Maintained by Clark Wilson LLP

Another RIM Trademark Suit

In a complaint filed in the U.S. District Court for the Central District of California, Research In Motion (“RIM”) based in Waterloo, Ontario, is again alleging that another company is using trademarks that are similar to those used by RIM. In this most recent complaint, RIM seeks to prevent LG Electronics Inc. from using such names as Black Label, Strawberry and Black Cherry. An earlier claim brought against Samsung Electronics regarding its use of the mark BlackJack was settled earlier this year.

Passing Off: Like Father Like Daughter?

In Stenner v. ScotiaMcLeod, a recent decision of the British Columbia Supreme Court, the Plaintiff successfully established that his surname used in association with financial services was a valid trademark and that the Defendants’ use of the name constituted passing-off. 

The Plaintiff was a well-known Vancouver-based investment advisor and financial consultant with his own radio show. He worked under contract with the National Bank where investment and financial services were provided by a team that included his daughter and her husband. The daughter’s surname was Stenner-Campbell. In 2002 the Plaintiff negotiated unsuccessfully with his daughter to sell her his book of business. That book of business was instead sold to another National Bank employee for $61 million. The daughter and her husband then joined ScotiaMcLeod, a rival investment firm, began soliciting clients and started a radio show using the Stenner name. The Plaintiff then commenced an action against his daugther and her husband.

Among other relief, the Plaintiff claimed breach of fiduciary duty and passing-off and sought an injunction to prevent the Defendants from using STENNER with any of INVESTMENT, TEAM or FINANCIAL. The Plaintiff had successfully applied to register the STENNER trademark, but the application was only filed after the lawsuit was commenced.

The Court concluded that there was no breach of fiduciary duty because the daughter in particular was not a key employee of the Plaintiff’s team. Moreover, under British Columbia law, a former employee could solicit customers so long as he or she did not take and use confidential information or trade secrets of the former employer.

However, the Court also concluded that passing-off was established since the Defendants’ use of Stenner-Campbell in print and on radio created confusion, depending on the context and a person’s prior experience with the financial world. There was a benefit to be derived by the Defendants’ use of the name and the daughter did nothing to avoid confusion by also using her given name, Vanessa. However, with regards to damages, the Court reasoned that because the passing-off due to confusion with STENNER had diminished greatly over time, 10% of the Defendants’ gain to trial, and 5% for a further five years after, was the appropriate measure.

The Court also issued a permanent injunction with regards to the Defendants’ use of the domain name and required that domain name to be transferred to the Plaintiff. However, no injunction was issued regarding the use of STENNER with INVESTMENT, TEAM, or FINANCIAL, since it would be too broad.

The decision has now been appealed to the British Columbia Court of Appeal and we will report if there is a further ruling.

City and Mayor Settle Up

In our posting of June 25, 2007 we reported on an application by the Mayor of the City of Vancouver to register the mark ECODENSITY in his own name. The application raised a few eyebrows because on the face of it, the program that the mark related to appeared to be one that the City had funded and it wasn’t clear why the Mayor would be filing an application in his own name rather than in the name of the City.

Following the advertisement of that application, the City of Vancouver Councillor’s Office filed an Opposition. According to the Canadian Intellectual Property Office online database, matters seem to finally have been resolved between the City and its Mayor, as the application has now been assigned to the City. As one of our readers has noted, the open question now is whether that application, which was based on proposed use, or any resulting registration will be valid, if in fact the Mayor, as he claimed in a news report at the time, never had the intention to use the mark himself.

Penny For Your Thoughts

The lowly Canadian penny (to be fair, it’s currently worth more than it’s American counterpart) has been the subject of some intense legal discussions lately, according to a recent story in the Globe and Mail. This story highlights the importance of protection for trademarks under both trademark and copyright law in Canada.

