September Case Law

There are two trade-mark cases from the Canadian Courts in September 2006 of interest to readers.

In Cafe’ Do Brasil, S.p.A. v. Walong Marketing Inc., the Federal Court agreed with the applicant, an Italian food products company, and expunged a registered trade-mark owned by the respondent. The respondent’s registered trade-mark, KIMBO, was identical to the trade-mark that the applicant had obtained a registration for in Canada in 1990 and had used in Canada since 1992. In 2003, the applicant filed an application to expand the registration of its KIMBO trade-mark, but was informed that the Canadian Trade-mark Office objected to the registration of its KIMBO trade-mark in relation to the additional wares because it was confusing with a KIMBO trade-mark owned by the respondent. The record disclosed that expungement proceedings had been initiated in 1999 which resulted in the expungement of the applicant’s KIMBO trade-mark. However, the applicant had not received actual notice of the expungement proceedings in 1999. The Court held that the application was properly before it since the applicant met the definition of an “interested person”, having not received actual notice of the expungement proceedings. The Court further held that at the time of the first use of KIMBO by the respondent’s predecessor company in 1995, there was a reasonable likelihood of confusion between the two parties’ trade-marks. As a result, the respondent was not entitled to register its trade-mark and it was therefore invalid and was expunged from the Register.

In Community Credit Union Ltd. v. Registrar of Trade-marks, the Federal Court refused to set aside the Registrar of Trade-marks’ refusal to register the trade-mark COMMUNITY CREDIT UNION. With regards to the “clearly descriptive” ground of opposition, the Court held that it was not unreasonable for the Board not to have considered this ground. The Court further stated that if they were wrong in this regard, it was satisfied that the mark was clearly descriptive of the character of the services to be provided by the applicant in association with its use, and that registration of the mark COMMUNITY CREDIT UNION would remove the word “community” from the vocabulary available to others providing credit union services. With regards to distinctiveness, the Registrar had concluded that the mark was inherently non-distinctive because there were numerous credit unions in Canada that used “Community Credit Union” in their trade-marks or trade names. While a mark may become distinctive in a particular geographical area, the court held that there was considerable evidence before them and before the Registrar that the mark was commonly used within the trade in every region and that circumstances pointed to an absence of distinctiveness.

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Canadian Contribution to Major Leagues Up For Grabs

Just in time for Major League Baseball’s fall classic, the Quebec based maker of the famed maple SAM BAT is up for sale on eBay, all trademark rights included.

Famous Marks Protected Once Again

The U.S. congress has approved an amendment to the Trademark Dilution Act, in a move intended to close a loophole that the U.S. Supreme Court found in a case involving the marks VICTORIA’S SECRET and VICTOR’S LITTLE SECRET. The Trademark Dilution Revision Act will now be sent to the President for signature, which is expected to occur in the next few week.

When first introduced, the Trademark Dilution Act was intended to provide additional protection to “famous marks” over and above the protection available to less well known marks, which require there to be confusion due to use with similar products or services, overlapping channels of trade and the like. So if a mark is well known enough, in theory no one should be able to use that mark or a similar mark for any goods or services. The problem noted by the Supreme Court in the case involving VICTOR’S LITTLE SECRET, was that it required the famous mark owner to prove that the other mark had caused actual dilution, rather than likelihood of injury.

The new Act makes it clear that a famous mark owner has a cause of action even in the absence of actual dilution, if the identical or similar mark is likely to cause dilution by blurring its distinctiveness or tarnishing its image. The new Act exempts use of famous marks for noncommercial purposes such as parodies, criticisms or new reporting.

Unfortunately for the well known brand owners of the world, this legislation will not be applicable in Canada, where there’s no statutory provisions that are specific to famous marks. The Supreme Court of Canada recently ruled that, in theory, a mark could be famous enough that it would transcend its goods and services boundaries.  However, in the case of BARBIE and VEUVE CLICQUOT, neither mark, though well known for dolls and champagne, was famous enough to stop a third party from using very similar marks for restaurant services and retail clothing services, respectively.

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors