The Federal Court recently issued its decision in Sim & McBurney v. Malcolm Parry. This case was an appeal by Sim & McBurney from a decision of the Trade-marks Opposition Board, relating to Sim & McBurney’s Section 45 challenge to society columnist Malcolm Parry‘s trade-mark VANCOUVER LIFE. Toronto Life Publishing Company Limited (represented by Sim & McBurney) has a pending application to register VANCOUVER LIFE for similar wares and services.
Under Section 45 of the Trade-marks Act, at the request of a third party, the Registrar may require a trade-mark owner to show that the registered mark has been used in association with the wares or services specified in the registration within the past three years. The Registrar found that there had been no use of the trade-mark VANCOUVER LIFE in association with the specified services and most of the specified wares, but maintained the registration in part, finding there had been use of the trade-mark in association with “editorial/advertising inserts into publications and periodicals”. Sim & McBurney appealed this decision and sought to have the trade-mark expunged in association with all registered wares. Read more
Blawg Review #251
This Blawg Review comes to you from the Canadian Trademark Blog, resident in Vancouver, British Columbia – a blawg run by several of the talented trademark law practitioners at Clark Wilson LLP.
Our city, Vancouver, is one that knows a lot about hosting – whether it be blog carnivals, tourists, or currently, the Winter Olympics. And, given all the excitement on the streets around us right now, we thought it appropriate that we take “Vancouver: Olympic Host City” as a theme.
As Vancouver stepped onto 
the world stage this past weekend to embrace the pandemonium that comes with hosting the 2010 Olympic and Paralympic Winter Games, we cannot be help but reflect on the hard work our city has put in through several years of preparations to welcome the world in a fashion best described as “Citius, Altius, Fortius”. As athletic enthusiasts, corporate representatives, government officials and athletes themselves continue to pour in from around the globe, Vancouver will be in the spotlight over these next two weeks – much like the athletes themselves, delivering the performance of a lifetime. (And of course, we want to keep in mind that some of those athletes may be lawyers too, as noted by Business Insider Law Review!) Read more
Evidentiary Omissions Lead to Trademark Appeal
The recent Federal Court case of Sanders v. Smart & Biggar Intellectual Property and Technology Law is a good example of the difference that well prepared evidence can make. The Trademarks Opposition Board expunged the applicant’s trade-mark, “UGGLY BOOTS” pursuant to section 45 of the Trade-marks Act because the applicant had not demonstrated use of the trademark in Canada. The Board found that the applicant’s evidence was “rampant with ambiguities” and omissions.
The applicant appealed to the Federal Court pursuant to section 56 of the Act. The applicant was allowed to present new evidence and the appeal was treated as a new hearing. The applicant’s new evidence consisted of the affidavits of five clients, which all showed the transfer of wares with the trademark. The affidavits also attached invoices proving the transfers took place. The Court found that this new evidence went beyond mere allegations of use, noting that the applicant was only required to produce “evidence of a single sale, whether wholesale or retail, in the normal course of trade” so long as the sale was not deliberately manufactured or contrived to protect the registration of the trademark. In applying the principle of use “in the normal course of trade”, the Court also noted that good faith is presumed when there is no evidence challenging the affiant’s credibility. Thus, the Court found in the applicant’s favour, something the Board might have done if better evidence had been presented at first instance.
Proposed Practice Notices: Professional Designations and Abbreviations, Acronyms and Initials
The Canadian Intellectual Property Office has initiated two short consultations (January 29 to February 28, 2010) for proposed Practice Notices regarding section 12(1)(b) of the Trade-marks Act. Section 12(1)(b) provides that “a trademark is registrable if it is not, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”. The two proposed Practice Notices address the application of 12(1)(b) to professional designations and to abbreviations, acronyms and initials.
If research discloses that an applied for trademark consists of a professional designation, the examiner will apply a first impression test to determine whether a consumer would assume the goods and services are produced by a professional with a designation similar to the applied-for trademark and if so, the trademark will be unregistrable, being clearly descriptive of the persons employed in the production of the wares and services. The addition of an abbreviation, acronym or initial to the professional designation will not make the trademark registrable.
A trademark that consists of or contains an abbreviation, acronym or initial will be considered unregistrable if considered as a whole and if as a matter of first impression the abbreviation, acronym or initial is clearly descriptive or deceptively misdescriptive of the wares and services. Moreover, the addition of an abbreviation, acronym or initial to a clearly descriptive word or phrase will not render it registrable as a trademark.
The changes arise in light of a recent Federal Court decision, College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Nature Medicine College of Canada, that considered some 39 trademark applications and registrations containing abbreviations, acronyms and initials and allegedly confusing with certain professional designations. Read more