Clark Wilson

No New Grounds of Opposition on Appeals from the Registrar of Trademarks

By In Case Law, Trademark Oppositions

Sun World International Inc. v. Parmalat Dairy & Bakery Inc. concerned a procedural issue, namely a “novel application” to amend a Statement of Opposition to add section 22 of the Trademarks Act (depreciation of goodwill).

The respondent, Parmalat, had successfully opposed the applicant’s (Sun World’s) trademark BLACK DIAMOND for use in association with fresh fruit and vegetables, narrowed to plums. The Registrar of Trademarks concluded that use of the mark at the relevant date had not been established and that the applicant had not demonstrated there would be no reasonable likelihood of confusion. The applicant then appealed to the Federal Court pursuant to section 56 of the Trademarks Act.

Section 56(5) allows for the introduction of new evidence. On the appeal the applicant filed new evidence and the respondent in turn sought to amend the Statement of Opposition and file new evidence.

The Prothonotary hearing the matter concluded that section 56 of the Trademarks Act allowed fresh evidence on issues that were before the Registrar, but the de novo jurisdiction of the Court under section 56 was otherwise restrained. Thus, the Statement of Opposition could not be amended on appeal.

Olympic Trademark Legislation Closer to Becoming Law

By In Famous Marks, Legislation, Protection & Enforcement

Following up on an earlier story regarding the unique aspects of Bill C-47, we note that the Olympic and Paralympic Marks Act, has now received Royal Assent. We understand that the legislation has not yet come into force by order of the Governor in Council, as required by section 15 of the Act, and that regulations are contemplated.

While similar legislation has been enacted in other Olympic host countries in recent years, the removal of the normal requirement that the Canadian Olympic Committee, the Canadian Paralympic Committee or the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (“VANOC”) prove irreparable harm in order to obtain an injunction has certainly raised some eyebrows in the legal community.

The controversy noted earlier continues, as evidenced in an article in the Globe and Mail, “Olympics Bill Toughens Trademark Muscle“.

Establishing a Trademark’s Distinctiveness: Recent Case Law

By In Case Law, Protection & Enforcement, Registration

In Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai Motor America, the Applicant (the reseller of automotive parts and accessories and the Defendant in an ongoing trademark action brought by the Respondent) sought to expunge five of the Respondent’s trademark registrations: HD Design, HD & HYUNDAI Design, HMC Design, HYUNDAI and SONATA. In 1985 the Respondent’s parent company had assigned three of the marks to the Respondent’s predecessor, which in turn assigned the marks to the Respondents, in 1996, but the assignment was only registered in August 2004. The other two marks were assigned to the Respondent in September 2004.

The Applicant argued that the marks were not distinctive of the Respondent, the relevant date for determining distinctiveness in this case being the date the expungement action was commenced, because the the consuming public was not advised during the 1985 -2004 period of the change in ownership.

The Court noted that distinctiveness is the cardinal requirement of a trademark and it is a question of fact whether a clear message has been given to the public that the wares associated with the mark are those of the trademark owner and not those of another party. Relying on survey evidence, the Court concluded that the purchasing public was not confused about the source of the wares and always understood the Respondent to be the source of the vehicles, even though they were sold through dealers.

Moreover, since 1985 the Respondent and its predecessor, although they had not officially registered the assignment, had built up goodwill through extensive advertising.

The Court distinguished the Respondent’s situation from the earlier cases (Wilkinson Sword (Canada) Ltd. v. Juda and Breck’s Sporting Goods Co. v. Magder ) where a transfer of marks by a foreign parent company to its Canadian subsidiary and sales in Canada by a third party of wares purchased from the parent company resulted in a loss of distinctiveness. In the earlier cases there was no evidence that the source of the goods had become identified with the Canadian subsidiary. In this case, however, the Court was convinced by the expert evidence that the consuming public identified the source of the goods as the Canadian subsidiary.

There was delay in the registration of the assignment, but no reliable evidence of any public confusion that the source of the goods was other than the Respondent.

The Court was, however, convinced that one of the marks had been abandoned, not having been used in Canada for a long time and there being no justifiable excuse for non-use. The other four marks had not been abandoned and thus the Respondent was successful and awarded costs.

CAPTAIN CANUCK Trademarked and Riding the Skytrain

By In Branding

A recent story in the Vancouver Sun explains that the most recent manifestation of the comic book hero, Captain Canuck, is a Surrey British Columbia RCMP officer named David Semple.  Captain Canuck, a complicated character that has appeared in at least two other manifestations since his original introduction in 1975, is the creation of Richard Comely of Cambridge, Ontario.

For anyone else who thinks it is a clever idea, Mr. Comely has already registered CAPTAIN CANUCK as a trademark, has registered the domain name captaincanuck.com and has optioned the film rights.

London Olympic Brand Under Fire

By In Branding, Famous Marks

We recently reported on concerns that the Vancouver Organizing Committee for the 2010 Olympic Games has regarding ambush marketing.  Ambush marketing occurs when persons who are not properly licensed, market their wares and services in a manner which suggests a connection with the Games, often resulting in trade-mark infringement of protected Olympic marks.

Now it appears the that London Organizing Committee for the 2012 Olympic Games may face the opposite problem. The official emblem for the 2012 Olympics, which is a coloured jagged design based on the date 2012, was unveiled on Monday. However, animated footage promoting the brand launch had to be quickly removed from the organizers’ website amid fears it could trigger epileptic fits. The particular footage showed a diver diving into a pool which had a multi-colour ripple effect. The emblem itself, which cost £400,000, is also attracting the wrong kind of attention. Only two days after its launch, nearly 50,000 people had signed an on-line petition to have the logo scrapped, describing it as “ridiculous” and “an embarrassment to London”. The UK Daily Mail newspaper called it “the work of a painting chimp”.

There was controversy when the symbol for the Vancouver Games was first introduced, but that was mild in comparision.

DIRT SHIRT Airs Dirty Laundry

By In Case Law, Trademark Oppositions

In Coastal Culture Inc. v. Wood Wheeler Inc., Coastal appealed a decision of the Registrar rejecting its opposition to the registration of the trademark DIRT SHIRT by Wheeler.  Wheeler applied to register the trademark DIRT SHIRT based upon use in association with its wares and services since May 1997.  Coastal opposed on the basis that Wheeler’s alleged use of the DIRT SHIRT mark was based on prior use of the marks P.E.I. DIRT SHIRT and THE ORIGINAL P.E.I. DIRT SHIRT.Coastal submitted that Wheeler should not be able to remove components of its trade-mark in order to rely on the date of claimed first use.  Coastal further submitted that the words “THE ORIGINAL P.E.I.” and “P.E.I.” formed the first part of the trademarks and were a dominant part of those marks.  Wheeler submitted that the DIRT SHIRT mark was the dominant feature on its wares, in spite of the addition of the words “P.E.I.” and “THE ORIGINAL” and submitted that this minor deviation did not constitute non-use of the mark, and should not disentitle it to registration. 

The Federal Court agreed with Coastal, granted the appeal and refused Wheeler’s application to register the trade-mark DIRT SHIRT.  Although the Federal Court accepted that the words THE ORIGINAL may be a minor variation of the alleged mark, it held that there was no evidence that Wheeler ever sold wares with the DIRT SHIRT mark, absent P.E.I.  The Federal Court concluded that the word P.E.I. had always been an element of the alleged mark, and thus the use of the trade-mark DIRT SHIRT, as a standalone mark, was not established.