April 2008

Stanleypark.com – Not For Sale

By In Branding

We previously reported on the measures in place to secure protection for Olympic brands ahead of the 2010 Winter Olympics in Vancouver.

The potential windfall for local businesses due to Olympic tourism and general Olympic goodwill has now prompted the Vancouver park board to scramble to secure brand ownership of the popular Vancouver landmark, Stanley Park. The board are trying to purchase the domain name stanleypark.com from owner Gerry O’Neill who runs a lucrative horse-drawn carriage business in the park, but Mr. O’Neill, whose business generates close to $1 million in annual revenue, is not interested in selling. The website provides information to tourists on the fully-narrated horse-drawn carriage tours which include a complete history of the 1,000 acre park and cater to large crowds of visitors during the summer months.

Obtaining Judgment Requires Lawyer, But Not Settlement Agreement

By In Case Law

Farouk Systems Inc. v. Rica International Inc. and Munesh M. Mavadia raises a procedural point, namely whether a corporation requires a lawyer to resolve an action before the Federal Court.

The personal Defendant sought an order for an exemption from Rule 120 of the Federal Court Rules (which requires all corporate Defendants to be represented by lawyers) so that he could sign the requested judgment in his personal capacity and as an officer of the corporate Defendant.

The case law under Rule 120 requires proof of special circumstances, namely impecuniosity, the complexity of the issues and whether the proposed representative might be a witness.

The Judge was not convinced that there was impecuniosity since the proposed judgment included a $24,000.00 payment. The legal issues as evidenced by the proposed judgment were also not simple.

More importantly, there was no need for the relief sought given that the personal Defendant could sign a settlement on behalf of the corporation in the same way he could execute any other contract, thereby precluding the need for a judgment.

Trademark Confusion or Chalk and Cheese

By In Case Law, Protection & Enforcement

As the owner of a HÖRST brand shirt and a cyclist, I might be inclined to think there is a connection between HÖRST shirts and HORST WATERPROOF cycling bags. But I would fail to realize that HÖRST is a common German name and that I may not be a typical Canadian consumer.

A recent Québec case, Octeau et al v. Kempter Marketing Inc., illustrates that identical or similar names do not necessarily mean there is infringement, absent use in association with similar wares and for a similar purpose.

The Plaintiff had three registered Canadian trademarks, HÖRST DÜSSELDORF & Design, CULT HÖRST and H HÖRST & Design, for use in association with an extensive line of clothing. The Defendant manufactured and distributed sporting goods, including high-end cycling and ski products and introduced the HORST WATERPROOF, a waterproof cycling bag named in honour of Horst Kempter, the founder of the company.

The judge noted that there was no attempt by the Plaintiff to prove the Defendant was selling any product “comparable in either style, nature or purpose” to the Plaintiffs’ products. He also pointed out the absence of any evidence that the Defendant sold any product resembling a product produced and sold by the Plaintiff. There was also no evidence of any person drawing a connection between the Plaintiffs’ and the Defendant’s businesses.

The judge reviewed the test for confusion, noting the discussion in Mattel, Inc. v. 3894207 Canada Inc. (the Barbie case) that trademark law affords protection that transcends the traditional product lines, but the issue is whether confusion arises.

What the Plaintiff failed to prove was confusion. In Veuve Cliquot Ponsardin et al v. Boutiques Cliquot Ltée et al Justice Binnie concluded that “luxury champagne and mid-priced women’s wear are as different as chalk and cheese”, a comparison that also applies to HÖRST shirts and HORST WATERPROOF cycling bags.

Round 2 Won By Scotch Whisky Association

By In Case Law, Protection & Enforcement, Trademark Oppositions

As a follow up to earlier postings on the ongoing battle between the Scotch Whisky Association (the “Association”) and the Canadian distillers of GLEN BRETON single malt whisky, the Association is reporting today that it has won its appeal to the Federal Court of Canada.

