Clark Wilson

Trademark Issues at Richmond Night Market

By In Case Law, Protection & Enforcement

Target Event Production Ltd. v. Paul Cheung and Lions Communication Inc. concerns a trademark and copyright claim that arose when the Defendants took advantage of a business opportunity the Plaintiff chose not to exploit.

During the summer months of 2000 through 2007 the Plaintiff operated a popular Asian night market in Richmond, British Columbia.  The market was held on land leased by the Plaintiff, and the Plaintiff in turn leased space to vendors selling a wide variety of food products and merchandise.  The Plaintiff created a logo which included the text “Richmond Night Market Summer Festival” in English and “Richmond Summer Night Market” in Chinese characters.  The market was popularly known as “Richmond Night Market” and the Plaintiff applied for that name as a trademark in English and Chinese, although only the English mark was registered at the time of the hearing of the court action.

In 2007, when the Plaintiff was unable to renegotiate its lease at a favourable price, it announced that the market might not be held in 2008, unless the Plaintiff located an alternative space, which it was unable to do.  The Defendants became aware that the space the Plaintiff had been leasing was available, negotiated a lease, obtained the necessary permits from the City and sought out vendors.  However, the Defendants adopted a name similar to that which the Plaintiff had been using, and copied various documents the Plaintiff had created, including a vendor application form and a plan for the market showing the location of food and merchandise booths.

In lengthy reasons, Madam Justice Simpson of the Federal Court carefully examined the various allegations of passing off and copyright infringement.

The Court found that the Plaintiff had acquired rights in four trademarks:  RICHMOND NIGHT MARKET, RICHMOND NIGHT MARKET SUMMER FESTIVAL and Chinese characters for each of these.  The trademarks were originally merely descriptive, but by January 2007 they were valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness in association with the Plaintiff and the location of the market.  However, the Court also concluded that the distinctiveness was not durable, and the marks lost their distinctiveness and associated goodwill when the Plaintiff failed to open another night market in 2009.

The Court then examined the allegations of passing off, taking into account the elements of confusion listed in section 6(5) of the Trade-marks Act, including the surrounding circumstances.  The Court concluded that the visitors, but not the vendors, would have been confused by the Defendants’ actions and thus passing off was established (the key elements of the tort being the existence of goodwill, deception due to a misrepresentation and actual or potential damage).  However, given that the Defendants lost money in their endeavor, there could be no accounting of profits; further, given that the Plaintiff had not operated a market in 2008 or 2009, the Plaintiff had not lost money as a result of the Defendants’ activities.  However, the Plaintiff did recover damages for copyright infringement for use by the Defendants of the Plaintiff’s site plan and application forms, but the total amount was only $15,000.00 plus costs and interest.

Thus, the Defendants had failed to adequately distance themselves from the Plaintiff’s former business when trying to take advantage of the opportuntity presented by the Plaintiff’s cessation of services.  As a result, the Court found both copyright infringement and passing off, although in the circumstances the damages were small.

Malcolm Parry’s VANCOUVER LIFE Fails to Impress Federal Court

By In Case Law, Trademark Oppositions

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

By In Uncategorized

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

By In Case Law, Registration, Trademark Oppositions

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

By In Case Law, Protection & Enforcement, Registration

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

GLAMOUR’s Appeal Denied

By In Case Law, Famous Marks

The Federal Court of Appeal has dismissed an appeal by Advance Magazine Publishers Inc. with respect to the Federal Court’s earlier finding in Advance Magazine Publishers Inc. v. Farelyco Marketing Inc.  As readers of this blog may recall from our earlier post on this topic, the Federal Court had found no likelihood of confusion between the Farleyco mark GHOULISH GLAMOUR for Halloween cosmetics and eyelash accessories and the Advance mark GLAMOUR used in association with magazines and related products and services.

The Federal Court of Appeal agreed with the finding of the lower court judge that there was “no factual foundation for the proposition that the appellant has expanded the scope of its GLAMOUR mark by having licensed this mark to third parties”, since the third parties were merely using Advance’s GLAMOUR magazine and website to advertise their own products.

No Trademark Expungement Although Language Describing Wares Outdated

By In Case Law, Registration

Loro Piana S.P.A. v. Canadian Council of Professional Engineers is a further example of the importance of providing proper evidence in response to a Registrar’s notice requiring evidence of use within the previous three years pursuant to the summary expungement provisions in section 45 of the Trade-marks Act. The Applicant had, in 1989, registered the trademark ING. LORO PIANA & C. for use in association with “textile fabrics, bed covers, blankets, scarves, mufflers, shawls and gloves”. On the basis of the affidavit submitted by the Applicant, the Hearing Officer concluded that use of the mark in association with “textile fabrics” had been shown, but not use in association with the remaining wares.

On appeal to the Federal Court, Trial Division, the Applicant filed further evidence and the Court, applying a standard of correctness, concluded that use of the mark in association with each of the listed wares had been shown. In doing so, the Court was also satisfied that the sale of “stoles” constituted the sales of “mufflers” and that the sale of “bed covers” or “blankets” constituted the sale of “throws”. The Applicant provided evidence explaining its use of the terms.

The Court referred to the 2006 decision of Levi Strauss & Co. v. Canada (Registrar of Trade-marks) which held that a section 45 proceeding is intended to be a simple, expeditious procedure to get rid of “deadwood” and is not intended to be a meticulous verbal analysis and stated, “where the language used to describe a ware has changed with common usage, but the use of the trade-mark has continued, the use of the outmoded word will be allowed to remain”.

The Court was also satisfied that while the use of the trademark deviated slightly from the trademark as registered, the differences were unimportant and would not mislead an unaware purchaser.