Trademark Evidentiary Issues / Colour as a Trademark

JTI Macdonald TM Corp. v. Imperial Tobacco Products Limited, a recent decision of the Federal Court, includes interesting findings regarding the introduction of additional evidence on appeals, colour constituting a trademark rather than a distinguishing guise and the evidence necessary to establish non-distinctiveness.

Imperial Tobacco applied to register “the colour orange applied to the visible surface of the packaging as shown in the attached drawing”, namely a drawing of a cigarette package.  JTI-Macdonald opposed the application and, being unsuccessful before the Opposition Board, appealed to the Federal Court.  The Federal Court agreed with the Board and rejected the various grounds of opposition.

The Court applied a standard of reasonableness, rather than correctness, when considering the appeal, given that the issues were mixed fact and law and within the expertise of the Board.  On an appeal from the Opposition Board a party is entitled to introduce new evidence and if that evidence would have “materially affected” the Board’s findings, the standard of review is one of correctness.  However, in this case, the Court concluded that the additional evidence that JTI-Macdonald sought to introduce merely provided additional examples of products rejected by the Board in its analysis of distinctiveness and therefore would not have affected the Board’s decision. 

The Court also considered the issue whether the applied for colour formed part of a mode of wrapping or packaging so as to constitute a distinguishing guise.  The Court noted that what was applied for was the colour orange applied to the packaging.  The colour was claimed separately and was not just an element of the packaging. Thus, the Board reasonably concluded that the colour was not part of the wrapping or packaging and could be claimed alone as a trademark.

With regards to the evidence necessary to establish distinctiveness, the Court noted that the relevant date for establishing a lack of distinctiveness is the date of the filing of the opposition.  Some of JTI-Macdonald’s evidence was from the period prior to the date when the opposition was filed and was therefore not probative.  As well, a number of the products relied on by JTI-Macdonald to establish non-distinctiveness either lacked sales data or had very low sales figures and did not assist.

In the end none of the grounds of opposition were accepted by the Board or the Court and the trademark was allowed to proceed to allowance.

TwitterFacebookLinkedInInstapaperShare

A Professional Designation Can Be A Certification Mark: Canada’s Federal Court

In a decision rendered earlier this year, Ontario Dental Assistants Association v. Canadian Dental Association, the Federal Court of Canada held that a professional designation could function as a certification mark, although not  in the case at hand.

The case was an appeal from a decision of the Trademarks Opposition Board (TMOB) allowing the Canadian Dental Association’s opposition to the registration of the certification mark “CDA”.  The Ontario Dental Assistants Association (ODAA) had applied to register the certification mark “CDA” in association with dental assisting services, and more particularly to denote a dental assistant that possessed specific qualifications as approved by the ODAA.  The ODAA alleged use in Canada since at least as early as 1965.

The TMOB denied the registration of “CDA” as a certification mark on the basis that a professional designation could not function as a certification mark and consequently the acronym “CDA” could not be said to have been used as a certification mark from the time claimed by ODAA in its application.  The TMOB also held that the certification mark “CDA” was not distinctive enough to be registered, given its use by the Canadian Dental Association as an acronym to refer to itself.

On appeal, the Federal Court focused on paragraph (c) of the definition of “certification mark” in section 2 of the Trade-Marks Act: “means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to… (c) the class of persons by whom the wares have been produced or the services are performed… from wares or services that are not of that defined standard.”

The Court held that the definition must be viewed in the context of the Act as a whole and listed the criteria a certification mark must meet, namely: not be clearly descriptive or deceptively misdescriptive of the wares or services; be distinctive; not be used by the owner, but only by authorized licensees; not be confusing with a registered or previously applied for trade-mark or trade name; and be used in accordance with section 4 of the Act which includes, with respect to services, use or display in the advertising of the services.  The Court disagreed with a 1988 Opposition Board decision, Life Underwriters Association of Canada v. Provincial Association of Quebec Life Underwriters, which suggested that a professional designation could never serve as a valid certification mark, and found that there is nothing in the Act to preclude a valid certification mark from being registered for a professional designation, so long as the mark satisfies the listed criteria.

Despite this finding, the Court dismissed the ODAA’s appeal on the grounds that the ODAA had not established use of the acronym “CDA” as a certification mark since as early as 1965.  Documents issued by the ODAA to dental assistants did not constitute use by licensees or certified users and name tags evidenced use by dental assistants to show their membership in the association, but not to distinguish the services performed.  Moreover, the mark was not distinctive given its use by the Canadian Dental Association.

Thus, while the ODAA was not successful, it is now clear that a professional designation could constitute a certification mark, if the criteria are met.

Trademark Interlocutory Injunction Denied

A recent decision of the Saskatchewan Court of Appeal, setting aside the interlocutory injunction granted by the Chambers judge, illustrates how difficult it is to obtain an interlocutory injunction absent convincing evidence that satisfies the three part test for an interlocutory injunction.  In Kulyk v. Wildman (Weight Loss Forever Consulting), the Saskatchewan Court of Queen’s Bench granted the plaintiff an interlocutory injunction precluding the defendant from using or carrying on business under the plaintiff’s alleged business name and trademark, “Global Healthcare Connections” and directing the defendant to remove all references to the plaintiff’s mark on social media sources.  In assessing the plaintiff’s application, the Chambers judge looked to Potash Corp. of Saskatchewan Inc. v. Mosaic Potash Esterhazy Limited Partnership which set out the well‑established test for an interlocutory injunction:  

(1) the strength of the plaintiff’s case;

(2) the presence of a meaningful risk of irreparable harm if the injunction is not granted; and,

(3) whether the balance of convenience favours the granting of the injunction. 

The Court of Appeal allowed the appeal and held that the plaintiff’s application for injunctive relief was based on the common law tort of passing off, which in turn, required evidence of goodwill, deception of the public due to misrepresentation, and actual or potential damage to the plaintiff.  The Court stated that the plaintiff’s case was weak because she failed to put forth any evidence to establish the existence of goodwill associated with the name Global Healthcare Connections.  The plaintiff’s affidavit referred to various steps she had taken to launch her business, but it also stated that she had had difficulty launching her business because of the defendant’s actions.  Thus, there was no evidence that the plaintiff or her services were known in the market.

The Court found it unnecessary to assess the remaining elements of the common law tort, although it did comment on these.  With respect to the element of irreparable harm, the Court disagreed with the Chambers judge’s finding that the plaintiff had suffered loss of business, finding instead, that the similarity between the names used by the parties would likely result in a benefit rather than harm to the plaintiff’s business.  Noting that a balance of convenience analysis could be “compendious”, the Court was satisfied that the balance of convenience also favoured the defendant, given the weakness of the plaintiff’s case and given that irreparable harm favoured the defendant.  Thus, the Chambers judge’s decision could not stand.