There are two trade-mark cases from the Canadian Courts in September 2006 of interest to readers.

In Cafe’ Do Brasil, S.p.A. v. Walong Marketing Inc., the Federal Court agreed with the applicant, an Italian food products company, and expunged a registered trade-mark owned by the respondent. The respondent’s registered trade-mark, KIMBO, was identical to the trade-mark that the applicant had obtained a registration for in Canada in 1990 and had used in Canada since 1992. In 2003, the applicant filed an application to expand the registration of its KIMBO trade-mark, but was informed that the Canadian Trade-mark Office objected to the registration of its KIMBO trade-mark in relation to the additional wares because it was confusing with a KIMBO trade-mark owned by the respondent. The record disclosed that expungement proceedings had been initiated in 1999 which resulted in the expungement of the applicant’s KIMBO trade-mark. However, the applicant had not received actual notice of the expungement proceedings in 1999. The Court held that the application was properly before it since the applicant met the definition of an “interested person”, having not received actual notice of the expungement proceedings. The Court further held that at the time of the first use of KIMBO by the respondent’s predecessor company in 1995, there was a reasonable likelihood of confusion between the two parties’ trade-marks. As a result, the respondent was not entitled to register its trade-mark and it was therefore invalid and was expunged from the Register.

In Community Credit Union Ltd. v. Registrar of Trade-marks, the Federal Court refused to set aside the Registrar of Trade-marks’ refusal to register the trade-mark COMMUNITY CREDIT UNION. With regards to the “clearly descriptive” ground of opposition, the Court held that it was not unreasonable for the Board not to have considered this ground. The Court further stated that if they were wrong in this regard, it was satisfied that the mark was clearly descriptive of the character of the services to be provided by the applicant in association with its use, and that registration of the mark COMMUNITY CREDIT UNION would remove the word “community” from the vocabulary available to others providing credit union services. With regards to distinctiveness, the Registrar had concluded that the mark was inherently non-distinctive because there were numerous credit unions in Canada that used “Community Credit Union” in their trade-marks or trade names. While a mark may become distinctive in a particular geographical area, the court held that there was considerable evidence before them and before the Registrar that the mark was commonly used within the trade in every region and that circumstances pointed to an absence of distinctiveness.

Summer is a quiet time for the Canadian courts. Looking back at July and August, there are three decisions that deserve a brief summary:

In Ratiopharm Inc. v. Laboratories Riva Inc., the Federal Court dismissed the plaintiff’s action alleging infringement of its registered Canadian trade-mark. The plaintiff sold a codeine based cough syrup under the mark CALMYLIN, while the defendant sold a similar codeine based product under the mark DAMYLIN. At trial there were two issues to be heard: (1) Did the plaintiff have standing to sue? and (2) Is DAMYLIN likely to be confused with CAMYLIN within the meaning of section 20 of the Trade-marks Act? With regards to standing, the court held that the license requirements of the Trade-marks Act had been satisfied and as such and the plaintiff had standing to commence an action for trade-mark infringement. With regards to the issue of confusion, the court held that there was no likelihood of confusion between CAMYLIN and DAMYLIN in the mind of the average consumer, even if hurried. The plaintiff’s action for trade-mark infringement was dismissed.

In DJang v. Ji, a decision of the British Columbia Supreme Court, the plaintiffs sought an interlocutory injunction restraining the defendants from marketing certain herbal products under names for which the plaintiffs had registered Canadian trade-marks. The plaintiffs also alleged passing off and a breach of the British Columbia Trade Practice Act. The Court applied a two-pronged test for granting interlocutory injunctions, holding that while there was a fair question to be tried, the balance of justice and convenience did not favour the injunctive relief sought by the plaintiffs since there was no convincing evidence of the totality of factors to establish irreparable harm. In the end, the Court declined to grant the interlocutory injunction.

Tradition Fine Foods Ltd. v. Group Tradition’l Inc., was an appeal to the Federal Court from a decision of the Trade-marks Opposition Board (the “Board”). The Board had rejected the applicant’s opposition to the respondent’s registration of BAGEL TRADITION’L and design. Upon reviewing the Board’s decision, the Court held that it was open to the Board to dismiss the applicant’s opposition on the ground of confusion. The Court found there to be almost no points of resemblance between the applicant’s TRADITION and TRADITION FINE FOODS trade-marks and the respondent’s proposed trade-mark when the trade-marks were considered in their totality. In the Court’s view, the Board had properly considered all the factors set out in subsection 6(5) of the Trade-marks Act. The Court further held that the applicant had not met its burden of proving that the word “TRADITION’L” or the imagery of the bagel and wheat sheaves was clearly descriptive of the intrinsic quality of bagels.