Apple To Launch iPhone In Canada Amid Trademark Dispute

Notwithstanding an ongoing trademark dispute, Apple Inc’s iPhone is scheduled to launch in Canada later this year. The service will be offered by Rogers Communications Inc., the only Canadian carrier using the Global System Mobile (GSM) communications standard needed to run iPhone. The device has sold more than five million units worldwide since its launch in 2007.

We previously reported on the challenges facing Apple in seeking to register the IPHONE trademark in Canada. Apple applied to register the trademark in October of 2004 on a proposed use basis but the application was opposed by Comwave Telecom Inc., who claim to have been using the trademark in Canada since June 2004.  Comwave filed an application to register the trademark in November 2005. If Comwave can prove that it has prior use of the trademark, and that Apple’s IPHONE trademark will cause confusion in the market place, then Apple’s application could be refused.

More recently, both Apple and Comware filed additional applications in Canada and two new applications to register trademarks containing the term iPhone, iPhoneNow.ca and iphonemail.ca, have been filed by third parties. A Delaware-based company called Ocean Telecom also applied to register an iPhone trademark in July 2007 but this application was subsequently assigned to Apple.

Apple was previously involved in a dispute with Cisco Systems in the United States regarding ownership of the IPHONE trademark. The dispute was settled when the parties agreed to share the trademark.

Round 2 Won By Scotch Whisky Association

As a follow up to earlier postings on the ongoing battle between the Scotch Whisky Association (the “Association”) and the Canadian distillers of GLEN BRETON single malt whisky, the Association is reporting today that it has won its appeal to the Federal Court of Canada.

The Trade-marks Opposition Board denied the Association’s opposition to the application by Glenora Distilleries of Nova Scotia to register the mark GLEN BRETON, on the basis that, in the Opposition Board’s view, Canadians would not be confused by the use of the word GLEN in the mark, such that they would think they were purchasing Scotch Whisky. The Association appealed that decision to the Federal Court.

During the appeal, the Association produced evidence that GLEN BRETON was misdescribed in various retail outlets, newspaper articles, pricelists, menus and websites as a Scotch Whisky and the Federal Court agreed with its submissions that Canadian consumers would likely be confused that they were purchasing a Scotch Whisky when that was not the case.

Stay tuned for Round 3 of this battle, as CBC reports that Glenora Distilleries is already planning to file an appeal of the Federal Court decision.

Opposition and Expungement Proceeding Info Added to CIPO’s Online Database

Following up on an announcement we told you about a few weeks ago, the Canadian Intellectual Property Office has now added information respecting pending trademark opposition and Section 45 (summary expungement) proceedings to its online database.

Working with the information over the last several days, our experience has been that it is a little out of date, relative to the actual status of proceedings. Nonetheless, CIPO’s decision to enhance public access to this information will be beneficial to trademark owners, brand advisors, and their counsel.

Trademark Appeals: Stays and Service Requirements

A recent blog noted that a failure to obtain a stay of a Federal Court judgment when an appeal to the Federal Court of Appeal is sought, means the Registrar of Trademarks will act in accordance with the Federal Court judgment, which may be contrary to what the appellant is seeking before the Court of Appeal.

A recent Practice Notice from the Trademarks Office clarifies the issue. Section 50 of the Federal Courts Act allows the Federal Court and the Federal Court of Appeal to stay proceedings. If there is an appeal from the Federal Court to the Federal Court of Appeal, the Registrar, absent a stay, must act in accordance with the judgment of the Federal Court.

There is, however, an exception in the case of opposition and section 45 procedings. If there is an appeal to the Federal Court of Appeal the Registrar will not treat the Federal Court decision as final because it must, pursuant to sections 39(1) and 45(5) of the Trade-marks Act, act in accordance with “the final judgment given in the appeal”.

Thus, where there is an appeal from the Federal Court to the Federal Court of Appeal, it is important to consider whether an opposition or section 45 proceeding is at issue, and if not, obtain the requisite stay.

The Practice Notice also provides guidance regarding the service of court documents on the Registrar.

Where a decision of the Registrar is appealed under section 56 of the Trade-marks Act or where judicial review of a Registrar’s decision is sought, the Registrar must be served personally. This is best effected by leaving the document with an employee of the Executive Office who is authorized to accept service.

All Notices of Appeal filed with the Federal Court must also be filed with the Registrar. These may be transmitted by any means, but failure to comply with sections 56(1), (2) and (3) of the Act, including the filing requirement, may render the appeal a nullity.