 The Royal Canadian Mint has taken issue with the apparently unauthorized use of a Canadian penny design by the City of Toronto as part of an ad campaign which appears on posters on buses and in bus shelters and on bumper stickers and buttons. The campaign is part of the City’s attempt to convince the Federal Government to provide more funding to municipalities, specifically one cent out of every six collected by the Federal Government through the Goods and Services Tax. The penny design is also featured on the City’s webpage

According to the story, the Mint claims ownership of intellectual property rights  in the design of the penny and is demanding that the City stop all use of its design and payment of a licensing fee for past use. While the news story doesn’t get into the legal specifics, the Mint is likely  relying on both copyright and its Official Mark status for the penny design. The Mint caused the Registrar of Trade-marks to publish a notice in the Trade-marks Journal on June 2, 2004, of the Mint’s adoption and use of the penny design as an Official Mark. Once such notice is published, Section 9 of the Trade-marks Act prohibits any other person from adopting, using or registering that mark in connection with a business, as a trademark or otherwise – a very strong form of protection available only to Canadian public authorities – basically government entities and entities over which there is significant ongoing governmental control – and universities. From the article, it appears the City is asserting a defence that it is using the penny design for educational purposes, but it’s not clear that even educational use is permitted under Section 9 without the consent of the owner.

The Mint may also be able to assert its copyright against the City, irrespective of the Official Mark issue, assuming ownership, originality, subject matter, fair dealing and related issues are not a problem. Copyright provides a very different cause of action than trademark – once a copyright protected work is copied, it’s irrelevant to a claim of infringement whether the copy is being used in association with any wares or services.

Actual Infringement Required for an Injunction

Two recent Canadian cases may be of interest to our readers.

In the first, because the Defendant had not yet used the alleged infringing trademark and because the Registrar of Trade-marks had not yet made a decision regarding the Defendant’s applications to register the mark at issue and expunge certain of the Plaintiffs’ marks, the British Columbia Supreme Court refused the Plaintiffs’ summary trial application – Price Costco International, Inc. et al. v. Welcome Warehouse Ltd.. Costco, the international “big box” retailer, alleged that the Defendant, a local British Columbia company, would be passing off and infringing the Plaintiffs’ registered trademarks (which included PRICE CLUB PRICE COSTCO, PRICE COSTCO & Design, COSTCO Design and COSTCO WHOLESALE & Design) if the Defendant proceeded to use PRICECO WAREHOUSE. The Defendant had applied to register its mark on the basis of proposed use, which the Plaintiff opposed. The Defendant also brought proceedings to expunge PRICE CLUB, PRICE COSTCO and PRICE COSTCO & Design.

Notwithstanding the Plaintiffs’ survey evidence demonstrating confusion, the court declined to grant declaratory or injunctive relief since there was no evidence of any actual infringement or damage by the Defendant.

With regard to the second case, we earlier reported the decision in Sun World International Inc. v. Parmalat Dairy and Bakery Inc. in which the prothonotary agreed with the Registrar of Trade-marks that the statement filed in opposition to the registration of a trademark could not be amended after the Registrar had decided the merits of the registration. This decision was appealed further, to a Federal Court judge, who handed down a decision in late August, agreeing with the prothonotary.

Of London, Lithuania And A Popular Tree

A recent story in the London Free Press shows just how powerful Canadian trade-marks are becoming throughout the world – causing a country half a world away to drop a tree design that it had recently chosen to be the symbol for its latest tourism campaign. A similar tree design is the subject of an Official Mark Request advertised by the Canadian Registrar of Trade-marks at the request of the City of London, Ontario, known primarily, until now, as a centre for the insurance industry in Canada and as a University town. The design appears prominently on the City of London’s website.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

Canucks Unveil New Logo

Only in a Canadian city, would the unveiling of a new logo for the local hockey team be the subject of such anticipation and discussion – particularly as the start of the season is over a month away. Today, before 8,000, yes 8,000 fans inside General Motors Place in downtown Vancouver, on one of the rare sunny and warm days the city has seen this summer, the Canucks finally unveiled their new jerseys to the adoring throngs.

Though nothing is showing up on the Canadian Intellectual Property Office online trade-marks database yet, no doubt, applications to register the new logo as a trade-mark have already been filed at the Canadian Intellectual Property Office.