Famous Marks Protected Once Again

The U.S. congress has approved an amendment to the Trademark Dilution Act, in a move intended to close a loophole that the U.S. Supreme Court found in a case involving the marks VICTORIA’S SECRET and VICTOR’S LITTLE SECRET. The Trademark Dilution Revision Act will now be sent to the President for signature, which is expected to occur in the next few week.

When first introduced, the Trademark Dilution Act was intended to provide additional protection to “famous marks” over and above the protection available to less well known marks, which require there to be confusion due to use with similar products or services, overlapping channels of trade and the like. So if a mark is well known enough, in theory no one should be able to use that mark or a similar mark for any goods or services. The problem noted by the Supreme Court in the case involving VICTOR’S LITTLE SECRET, was that it required the famous mark owner to prove that the other mark had caused actual dilution, rather than likelihood of injury.

The new Act makes it clear that a famous mark owner has a cause of action even in the absence of actual dilution, if the identical or similar mark is likely to cause dilution by blurring its distinctiveness or tarnishing its image. The new Act exempts use of famous marks for noncommercial purposes such as parodies, criticisms or new reporting.

Unfortunately for the well known brand owners of the world, this legislation will not be applicable in Canada, where there’s no statutory provisions that are specific to famous marks. The Supreme Court of Canada recently ruled that, in theory, a mark could be famous enough that it would transcend its goods and services boundaries.  However, in the case of BARBIE and VEUVE CLICQUOT, neither mark, though well known for dolls and champagne, was famous enough to stop a third party from using very similar marks for restaurant services and retail clothing services, respectively.

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Creative Trade-marks for Wine

Applications to the Canadian Trade-marks Registrar evidence the growing trend towards ever more interesting and entertaining wine labels. Witness the following marks advertised in the Canadian Trade-marks Journal over the course of the last 3 months.

  • Mighty Good Water (Application No. 1,261,728),
  • Eighty Links (Application No. 1,268,597),
  • Dancing Bull (Application No. 1,286,717),
  • Brain Storm (Application No. 1,289,532),
  • Pick Axe (Application No. 1,263,838),
  • Two Fins (Application No. 1,281,971),
  • Funky Llama (Application No. 1,289,469),
  • Fish Hoek (Application No. 1,261,072),
  • Crackerjack (Application No. 1,271,199),
  • Pizza Red (Application No. 1,270,326),
  • Monkey Trail (Application No. 1,285,774),
  • Sweet Revenge (Application No. 1,283,146),
  • Midnight Leap (Application No. 1,283,146),
  • Bad Dog (Application No. 1,223,732),
  • Leap of Faith (Application No. 1,269,547),
  • Rusty Shed, (Application No. 1,280,041).

Of these 15 marks, 6 are Australian in origin, namely, EIGHTY LINKS, PICK AXE, TWO FINS, CRACKERJACK, PIZZA RED and MIDNIGHT LEAP, 4 are sought by Canadian companies, namely, BRAINSTORM, MONKEY TRAIL, SWEET REVENGE and RUSTY SHED. The names are creative and, it would appear, distinctive.

One of the advertised marks, BAD DOG is not just for wine. The mark is also sought for use in association with various clothing, table ware and dog toys, as well as the services of “wine event sponsorships and dog event sponsorships”.

David, Goliath And Reverse Confusion

Microsoft is once again at the forefront of a trademark infringement dispute , though this time the David in the story is on a bit weaker ground – it sells construction management software under the FOREFRONT brand and MS recently announced it will begin selling security software under that same brand – so clearly the claimed goods are different, but the marks are identical and there could be overlap in the channels of trade. Reading between the lines, the earlier user here is worried about reverse confusion, which occurs where a later user floods the market with its brand, subsuming the earlier user’s more modest reputation.

Though an established cause of action in the U.S., it’s only recently been recognized as being actionable in one Canadian case – however, in that case the A&W fast food chain was unable, on the facts, to prove that it had a cause of action against McDonalds in a battle of their respective CHICKEN GRILL and CHICKEN McGRILL sandwiches.

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