February 2009

The Need for Proper Evidence of Trademark Use

By In Case Law, Protection & Enforcement

A previous blog commented on the importance of proper evidence of use when the registered owner of a Canadian trademark is faced with a potential expungement pursuant to section 45 of the Trade-marks Act.

Curb v. Smart & Biggar, on appeal to the Federal Court from a decision of the Registrar is a further illustration.  Mike Curb, a well-known American record producer was the registered owner of CURB RECORDS for use in association with wares described as “audio and audio-visual recordings; printed materials, namely posters; clothing, namely t-shirts and caps” and services described as “entertainment services provided by pre-recorded and live music; and the production, publishing and distribution of audio and audio-visual recordings”.  On the basis of the Affidavit evidence filed by the Senior Vice-President of Curb Records, the Registrar concluded there was use in association with audio and audio-visual recordings, but insufficient evidence of use in association with the other wares and all the services during the three years preceding the section 45 request. Read more

JAVACAFÉ: Clearly Descriptive in the French Language

By In Case Law, Registration, Uncategorized

Following up on an earlier blog posting, we note that the Supreme Court of Canada has refused leave to appeal from the Federal Court of Appeal’s decision in Shell Canada Limited v. P.T. Sari Incofood Corporation. 

The Court of Appeal earlier concluded that JAVACAFÉ when sounded as two words was clearly descriptive, in French, of the claimed wares, namely, coffee products.

Cybersquatter Targets MP Keith Ashfield

By In Domain Name Disputes, Domain Names, Trademark Oppositions

CBC News reported recently that Conservative MP Keith Ashfield registered the domain name keithashfield.ca during the 2008 election.  When Mr. Ashfield failed to renew the registration, it was quickly scooped up by an apparent cybersquatter.  Cybersquatters (as they are commonly known), often register famous names or trade-marks in order to benefit from the associated goodwill to drive traffic to their websites.  Often these websites are “pay-per-click” sites which generate revenue for the cybersquatter.

The website now resolves to a site offering details on how to get prescription drugs without a prescription.  Exactly who holds the domain name is unclear, as this information has been privacy protected by the registrar, Namespro Solutions Inc., at the request of the owner. Under the current CIRA privacy policy, personal information of owners who are individuals is permitted to be cloaked, even if the domain name links to a commercial site. Read more

Oily Loonie offside Official Mark?

By In Branding, Famous Marks, Legislation

Dogwood Initiative, a British Columbia environmental group, is facing legal action from the Royal Canadian Mint over a campaign to add one million oily loon decals to loonies in circulation.  (For our international readers, “loonie” is the commonly used term used to refer to the Canadian one dollar coin.)  Dogwood’s campaign is intended to create awareness about the risks of oil tanker traffic on BC’s north central coast, in the hopes that legislation might be passed banning such traffic.

The Royal Canadian Mint has alleged Dogwood Initiative’s activities bring it offside the Currency Act, but query whether the Mint may also have an action under the Canadian Trade-marks Act (the "Act"), for infringement of the Mint’s Official Mark rights in the loonie.

Section 9 of the Act deals with Official Marks, and in particular, it prohibits the adoption in connection with a business, as a trade-mark or otherwise, of any mark which consists of, or so nearly resembles as to be mistaken for, an Official Mark. Read more

In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine

By In Case Law, Registration

The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material mistatement in the processing of a registation renders the entire resulting registration void.

In Parfums de Coeur, Ltd. V. Asta the respondent individual filed a trademark application in 1999 based on proposed use of the trademark BOD in association with wares identified as “hair care, namely shampoo conditioner, treatment, styling aids, hairsprays, hairpolish, perms, … .” The respondent subsequently filed a Declaration of Use signed February 12, 2004 declaring that by himself or through a licensee he had commenced use of the trademark in association with all the listed wares. The applicant began selling body sprays in Canada in association with the trademark BOD MAN as early as 2002, but when it sought registration in Canada, the respondent’s mark was cited against it. When challenged regarding his Declaration of Use, the respondent amended the list of wares to read only “hair care, namely shampoo, conditioner”. Read more