Branding

Non-Use of a Trademark – Evidence of Special Circumstances Required

By In Branding, Trademark Oppositions

Jose Cuervo S.A. de C.V. v. Bacardi & Company Ltd. and the Registrar of Trade-marks was the second time that Bacardi had sought summary expungement, pursuant to section 45 of the Trade-marks Act, of the trade-mark CASTILLO for use in association with rum. This time, the Federal Court Trial Division agreed with the Registrar and expunged the mark for non-use. At issue before the Federal Court was the standard of review and whether special circumstances justified the non-use.

In the course of the earlier expungement action, the Appellant’s predecessor in title to the trademark had, on appeal, produced evidence of a sale of 41 cases of CASTILLO rum on November 21, 1994 to the Ontario Liquor Control Board. Thus, in Quarry Corp. v. Bacardi & Co (1996) 124 F.T.R. 264, the Court concluded the transaction was in the normal course of trade and set aside the Registrar’s decision to expunge. On further appeal, the Federal Court of Appeal upheld the Trial Division’s decision, but commented that a “single sale divorced from all context” would not normally be sufficient use. In other words, a single sale contrived to protect a trademark was not sufficient.

On October 26, 2005, at Bacardi’s request, the Registrar again issued a section 45 notice requiring evidence of use within the previous three years. The manager of Jose Cuervo’s legal department provided an affidavit dated June 23, 2006 attaching the invoice of November 21, 1994 evidencing the sale to the Ontario Liquor Control Board and an invoice of November 24, 1999 evidencing 100 cases sold to the Alberta Liquor and Gaming Commission (neither sale being within the 3-year limit). The manager also deposed that the Appellant had undertaken a new marketing strategy in 2002 to incorporate a secondary trademark, COHIBA, into the label (owned by a related company), but the co-branding strategy had triggered a worldwide dispute, including threatened litigation that was not yet resolved.

The Registrar concluded there was no use within the requisite 3-year period and, while threatened litigation might be a reasonable excuse for a short period, six years was not reasonable. Relying on the reasoning in Scott Paper Ltd. v. Smart & Biggar (previously discussed) the Registrar concluded that there were no special circumstances.

On appeal, Jose Cuervo provided an affidavit stating that it had resumed use of CASTILLO on August 4, 2008 and attached an invoice for a consignment to the Alberta Liquor and Gaming Commission. The Court noted that the standard of review should be resonableness. The new evidence was not such that it would have affected the Registrar’s decision (being evidence of use well after the 3-year limit) and therefore the standard of review was not correctness.

The Court affirmed the Registrar’s decision, noting that Jose Cuervo produced no evidence as to why the co-branding could not be suspended, stating that it ws “illogical to suspend the use of a valid Canadian trade-mark because of a threat of impending trade-mark litigation with respect to a secondary trade-mark”. The decision to suspend use of CASTILLO in Canada was voluntary and a trade-mark dispute over a secondary mark did not constitute exceptional circumstances.

VANOC Unravels Cowichan Sweater Trade-mark Tangle

By In Branding

Members of the Cowichan Tribes had the Vancouver Olympic Committee (VANOC) tied up in knots recently when it accused VANOC of stealing the Cowichan’s traditional sweater design, popularly known as the “Cowichan Sweater”. VANOC had initially asked the Cowichan Tribes to bid on the contract to supply the sweater (which is part of the Team Canada uniform) but chose instead to give the contract to an outside supplier over concerns regarding the Cowichan’s ability to deliver sufficient quantities in the required timeframe.

The Cowichan decried the move, which they saw as an infringement of their well known design. Olympic torch-relay protests were planned, but tensions quickly unravelled when VANOC and the Bay offered the Cowichan a license deal for their sweaters. As a result of these negotiations, Cowichan-made sweaters will now be available at the Bay. Cowichan knitters will be licensed suppliers to the Olympics and will be entitled to display the Olympic logos alongside Cowichan trade-marks.

The Cowichan Band Council owns several trade-marks relating to the Cowichan brand, including both Official Marks and Certification Marks. Read more

More Beer Brand Wars

By In Branding, Case Law, Protection & Enforcement

You can tell that it’s Fall up here in the Great White North.  The weather is turning cooler, the NHL preseason is in full swing and another trademark battle between Canadian brewery icons Molson and Labatts has started. 

