the proceeding.  Instead, they argue that the request for a cooling-off period should be available at any time during an opposition proceeding.

In a posting on its site, CIPO advises that the proposed practice notice will be amended “to reflect decisions taken by CIPO as a result of comments received from stakeholders during the consultation period.”  Precisely what changes CIPO will make, however, will not be known until later this month when CIPO posts the revised practice notice on its website.  The final practice notice is expected to be published in the Trade-marks Journal and come into effect in February 2009.

Depreciation A Possible Ground in Opposition Proceedings

In Parmalat Canada Inc. v. Sysco Corporation, the Federal Court allowed an application by Parmalat to set aside the Trade-mark Opposition Board’s refusal to amend a statement of opposition to include an additional ground of opposition. Sysco had filed an application on May 3, 2002 to register the trademark, BLACK DIAMOND, in association with various kitchen utensils, chef’s apparel, cooking pots and frying pans. Parmalat had registered various BLACK DIAMOND trademarks in Canada for use since 1933 in association with cheese and other food products. Parmalat originally filed its statement of opposition on May 4, 2004 based on a number of grounds, including confusion with Parmalat’s family of BLACK DIAMOND trademarks.

On June 2, 2006, the Supreme Court of Canada released its decision in Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Boutiques Cliquot Ltée which discussed the depreciation of goodwill contrary to section 22 of the Trade-marks Act. Subsequent to the Veuve Clicquot decision Parmalat sought to amend its statement of opposition to include depreciation of the value of the goodwill attached to its registered trademark, BLACK DIAMOND, as an additional ground of opposition. The Trade-mark Opposition Board dismissed Parmalat’s application for leave to amend on the basis that the inquiry on the issue of depreciation of goodwill was not to be decided in an opposition hearing; instead, the Federal Court had jurisdiction to decide the issue. Read more

“Bad Faith” Decision Bad News for Applicants?

A recent Opposition Board decision highlights a little-examined area of Canadian trademark law, raising questions pertaining to the entitlement to file a trademark application, and issues of good faith related thereto.

In Cerveceria Modelo, S.A. de C.V. v. Marcon, issued August 12, 2008, the Trade-mark Opposition Board upheld an opposition brought by Cerveceria Modelo against Marcon’s application to register the trademark CORONA for use in association with both a variety of beverages and with beverage bottling services.

The application was opposed on several grounds, including alleged confusion with Cerveceria Modelo’s familiar CORONA trademark. Additionally, the opposition was also founded on Marcon’s alleged failure to comply with s. 30(i) of the Trade-marks Act, which requires the applicant to file with the Registrar an application that contains a statement that the applicant is satisfied that “he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.” Read more

Canada’s Trademark Opposition Practice Changing Again?

In case you missed it: the Canadian Intellectual Property Office has commenced a public consultation session concerning possible changes in practice before the Trademark Opposition Board.

These proposed changes follow on the heels of – and are likely motivated by – changes introduced to Opposition Board practice last fall. Many practitioners were surprised by those changes, and found frustration in some of the ambiguities contained in that Practice Notice, issued nearly a year ago.

The newly proposed Notice appears designed to remedy these problems: it provides greater clarity with respect to the number of available extensions and the possible duration thereof, and offers extensive guidance concerning the nature of the “exceptional circumstances” required to obtain an extension at certain stages of a proceeding. Read more