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.

TwitterFacebookLinkedInInstapaperShare

Yes, Virginia, Santa Claus is Trademarked

We understood it to be well established (at least since 1897 and the New York Sun’s reply to Virginia’s letter) that there is indeed a Santa Claus.

Unfortunately, the Canadian Intellectual Property Office seems intent on ignoring this important fact. Paragraph 12(1)(a) of the Trade-marks Act specifically provides that a trademark is not registrable if it is “primarily merely the name or the surname of an individual who is living”.

However, our recent visit to the CIPO website reveals at least three registrations for SANTA CLAUS – for use in association with “soaps of all kinds”, “ribbons, bows, gift wrapping papers and paper tableware” and, of all things, “ornamental plants”. The existence of these registrations suggests that CIPO considers St. Nick to be a fictional character rather than a living person.

We are pleased to note that two other SANTA CLAUS trademark registrations have been expunged (for use in association with “ice cream” and “soaps, detergents and toilet preparations”) but interested to learn that Coca-Cola has gone so far as to trademark a picture of the jolly old elf.

Of course, it is now seven years since the USPTO created a stir by allowing one Stephen Bottomley (a Brit, no less) to register SANTA CLAUS on their database.

We’ll have to wait and see whether Santa Claus commences proceedings for the unauthorized use of his name and likeness. Of course, Santa could always move to Australia, where they have not yet gone so far as to register his entire name (although there is a SURFING SANTA and a SWINGING SANTA). But then again – Australia has no snow in December.

RIM Battles Samsung Over Use of BlackJack

Canadian based Research in Motion is suing Samsung over its use of the mark BlackJack in association with a recently launched smart phone device. The Samsung smart phone competes directly with RIM’s BlackBerry Pearl smart phone. In the lawsuit, filed in California, RIM argues that the BlackJack name will cause confusion with consumers who are familiar with the established BlackBerry brand, as well as constituting false designation of origin, unfair competition and trademark dilution.  Interestingly, both devices are offered on Cingular’s network in the U.S.

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