Realtors Stake Their Turf

Delegates to a special meeting of the Canadian Real Estate Association (CREA), the owner of the registered trade-mark MLS (and variations such as MULTIPLE LISTING SERVICE & Design), voted to continue further study of proposed changes to the rules governing realtors’ listing of homes on the MLS system. Although news articles have reported on the proposed changes as a battle between full-service realtors and discount brokers, CREA has stated the the proposed changes were for no other reason than to protect the MLS trade-mark. This is an interesting intersection of policing trade-marks, competition and impact on consumers.

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Creative Trade-marks for Wine

Applications to the Canadian Trade-marks Registrar evidence the growing trend towards ever more interesting and entertaining wine labels. Witness the following marks advertised in the Canadian Trade-marks Journal over the course of the last 3 months.

  • Mighty Good Water (Application No. 1,261,728),
  • Eighty Links (Application No. 1,268,597),
  • Dancing Bull (Application No. 1,286,717),
  • Brain Storm (Application No. 1,289,532),
  • Pick Axe (Application No. 1,263,838),
  • Two Fins (Application No. 1,281,971),
  • Funky Llama (Application No. 1,289,469),
  • Fish Hoek (Application No. 1,261,072),
  • Crackerjack (Application No. 1,271,199),
  • Pizza Red (Application No. 1,270,326),
  • Monkey Trail (Application No. 1,285,774),
  • Sweet Revenge (Application No. 1,283,146),
  • Midnight Leap (Application No. 1,283,146),
  • Bad Dog (Application No. 1,223,732),
  • Leap of Faith (Application No. 1,269,547),
  • Rusty Shed, (Application No. 1,280,041).

Of these 15 marks, 6 are Australian in origin, namely, EIGHTY LINKS, PICK AXE, TWO FINS, CRACKERJACK, PIZZA RED and MIDNIGHT LEAP, 4 are sought by Canadian companies, namely, BRAINSTORM, MONKEY TRAIL, SWEET REVENGE and RUSTY SHED. The names are creative and, it would appear, distinctive.

One of the advertised marks, BAD DOG is not just for wine. The mark is also sought for use in association with various clothing, table ware and dog toys, as well as the services of “wine event sponsorships and dog event sponsorships”.

David, Goliath And Reverse Confusion

Microsoft is once again at the forefront of a trademark infringement dispute , though this time the David in the story is on a bit weaker ground – it sells construction management software under the FOREFRONT brand and MS recently announced it will begin selling security software under that same brand – so clearly the claimed goods are different, but the marks are identical and there could be overlap in the channels of trade. Reading between the lines, the earlier user here is worried about reverse confusion, which occurs where a later user floods the market with its brand, subsuming the earlier user’s more modest reputation.

Though an established cause of action in the U.S., it’s only recently been recognized as being actionable in one Canadian case – however, in that case the A&W fast food chain was unable, on the facts, to prove that it had a cause of action against McDonalds in a battle of their respective CHICKEN GRILL and CHICKEN McGRILL sandwiches.

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