Clark Wilson

Social Networking & Anne of Green Gables

By In Branding, Famous Marks

Anne of Green Gables is widely regarded as a Canadian cultural icon. The wholesome image of the redheaded Anne with a straw hat and pigtails is synonymous with Prince Edward Island, the location of the book written over 100 years ago by L.M. Montgomery. The province jointly owns the Anne of Green Gables trademark with the heirs of L.M. Montgomery and have even established the “Anne Authority” to ensure that Anne’s image is properly protected.

According to a recent news report, a new Canadian children’s website, www.annesdiary.com, has come under wrath for using the unauthorised image of Anne to provide a social networking site for girls between the ages of 6 – 14. The website features an avatar in the likeness of Anne, claiming to be inspired by the much loved Anne of Green Gables novels. A spokesman for the website said that the trademark holders were approached but declined to give their permission to use the Anne image. Prince Edward Island Development Minister said that it takes violations of the trademark very seriously and would pursue the matter vigorously.

Despite the controversy, many parents will welcome the new website because it claims to be one of the most secure websites for children in the world. The site takes the protection of web content for children very seriously and is secured by the use of a biometric fingerprint sensor. According to the website, once a child has enrolled on the site, only they can access their online secure bedroom and diary. Members receive a fingerprint reader using a one-time authentication code thereby registering their identity on the secure database. The fingerprint matrix itself is encrypted and transmitted securely across the Web to authenticate users. Even if someone gets a hold of the fingerprint matrix, it will be undecipherable and unusable to them.

Parents may also use the secure option to register their child on the site by providing details of a Sponsor who is able to verify the age and identity of the child. In order to be eligible, a Sponsor must be known to the child, be a resident of the country in which the registrant lives, and be a recognised professional from the website’s list. Parents must provide an e-mail mailing address and telephone number where a sponsor can be contacted for verification.  Sponsors are e-mailed a one-time Authentication Code which they must use to activate the child’s Anne’s Diary account. This code is used when the child first registers her fingerprint to initialize her account.

A spokesperson for the website said they would wait to hear from the Anne Authority before deciding on the next step.

POM-POM Survives Section 45 Scrutiny

By In Case Law

We recently reported on a number of section 45 decisions, the purpose of which is to remove “deadwood” or outdated registered trademarks from the Register. In such proceedings, the burden of proof is on the registered owner of the trademark to demonstrate “use” during the previous three year period in order to maintain the mark on the register.

In the recent Federal Court of Appeal case of Brouillette Kosie Prince and Orange Cove-Sanger Citrus Association, the applicant (the party challenging the registration) appealed the decison of the Registrar with respect to a proof-of-use proceeding. The applicant objected to the quality of the evidence submitted by the respondent (the owner of the registration) both before the Registrar and before the Federal Court of Appeal. The respondent was a grower member of Sunkist Growers, a cooperative that assists in the distribution of its members’ products including invoicing such products to buyers on behalf of its members. The Registrar maintained the registration of the respondent’s mark POM-POM on account of its appearance on packaging when the wares were sold to Canadian distributors. The Federal Court held that it was not necessary for the mark to be seen by the consumers who purchased the wares from the respondent’s customers and the Court of Appeal agreed with this conclusion.

The Federal Court of Appeal held that it need only decide on the issue de novo when additional evidence is adduced that would materially affect the Registrar’s finding of fact or the exercise of his discretion. If new evidence added nothing of significance, but was merely repetitive of existing evidence, the issue was whether the Registrar’s decision could survive a probing examination. As the evidence submitted on the appeal did not raise any new issues, the case was dismissed given the reasonableness of the Registrar’s decision in maintaining the registration of the POM-POM mark.

World of Webkinz

By In Branding

Webkinz, the little stuffed animal toys which may be activated through a code to enter the on-line Webkinz world, are drawing more and more children and tweens into the realm of virtual reality. In the past, many companies have been reluctant to charge children for website access for fear of alienating parents. But the Toronto based Canadian company Ganz may have solved this problem through the powerful brand that is the Webkinz cuddly toy and on-line environment.

