Maintained by Clark Wilson LLP

More Olympic Trade-mark Issues

Protecting the official trademarks of the Olympic Games is proving to be an ongoing challenge for the organizers of the Beijing 2008 Games, as well as the Vancouver 2010 Games. We reported some time ago regarding possible new Canadian legislation. Beijing organizers are now threatening legal action against pranksters that are using the Internet to poke fun at several of the official marks of the Beijing Games.

The website of the Vancouver Organizing Committee includes a 36-page list setting out the official marks of the Vancouver Organizing Committee and the Canadian Olympic Committee, including the Beijing Games marks that are currently being targeted. A portfolio of that size will likely generate some interesting new developments in trademark law as we draw closer to the 2010 Games.

iPhone Gets Its First Busy Signal

It didn’t take long for Cisco Systems to take a run at Apple, Inc.’s newly unveiled iPhone. Cisco owns a U.S. Trademark Registration for IPHONE in association with “computer hardware and software for providing integrated telephone communication with computerized global information networks”. Cisco has filed a lawsuit against Apple in the U.S. alleging trademark infringement among other things. Cisco alleges that up to the night before Apple’s introduction of the iPhone on Tuesday of this week at Macworld Expo, Apple and Cisco were negotiating the terms of an agreement that would have permitted Apple to use the mark.

There appear to be other entities using the iPhone mark for VoIP services, some of which have also filed applications to register the mark in association with such services. Cisco, in its lawsuit, alleges that Apple is applying to register the iPhone mark in the U.S. via a related or alter ego company called Ocean Telecom Services LLC. of 2004 on a proposed use basis.

Apple filed an application to register the mark iPhone in Canada in October of 2004 on a proposed use basis. That application is currently being opposed by Comwave Telecom Inc. Comwave  filed its own application for the mark iPhone in Canada, claiming use of that mark in Canada since June of 2004 for use in association with VoIP services.

December Case Law

There were three cases out of the Federal Court in December 2006 that are of interest.

In Omega Engineering, Inc. v. Omega SA, 2006 FC 1472, the Applicant was the owner of the trade-mark OMEGA and three related marks for use in association with scientific and industrial clocks and timers, amongst other measuring instruments used in science and industry. The Respondent was the owner of the mark OMEGA & Design for use in association with, among other things, “appareils techniques et scientifiques pour l’électricité, l’optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie, nommément: la cellules photo-électriques, portails à contact, compteurs enregistreurs sur bande de papier, pistolets de start à contacts électriques” (roughly translated as “scientific and technical instruments for electricity, optics, the cinema, radio, telegraph and telephone, namely photocells, contact points, recording meters on paper tape, starting guns with electrical contacts”). The Applicant sought to have the registration for OMEGA & Design amended to change the general description to another general classification or, alternatively, have the mark removed from the Register on the basis that it had been abandoned.  Interestingly, the Respondent had registered its mark in 1895 and had commenced separate opposition proceedings as against the Applicant. The Applicant had initially brought a section 45 proceeding (“non-use”) seeking to expunge the registration for OMEGA & Design. That application proceeded to the Federal Court of Appeal where the Court found that the mark could not to be expunged for non-use and that the trial judge could not amend the statement of wares on a section 45 proceeding.

The Applicant’s further application also failed. The Court held that there was evidence that the Respondent’s wares fell within the general classification and it was not open to the Court on a section 57 proceeding to substitute another general description of the wares. The latter could only be achieved in the course of opposition proceedings. The Court also concluded that the Respondent’s mark had not been abandoned and that there was use of OMEGA & Design with the specific wares that followed the general classification.

In International Taekwon-Do Federation et al. v. Choi et al., the International Taekwon-Do Federation (ITF) and its Canadian affiliate, the Canadian Taekwon-Do Federation International (CTFI), brought a section 57 (expungement) application arguing that the trade-marks registered by the Respondents were invalid (TAE KWON-DO & Design, along with 3 others). The Respondents were a former officer of the ITF and a joint venture between him and his father, the original founder of the ITF. The Court agreed that the marks were invalid, noting that the Respondents were not entitled to register the trade-marks because they would be confusing with marks that had been previously used by the Applicants. Also, any use that the Respondents might have made of the marks would have been use on behalf of the Applicants given that the individual Respondent and his father were officers of the ITF and had a fiduciary duty towards it. Moreover, the marks could not be said to be distinctive of the Respondents’ wares or services given the Applicants’ prior use of the same marks. The Court also noted that an importer or agent has no right to register a trade-mark owned by a foreign principal under his own name and for his own benefit. In this regard, the Court relied on Citrus Growers Assn. Ltd. v. William D. Branson Ltd. (1990), 36 C.P.R. (3d) 434.