Trademark Statistics: The Year in Review

The Canadian Intellectual Property Office released its 2006-7 Annual Report earlier today. The report contains some interesting information:

  • over 45,000 applications were filed in the twelve month period ending March 31, 2007, reflecting a 4% increase over the previous year
  • Canada remains the most common country of applicant origin, with nearly 20,000 applications filed; the US placed second, with over 14,700 applications, while applicants from Germany, France and the United Kingdom rounded out the top 5
  • 90% of Canadian trade-mark applications were filed online; prior to 2004, only 20% of applicants were using the e-filing system
  • despite the addition of several new Examiners, turn-around times remained the same as in the previous year, and an examination backlog of approximately 20,000 files remains to be addressed
  • the number of Statements of Oppositions filed continued to decline, with just over 1100 filings; however, the number of Section 45 (cancellation) notices issued increased slightly over the previous year.

The full report is available here.

Canadian Intellectual Property Office News

Good news from the Canadian Intellectual Property Office: in an announcement posted to their website yesterday, CIPO advised that it will soon be making information concerning the status of both Section 45 proceedings and Opposition proceedings available online.

Currently, CIPO’s database provides limited information to the public respecting Trademark Opposition proceedings, setting out only the names of the Opponent and their counsel, and the date the Opposition was filed. The situation for Section 45 (or summary cancellation) proceedings is worse for those, the database indicates only the name of the Section 45 Requestor and their counsel, and does not even indicate when the Section 45 request was issued. In neither case is information about the current stage of the proceeding available through the database; for a member of the public to get such information they would have to perform a manual review of the physical file located at CIPO’s office in Gatineau, Quebec.

The addition of further information relating to these proceedings will permit interested third parties to make better informed decisions concerning the mark(s) at issue, allowing them to consider the impact such proceedings may have on their own interests. While CIPO has a long way to go before matching the standards set by the USPTO Trademark Office and its excellent Trademark Document Retrieval system, this step is an important one and CIPO should be applauded.

Judging A Wine By Its Label: A Trademark Issue

In Sociedad Agricola Santa Teresa Ltda. et al. v. Vina Leyda Limitada, the Federal Court considered what constitutes a place of origin for wine such that the place name cannot be registered as a trademark. At issue was section 12(1)(b) of the Canadian Trade-marks Act which states that a trademark is not registrable if it is “clearly descriptive or deceptively misdescriptive” of the “place of origin” of the wares or services.

Vina Leyda Limitada applied in 2001 to register LEYDA as a trademark and on the evidence before the Registrar in an opposition to such application, the Registrar allowed the application. The Sociedad appealed the Registrar’s decision under section 56 of the Act.

The Court allowed the appeal and held that LEYDA could not be registered. According to Harrington J., “Once the Registrar found as a fact, as he did, that Leyda is a wine producing region in Chile, as a matter of law he was required to conclude on the record before him that the opposition was well founded.” Of concern was the fact that if the registration stood the applicants, wine producers from the Leyda Valley, would not be able to refer to that fact on their labels or in their promotional literature and might be limited to calling their wine Chilean red or white. The judge also noted that “producers from a specific region want to promulgate their area in the belief that their wine is superior to the wine of that country as a whole”. A general appellation could lead a consumer to believe a wine is “plonk”.

In reaching his decision Harrington J. relied on a 1970 Supreme Court of Canada decision, Home Juice Co. v. Orange Maison Ltee, for the proposition that “a shrewd trader should not be permitted to monopolize the name of a foreign wine district in Canada by registering it as a trademark”. He also distinguished Prosciutto di Parma v. Maple Leaf Meats Inc. in which the Federal Court of Appeal refused to expunge the trademark PARMA since it had been used in Canada for 39 years and registered for 26. LEYDA had not been in use in association with wine in Canada at the time the application was filed.

On an appeal under section 56 the parties may introduce evidence that was not before the Registrar and the Sociedad put forward that “Vallee de Leyda” was an appellation of origin in Chile. This evidence was taken into account, but Harrington J. specifically noted that whether a name signifies a geographical area under section 12 of the Act and whether that area produces wine are not contingent upon a governement decree.

Finally, it is worth noting that Harrington J. may very well know something about wine. He not only references the origin of the word “plonk” (“There are different legends as to the origin of the word ‘plonk’. The one I prefer is that a Monsieur Plonque was the purveyor of cheap wine to British Troops in World War I.”), but he also begins his reasons stating, “One may not be able to judge a book by its cover, but one should know something about a bottle of wine from its label; the more the better.”