Visitors to the free Webkinz website  spent more than one million hours there in November, with the average child clocking up an average of two hours per visit. However, in order to fully access the Webkinz world, parents must pay approximately $15 for a Webkinz real-world pet toy which children may then “adopt” and care for on-line. Users give each toy a gender and a name and can spend “kinz cash” to buy food, clothes and furniture or even to take neglected pets to a virtual doctor.

Ganz have now launched a line of accessories such as cosmetics and clothing items with codes that redeem a prize for the pets’ on-line avatars in order to ensure that the company capitalizes on children’s web time.

Judging A Wine By Its Label: A Trademark Issue

By In Case Law, Registration, Trademark Oppositions

In Sociedad Agricola Santa Teresa Ltda. et al. v. Vina Leyda Limitada, the Federal Court considered what constitutes a place of origin for wine such that the place name cannot be registered as a trademark. At issue was section 12(1)(b) of the Canadian Trade-marks Act which states that a trademark is not registrable if it is “clearly descriptive or deceptively misdescriptive” of the “place of origin” of the wares or services.

Vina Leyda Limitada applied in 2001 to register LEYDA as a trademark and on the evidence before the Registrar in an opposition to such application, the Registrar allowed the application. The Sociedad appealed the Registrar’s decision under section 56 of the Act.

The Court allowed the appeal and held that LEYDA could not be registered. According to Harrington J., “Once the Registrar found as a fact, as he did, that Leyda is a wine producing region in Chile, as a matter of law he was required to conclude on the record before him that the opposition was well founded.” Of concern was the fact that if the registration stood the applicants, wine producers from the Leyda Valley, would not be able to refer to that fact on their labels or in their promotional literature and might be limited to calling their wine Chilean red or white. The judge also noted that “producers from a specific region want to promulgate their area in the belief that their wine is superior to the wine of that country as a whole”. A general appellation could lead a consumer to believe a wine is “plonk”.

In reaching his decision Harrington J. relied on a 1970 Supreme Court of Canada decision, Home Juice Co. v. Orange Maison Ltee, for the proposition that “a shrewd trader should not be permitted to monopolize the name of a foreign wine district in Canada by registering it as a trademark”. He also distinguished Prosciutto di Parma v. Maple Leaf Meats Inc. in which the Federal Court of Appeal refused to expunge the trademark PARMA since it had been used in Canada for 39 years and registered for 26. LEYDA had not been in use in association with wine in Canada at the time the application was filed.

On an appeal under section 56 the parties may introduce evidence that was not before the Registrar and the Sociedad put forward that “Vallee de Leyda” was an appellation of origin in Chile. This evidence was taken into account, but Harrington J. specifically noted that whether a name signifies a geographical area under section 12 of the Act and whether that area produces wine are not contingent upon a governement decree.

Finally, it is worth noting that Harrington J. may very well know something about wine. He not only references the origin of the word “plonk” (“There are different legends as to the origin of the word ‘plonk’. The one I prefer is that a Monsieur Plonque was the purveyor of cheap wine to British Troops in World War I.”), but he also begins his reasons stating, “One may not be able to judge a book by its cover, but one should know something about a bottle of wine from its label; the more the better.”

Hockey Nostalgia and Trademarks in Québec

By In Branding, Case Law

A recent discussion of the Federal Court of Appeals shows that Québec City’s former National Hockey Team, the Quebec Nordiques, continues to attract the nostalgia of the city’s population.

In Accessoires D’Autos Nordiques v. Canadian Tire Corp., the Federal Court of Appeal refused to overturn a Federal Court decision and allowed Canadian Tire’s application to register the mark NORDIC & Snowflake Design for use in association with tires.

Accessoires D’Autos Nordiques had successfully opposed Canadian Tire’s application before the Trademark Opposition Board, on the basis of Accessoires’ previously registered and previously used NORDIQUES trademark and trade-name, used in association with automobile parts and accessories.

