Clark Wilson

Motion For Particulars: Part of a Larger Trademark Battle

By In Case Law, Protection & Enforcement

A Federal Court decision on a procedural point is apparently just one more step in a larger legal battle, according to an article entitled “Despite lawsuit, restaurateur tries again under a new name, familiar format” in the March 29, 2008 edition of the The Globe and Mail.

In Mövenpick-Holding v. Inter Management Services Limited et al. the Federal Court judge agreed with the prothonotary’s decision dismissing the Plaintiff’s, Mövenpick-Holding’s, motion for particulars and to strike certain paragraphs of the defence and counterclaim, noting that a discretionary order of a prothonotary ought not to be disturbed on appeal unless it is clearly wrong, having been based on a wrong principle or misapprehension of the facts.

Mövenpick-Holding brought the action alleging violation of its MARCHÉ trademarks covering restaurant services after the Defendant company and its principles, the Reicherts, opened a restaurant under the name and trademark, INNISFIL HEIGHTS MARCHE, set up like a “marché” or market, where customers visited various food stations, a system allegedly similar to the Plaintiff’s. Read more

Official Marks: Federal Court Confirms Clear Evidence of Use Required

By In Case Law, Registration

In a recent decision, See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee, the Federal Court of Appeal agreed with the decision of the application judge which we reported on last May.

The Court of Appeal also concluded that the Canadian Olympic Committee (“the COC”) had not proved use of its official marks, “See You in Torino”, “See You in Beijing” and “See You in Vancouver”, because there was no clear evidence of a public display of the marks at issue and the COC’s evidence on this point was equivocal at best.

The appellant, See You In – Canadian Athletes Fund (“the SYI Fund”) argued, even though it was successful before the application judge, that the judge should not have dismissed its argument that the COC was a licensee of the International Olympic Committee and could therefore not register the official marks. The Court of Appeal declined to consider this argument noting that where an appellant obtains the relief sought, the appellant is not normally allowed to appeal the judge’s reasons. A decision on this point would have been useful to the SYI Fund, and presumably others seeking to challenge official marks registered by the COC.

Apple To Launch iPhone In Canada Amid Trademark Dispute

By In Trademark Oppositions

Notwithstanding an ongoing trademark dispute, Apple Inc’s iPhone is scheduled to launch in Canada later this year. The service will be offered by Rogers Communications Inc., the only Canadian carrier using the Global System Mobile (GSM) communications standard needed to run iPhone. The device has sold more than five million units worldwide since its launch in 2007.

We previously reported on the challenges facing Apple in seeking to register the IPHONE trademark in Canada. Apple applied to register the trademark in October of 2004 on a proposed use basis but the application was opposed by Comwave Telecom Inc., who claim to have been using the trademark in Canada since June 2004.  Comwave filed an application to register the trademark in November 2005. If Comwave can prove that it has prior use of the trademark, and that Apple’s IPHONE trademark will cause confusion in the market place, then Apple’s application could be refused.

More recently, both Apple and Comware filed additional applications in Canada and two new applications to register trademarks containing the term iPhone, iPhoneNow.ca and iphonemail.ca, have been filed by third parties. A Delaware-based company called Ocean Telecom also applied to register an iPhone trademark in July 2007 but this application was subsequently assigned to Apple.

Apple was previously involved in a dispute with Cisco Systems in the United States regarding ownership of the IPHONE trademark. The dispute was settled when the parties agreed to share the trademark.

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.

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.