Recent Case Law

Summer is a quiet time for the Canadian courts. Looking back at July and August, there are three decisions that deserve a brief summary:

In Ratiopharm Inc. v. Laboratories Riva Inc., the Federal Court dismissed the plaintiff’s action alleging infringement of its registered Canadian trade-mark. The plaintiff sold a codeine based cough syrup under the mark CALMYLIN, while the defendant sold a similar codeine based product under the mark DAMYLIN. At trial there were two issues to be heard: (1) Did the plaintiff have standing to sue? and (2) Is DAMYLIN likely to be confused with CAMYLIN within the meaning of section 20 of the Trade-marks Act? With regards to standing, the court held that the license requirements of the Trade-marks Act had been satisfied and as such and the plaintiff had standing to commence an action for trade-mark infringement. With regards to the issue of confusion, the court held that there was no likelihood of confusion between CAMYLIN and DAMYLIN in the mind of the average consumer, even if hurried. The plaintiff’s action for trade-mark infringement was dismissed.

In DJang v. Ji, a decision of the British Columbia Supreme Court, the plaintiffs sought an interlocutory injunction restraining the defendants from marketing certain herbal products under names for which the plaintiffs had registered Canadian trade-marks. The plaintiffs also alleged passing off and a breach of the British Columbia Trade Practice Act. The Court applied a two-pronged test for granting interlocutory injunctions, holding that while there was a fair question to be tried, the balance of justice and convenience did not favour the injunctive relief sought by the plaintiffs since there was no convincing evidence of the totality of factors to establish irreparable harm. In the end, the Court declined to grant the interlocutory injunction.

Tradition Fine Foods Ltd. v. Group Tradition’l Inc., was an appeal to the Federal Court from a decision of the Trade-marks Opposition Board (the “Board”). The Board had rejected the applicant’s opposition to the respondent’s registration of BAGEL TRADITION’L and design. Upon reviewing the Board’s decision, the Court held that it was open to the Board to dismiss the applicant’s opposition on the ground of confusion. The Court found there to be almost no points of resemblance between the applicant’s TRADITION and TRADITION FINE FOODS trade-marks and the respondent’s proposed trade-mark when the trade-marks were considered in their totality. In the Court’s view, the Board had properly considered all the factors set out in subsection 6(5) of the Trade-marks Act. The Court further held that the applicant had not met its burden of proving that the word “TRADITION’L” or the imagery of the bagel and wheat sheaves was clearly descriptive of the intrinsic quality of bagels.

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Lottery Corp Re-branding Controversy

An article in today’s Globe and Mail has raised issues regarding the cost of re-branding an Ontario Government Corporation. One member of the Provincial assembly has raised concerns about the $4-6 million dollars spent changing the logo of the Ontario Lottery and Gaming Corp. from OLGC to simply OLC.

Branding Canada: Official Marks

Noting an August 15th post on the Strategic Name Development Blog, which comments that Canada is a great brand but it needs marketing.

While we appreciate that trade-mark registration is only a small part of an overall branding and marketing campaign, it appears from the Canadian Trade-mark Register that the government organizations responsible for promoting tourism in Canada and its provinces and territories are taking steps towards developing a brand. For example, Tourism BC has a number of marks on the Canadian Trade-mark Register, including a number of variations of SUPER NATURAL BRITISH COLUMBIA. The Greater Vancouver Convention and Visitors Bureau has obtained 100 DAYS OF SUMMER, along with a number of other marks.

Other favourites include: Nunavut’s UNTAMED UNSPOILED UNDISCOVERED (which is not on the Trade-mark Register, however); Saskatchewan’s LAND OF LIVING SKIES; and Quebec’s PROVIDING EMOTIONS SINCE 1534 (FOURNISSEUR D’ÉMOTIONS DEPUIS 1534, if you prefer the French).

With the exception of UNTAMED UNSPOILED AND UNDISCOVERED, all these marks are registered as “Official Marks” under section 9(1)(n)(iii) of Canada’s Trade-marks Act, a provision that gives these “public authorities” an advantage over the average commercial enterprise seeking to register trade-marks. Registration of such marks does not involve an opposition process and does not require renewal. There are no fees to pay and no provisions regarding cancellation. The public authority may prohibit others from using the mark with all goods and services and not just those in respect of which the public authority can establish use. (For more details on official marks generally see this.) Government entities do not always resort to section 9(1)(n)(iii). The Canadian Tourism Commission has obtained Official Mark status for PURE CANADA and CANADA PUR, but has registered THE WORLD NEEDS MORE CANADA & Design as an ordinary trade-mark.

Given section 9, it is perhaps surprising that Canadians, and more particularly their public authorities, are not more aggressive about establishing brands, or at least trade-marks. We are still waiting for something as provocative as Australia’s SO WHERE THE BLOODY HELL ARE YOU?, or better yet, Las Vegas’ WHAT HAPPENS HERE, STAYS HERE.

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