In Jagotec AG v. Riches, McKenzie & Herbert LLP, the Applicant successfully appealed a decision of the Registrar of Trade-marks to expunge its mark under section 45 for non-use. On the Appeal, the Applicant was entitled to file additional evidence that was not before the Registrar of Trade-marks. Although the evidence was from the original owner of the mark and not the Applicant itself, there was evidence that in the three years prior to the section 45 proceeding being commenced, the trade-mark was used through the sale of the wares in Canada in containers or packages bearing the words VISIBLE YOUTH.

The Source Once Again A Source of Trademark Problems

Circuit City continues to encounter trademark problems in Canada with its chain of retail consumer electronics stores. When Circuit City purchased the chain of 870 plus stores from Radio Shack 18 months ago, it was forced to incur substantial costs to re-brand them as The Source by Circuit City. Now, a smaller chain of photo shops called Foto-Source Canada Inc. has applied to the Federal Court of Canada seeking an order that Circuit City cease using The Source as part of its name.

Foto-Source contends that it adopted the slogan “Get it right, from the source” in 1994. Both parties have filed applications to register their respective trademarks in Canada but neither application has been published for opposition yet.

Scotch Distilleries Protest Use Of Glen With Canadian Whisky

The Scotch Whisky Association is battling a Cape Breton distiller of whisky over its use of the word Glen in its trademark. The Association, which represents the owners of well known brands such as Glenfiddich, Glenlivet and Glenmorangie, is concerned that consumers will assume that Glen Breton Rare single malt whisky, produced by Glenora Distillery, is a scotch whisky.

The Association argues that the word “Glen” is too closely linked to scotch whisky for anyone other than Scottish producers to use.  “Scotch Whisky” itself is a designation that is protected under the federal Trade-marks Act for use only with whisky produced in Scotland.

The Canadian distillery, which has applied to register the mark GLEN BRETON, argues that Cape Breton, where it is based, has very strong Scottish roots because it was settled by the Scottish over 200 years ago. The region is riddled with towns and villages that contain the word “Glen”, which means a place at the base of highlands or mountains. The Association has opposed the GLEN BRETON trademark application. Lawyers for both sides recently presented oral arguments and a decision of the Opposition Board is still months away.

November Case Law – Enforcement of Foreign Judgments

There were no noteworthy Canadian cases in November that focused on specific trademark issues. However, the Supreme Court of Canada (“the SCC”) handed down a decision regarding the enforcement of foreign non-monetary judgments that will be of interest to trademark practitioners.

The case, Pro Swing Inc. v. Elta Golf Inc., arose out of a trademark dispute, but it was the contempt order that was at issue on appeal.  In 1998, Trident, a U.S. company, filed a complaint in Ohio for trademark infringement. Elta, an Ontario company, entered into a settlement agreement that was endorsed in a consent decree of the U.S. District Court. In 2002 Trident brought a motion that Elta had violated the consent decree and a contempt order was issued.

The SCC agreed with the Ontario Court of Appeal that the contempt order could not be enforced in Canada, primarily because it was quasi-criminal in nature. However, in doing so the SCC held that the traditional common law rule limiting the recognition and enforcement of foreign judgments to final money judgments should be changed – although cautiously. Thus, equitable orders from foreign courts, such as injunctions, may now be enforced.

The SCC outlined a number of factors to be taken into account: that the judgment being enforced be rendered by a court of competent jurisdiction and be final, and that as a matter of comity the domestic court not extend greater assistance to foreign litigants than it does to its own litigants.

With regards to injunctive relief the SCC recommended that its territorial scope must be specific and clear. With regards to trademark protection the SCC specifically noted that the Internet does not transform U.S. trademark protection into worldwide protection, although the SCC left open that the possibility that a party, by consent, might create such an extension.

Future case law will provide further clarity regarding the enforcement of foreign equitable orders in Canada and the extent to which Canadian courts may recognize, for example, injunctions regarding trademark rights. In the meantime, foreign litigants will want to carefully consider how a foreign court order is worded if the ultimate intention is enforcement in Canada.