The Opposition Board refused Canadian Tire’s application on the basis that the trademarks NORDIC and NORDIQUES were phonetically identical to a monolingual French speaking person, and accordingly, constituted confusion under section 6(5) of the Trade-marks Act. The Trial Division and the Court of Appeal concluded, however, that when considering the possibility of confusion between two trademarks, each particular trademark must be considered as a whole and not broken into its component parts to highlight differences. The Appeal Court agreed that the evidence presented by Canadian Tire showed that the trademark NORDIC evoked amongst the French speaking population in Québec, the name of the now-defunct Naitonal Hockey Team league, Quebec Nordiques, and not the tire-concessionaire’s trade-mark NORDIQUES. The Appeal Court held that as the two trademarks were dissimilar in appearance and brought to mind different ideas, on the balance of probabilities, registration of the NORDIC trademark was unlikely to create confusion.

The decision highlights the danger in choosing a trademark which is already well-known in respect of other wares or services. As the Appellant in this case discovered to its peril, the general public associated the trade-mark with Québec City’s former National Hockey Team, rather than with the Appellant’s wares and services.

More On Section 45

By In Case Law, Registration, Trademark Oppositions

Last week we reported on a decision of the Federal Court, Trial Division. The Federal Court of Appeal has also handed down a recent section 45 decision referring to the section as the “‘use it or lose it’ provision for removing ‘deadwood’ from the Register”.

In Bereskin & Parr v. Fairweather Ltd. the Court refused the appeal on the basis that the trial judge’s application of the law to the undisputed facts disclosed neither a palpable and overriding error on a question of mixed fact and law, nor a readily extricable error on a question of legal principle.

The trial judge had allowed the appeal from the Registrar of Trade-marks decision to expunge the trademark TARGET APPAREL for use in association with “men’s clothing, namely, suits, pants, jackets and coats”. The trademark had been acquired by Fairweather Ltd. from another company. In front of the Registrar, Fairweather had failed to produce evidence demonstrating a serious intention to use the mark. Such evidence can constitute special circumstances and excuse the absence of actual use in the preceding 3 years. However, when Fairweather appealed under section 56 of the Trade-marks Act, it filed new evidence (which is allowed on a section 45 appeal) and provided the judge with preliminary design and artwork showing an ongoing intention to use the mark. There was also evidence of sales after the date of the section 45 notice that gave credibility to the evidence of an intention to use. Thus, use was established.

Clear Evidence of Use Required: Section 45 Appeal Allowed

By In Case Law, Registration

Section 45 of the Trade-marks Act allows the Registrar, at the written request of any person, to give notice to the registered owner of a trademark requiring the registered owner to furnish, within three months, an Affidavit or Statutory Declaration showing that the trademark has been used in association with each of the wares and services specified in the registration during the preceding three-year period.

In 88766 Canada Inc. v. Monte Carlo Restaurant Limited Justice Pinard of the Federal Court allowed an appeal from the decision of the Registrar of Trade-marks and expunged the mark. The mark at issue was MONTE CARLO that was registered for use in association with the wares “pizza and spaghetti” and the services “operation of a restaurant, food take-out and catering, operation of a bar and operation of a banquet hall”. On the basis of the Affidavit evidence furnished by the owner of the mark, the Registrar struck out only “operation of a bar and operation of a banquet hall”.

The Court first noted, given there was no new evidence filed on the Appeal (an option where there is an appeal from a section 45 mark), that the standard on the Appeal was one of reasonableness. The Court then reviewed the Affidavit furnished by the registered owner and concluded that it did not clearly establish use during the relevant period. Thus, the mark was struck from the registry.

It was not sufficient to simply establish that advertising materials had been distributed in the previous five years.  The Court noted that there was nothing specifically stated regarding distribution during the preceding three-year period and noted that it was up to the owner of the mark to provide clear proof regarding use. The Court also referred to BMW Canada Inc. v. Nissan Canada Inc., a case that we previously commented on, for the proposition that the appearance of a trademark in an advertisement does not constitute use in association with wares unless the advertisement is distributed at the time of the transfer of the property in or the possession of the wares.