The Trade-marks Opposition Board denied the Association’s opposition to the application by Glenora Distilleries of Nova Scotia to register the mark GLEN BRETON, on the basis that, in the Opposition Board’s view, Canadians would not be confused by the use of the word GLEN in the mark, such that they would think they were purchasing Scotch Whisky. The Association appealed that decision to the Federal Court.

During the appeal, the Association produced evidence that GLEN BRETON was misdescribed in various retail outlets, newspaper articles, pricelists, menus and websites as a Scotch Whisky and the Federal Court agreed with its submissions that Canadian consumers would likely be confused that they were purchasing a Scotch Whisky when that was not the case.

Stay tuned for Round 3 of this battle, as CBC reports that Glenora Distilleries is already planning to file an appeal of the Federal Court decision.

Opposition and Expungement Proceeding Info Added to CIPO’s Online Database

By In Protection & Enforcement, Registration, Trademark Oppositions

Following up on an announcement we told you about a few weeks ago, the Canadian Intellectual Property Office has now added information respecting pending trademark opposition and Section 45 (summary expungement) proceedings to its online database.

Working with the information over the last several days, our experience has been that it is a little out of date, relative to the actual status of proceedings. Nonetheless, CIPO’s decision to enhance public access to this information will be beneficial to trademark owners, brand advisors, and their counsel.

Appeal saves CANADA DRUGS

By In Case Law

The recent Federal Court of Appeal decision in Thorkelson v Pharmawest Pharmacy Ltd. overturned an earlier Federal Court decision which ordered the expungement of the trademarks CANADADRUGS.COM and CANADA DRUGS. On appeal, the court found that the evidence was not capable of establishing that the trademarks in issue were clearly descriptive or deceptively misdescriptive of the character or quality of the services provided by the online phramacy business controlled by the Appellant.

The Federal Court judge who ordered the expungement was found to have decided the case on the basis of his own interpretation of the meaning of the words “Canada” and “drugs” when used in association with an online pharmacy business, as well as the inferences he drew, without any evidence, about what consumers would or would not understand.  The Appeal Court in setting aside the expungement concluded that the phrase “Canada Drugs” did not have any known meaning at the time of the earlier decision and accordingly, was not “clearly descriptive” or “deceptively misdescriptive” under Section 12 (1) (b) of the Trade-marks Act. To come within the prohibition under section 12 (1) (b), the trademark must initially be found to be descriptive and then be found to mislead the public as to the character of the quality of the wares. The test applied is whether the general public in Canada would be misled concerning the product with which the trademark is associated.

Distinguishing Guise or Partly Functional?: Trial Required

By In Case Law

In Crocs Canada Inc. v. Holey Soles Holdings Ltd. the Defendants, Holey Soles, sought summary judgment dismissing Crocs Canada’s claim of copyright infringement and passing-off under the Trade-marks Act. At issue was plastic footwear sold by Crocs Canada. The footwear features distinctive holes placed in the upper portion, as well as side venting.

Prior to 2004, Holey Soles and other companies had been allowed to sell Crocs Canada’s shoes under their own brand names. When that arrangement ended, Holey Soles began selling shoes similar in style, but manufactured for Holey Soles in China.

In seeking a summary judgment, Holey Soles argued that Crocs Canada’s claim disclosed no triable issue because the doctrine of functionality precluded the assertion of any trademark right. Both parties relied on the 2005 “Lego case” (Kirkbi AG et al. v. Ritvik Holdings Inc.) in which the Supreme Court of Canada concluded that the shape of the building blocks was purely functional and not a distinguishing guise.

Here, the Court noted that the circles and semicircles on the shoes did have a functional role namely, to allow air and water in and out of the shoes.

However, the Court also noted that the decision in Lego did not rule out the possibility of trademark protection for a design that was only partly functional. Given this, the Court here concluded the summary judgment application could not succeed. The question whether the design and pattern of the circles and semicircles on Crocs Canada’s shoes was sufficiently functional so as to support distinguishing guise claims, was a question of fact that required a trial.