According to the Globe & Mail, Nestlé Canada Inc. believes moderation is the key to profitable brand extension, something it learned from its U.K. parent. Apparently, you can have too many types of KIT KAT chocolate bars, even when Canadian chocolate sales are $2.5 billion per annum.
Summer is a quiet time for the Canadian courts. Looking back at July and August, there are three decisions that deserve a brief summary:
In Ratiopharm Inc. v. Laboratories Riva Inc., the Federal Court dismissed the plaintiff’s action alleging infringement of its registered Canadian trade-mark. The plaintiff sold a codeine based cough syrup under the mark CALMYLIN, while the defendant sold a similar codeine based product under the mark DAMYLIN. At trial there were two issues to be heard: (1) Did the plaintiff have standing to sue? and (2) Is DAMYLIN likely to be confused with CAMYLIN within the meaning of section 20 of the Trade-marks Act? With regards to standing, the court held that the license requirements of the Trade-marks Act had been satisfied and as such and the plaintiff had standing to commence an action for trade-mark infringement. With regards to the issue of confusion, the court held that there was no likelihood of confusion between CAMYLIN and DAMYLIN in the mind of the average consumer, even if hurried. The plaintiff’s action for trade-mark infringement was dismissed.
In DJang v. Ji, a decision of the British Columbia Supreme Court, the plaintiffs sought an interlocutory injunction restraining the defendants from marketing certain herbal products under names for which the plaintiffs had registered Canadian trade-marks. The plaintiffs also alleged passing off and a breach of the British Columbia Trade Practice Act. The Court applied a two-pronged test for granting interlocutory injunctions, holding that while there was a fair question to be tried, the balance of justice and convenience did not favour the injunctive relief sought by the plaintiffsÂ since there was no convincing evidence of the totality of factors to establish irreparable harm. In the end, the Court declined to grant the interlocutory injunction.
Tradition Fine Foods Ltd. v. Group Tradition’l Inc., was an appeal to the Federal Court from a decision of the Trade-marks Opposition Board (the “Board”). The Board had rejected the applicant’s opposition to the respondent’s registration of BAGEL TRADITION’L and design. Upon reviewing the Board’s decision, the Court held that it was open to the Board to dismiss the applicant’s opposition on the ground of confusion. The Court found there to be almost no points of resemblance between the applicant’s TRADITION and TRADITION FINE FOODS trade-marks and the respondent’s proposed trade-mark when the trade-marks were considered in their totality. In the Court’s view, the Board had properly considered all the factors set out in subsection 6(5) of the Trade-marks Act. The Court further held that the applicant had not met its burden of proving that the word “TRADITION’L” or the imagery of the bagel and wheat sheaves was clearly descriptive of the intrinsic quality of bagels.
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