Recent Trademark Court Decisions

There were three recent trademark decisions from the Canadian courts that readers may find of interest:

Expungement Allowed - In Candrug Health Solutions Inc. v. Thorkelson, Candrug and Pharmawest commenced identical applications and sought expungement of the respondent’s trade-marks in Federal Court. The proceedings were consolidated and Candrug discontinued its application. Therefore, Pharmawest was the sole applicant.

The respondent had applied and been issued registration in May 2003 for the trade-marks CANADA DRUGS and CANADADRUGS.COM. The respondent had disclaimed the exclusive right to use the words “Canada” and “Drugs” apart from the trade-marks. The Federal Court agreed with the applicant and expunged the trade-marks CANADA DRUGS and CANADADRUGS.COM on the basis that they were both clearly descriptive and deceptively misdescriptive under section 12(1)(b) of the Act. The respondent was unable to discharge his onus under section 12(2) to show the marks had acquired distinctiveness as of the date the application was filed. Therefore, the marks were not registrable and were ordered expunged.

Damages Reduced on Appeal - In 2703203 Manitoba Inc. v. Parks, the Nova Scotia Court of Appeal allowed an appeal in part and reduced the quantum of damages for copyright infringement, passing-off and interference with contractual relations awarded by the trial judge. The Court of Appeal upheld the trial judge’s finding that the appellants infringed the respondent’s copyright in the publication, Coffee News, by producing and distributing the publication, Flying Cow, in the form they did.

Witnesses at trial testified that the first several issues of the Flying Cow were published by the same printer as Coffee News and were identical in every respect including design, format, and quality and colour of the paper. Only the editorial content and the mast-head were different. The Court of Appeal also paid considerable deference to the trial judge’s advantage of seeing and hearing the witnesses and upheld the trial judge’s conclusion that the respondent was entitled to damages from the appellants for passing-off.

Referring specifically to the testimony of several witnesses, the trial judge concluded that the appellants had devised a strategy of lies and deceit in producing Flying Cow as practically identical to Coffee News, with the objective being to cause confusion so that advertisers, distributors and readers may be persuaded that the two publications were sister editions rather than competitors.

The Court of Appeal did, however, take issue with the trial judge’s calculation of damages as there was limited explanation or justification of how the amounts were arrived at. The Court of Appeal reviewed each amount and reduced the trial judge’s order of general damages from $139,000 to $70,500 and punitive damages from $100,000 to $40,000.

Challenging Official Marks – In See You In? Canadian Athletes Fund Corporation v. Canadian Olympic Committee the Applicant sought judicial review of the Registrar’s decision to grant the COC two official marks, SEE YOU IN BEIJING and SEE YOU IN VANCOUVER. The Applicant was incorporated in 1997 to raise money for Canadian athletes and had used marks such as SEE YOU IN ATHENS in the past and had applied to register the two marks at issue. The Federal Court agreed with the Registrar that the COC was a public authority since there was a significant degree of public control over it’s ongoing activities and the organization existed for the public benefit.

However, the Federal Court also concluded that a mere statement by the public authority that it had adopted and used a mark was not sufficient to prove that such adoption and use had actually occurred. A negative inference could be drawn from a failure to provide details regarding alleged adoption and use. Moreover, any such evidence must show an element of public display. Since the COC had not established adoption and use at the relevant time, the Registrar’s decision to publish notice of the adoption and use by COC of the marks as official marks was quashed. We understand that the COC is considering an appeal of this decision.

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.CA Domain Hits 20 Year Milestone

20 years ago today, the Internet Assigned Numbers Authority (IANA) delegated the .CA domain to John Demco, then of the University of British Columbia (UBC) Computer Sciences Department. The Vancouver Sun reports that, on May 14, 1987, the commercialization of the Web wasn’t on Demco’s or anyone else’s radar – in fact the Web as we know it wasn’t even in existence. Demco operated the .CA domain for 13 years on a volunteer basis, charging no fees for .CA domain registrations.

Today, the .CA domain is the 13th most popular country code domain in the world, with over 837,000 registrations, Demco is a director of one of the largest .CA Registrars and the Canadian Internet Registration Authority has responsibility for the .CA Domain, which it took over from UBC in 2000.

8,500 Trademark Lawyers Under One Roof?

As Michael Atkins of the Seattle Trademark Lawyer recently reported, the International Trademark Association (INTA) held its annual meeting in Chicago last week. More than 8,500 trademark professionals were under one very large roof of the McCormick Place Convention Centre. Authors from the Canadian Trademark Blog were also in attendance, running from meetings to receptions to educational sessions, from morning ’til (late) night and occasionally taking in some of the great sights of the Windy City, typically while taxiing from one venue to the next.

As well as a great opportunity to meet with those trademark professionals who do such a great job of protecting our client’s interests in other countries, it was interesting to see the home base of some very well known marks, such as WRIGLEY’S, OLD NAVY, SEARS and of course all the great sports teams such as the CUBS, WHITE SOX, BEARS, BULLS and BLACK HAWKS.

Not surprisingly, the issues highest on everyone’s radar relate to protection of trademark rights on the Internet, with the rapidly developing area of keyword advertising being a very hot topic.

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