A recent report indicates that Molson Coors Brewing Company has launched a lawsuit in Canada’s Federal Court against Labatt Breweries of Canada, claiming that the mountain imagery in new ads for Labatt Kokanee beer infringes the copyrighted images that Molson uses on its Coors Light beer products in Canada.  Molson is reportedly seeking $10 million in damages.

For its part, Labatts says that mountain imagery has been part of its branding for four decades and that the new graphics feature the same Kokanee Glacier that the beer is named after.

Limey! Another Beer Battle a-Brewing

By In Branding, Case Law, Protection & Enforcement

News today that another battle is brewing in Canada’s notoriously litigious beer industry: Waterloo’s Brick Brewing Co. Ltd.–makers of Canadian beer brands Laker, Formosa, Red Cap, Red Baron and Waterloo–has been sued by Anheuser-Busch Co. and Labatt Brewing Co. over its labels for its Red Baron Lime beer product.

In the suit filed August 28 in Federal Court, Anheuser and Labatt take umbrage with the promotional material for Brick’s Red Baron Lime product.  In particular, they allege the labeling scheme used on Red Baron Lime products, including the use of the colours silver and green together with the depiction of a half a lime, will confuse consumers into believing there is a connection with their own Bud Light Lime product, whose label uses the colours green and white together with the depiction of a wedge of lime.

Additionally, Anheuser and Labatt have claimed that Brick’s promotional website for Red Baron Lime–located at lustforlime.com–will lead to consumers to believe there is a connection with the product and the promotional website for Bud Light Lime located at budlightlime.com.  Both sites feature prominent use of the colour green and images of young people in swimsuits. Read more

High Hurdles to Olympic Trade-mark Use

By In Branding, Legislation, Protection & Enforcement

With six months left until the start of the Vancouver 2010 Winter Olympic Games, it seems appropriate to highlight another story involving Olympic trademarks.  The Vancouver Organizing Committee (VANOC) is not the only Olympic Committee vigilantly monitoring the use of Olympics related trade-marks.  A recent bulletin chronicles the steps taken by the US Olympic Committee to protect the word OLYMPIC in the US, including obtaining an injunction against the use by Olympic Supply, Inc. of Maryland of the tradename “Olympic News”.

The bulletin summarizes that, in the US,  specific legislation prevents non-licensed use of the word OLYMPIC unless: (1) there was use with the same goods and services prior to September 21, 1950, or (2) it is obvious that the word refers to the Olympic geographic area named prior to February 6, 1998 and the word relates to goods or services that are marketed in the Olympic area and are not substantially marketed outside of that region.

In Canada, though VANOC has different enforcement tools at its disposal to prevent unauthorized persons from marketing their wares and services in association with the 2010 Olympic and Paralympic Winter Games, the results may be largely the same.   For example, the Olympic and Paralympic Marks Act (which we discussed in a previous post) prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that resembles an Olympic or Paralympic mark.  Lists of prohibited marks (including, of course, OLYMPIC) are set out in Schedules 1 and 2 of the Act.

The Act also prohibits anyone from promoting or otherwise directing public attention to a business in such manner as to lead the public into believing that there is a connection with the Canadian Olympic Committee or Canadian Paralympic Committee.   Perhaps most notably, this Act permits VANOC to obtain an interim injunction against alleged infringers without proof of irreparable harm, which is a significant and unprecedented advantage. Read more

Free iPhone Bike App Sparks Dispute

By In Branding, Domain Name Disputes, Protection & Enforcement

The Montreal Gazette and La Presse each recently reported on the decision by the Stationnement de Montréal (“SdM”) to assert intellectual property rights against the developer of an iPhone application which pinpoints the locations of public-use bicycles made available for rental by the SdM.

Sparko.ca developed a free iPhone application called BixiMobile, together with a supporting webpage located at www.biximobile.com, to assist online users with finding Bixi bike locations throughout Montreal. The application launched on Sunday; by Tuesday, Sparko had received a cease-and-desist letter from Stationnement de Montréal’s counsel directing the company to withdraw the application, and hand over the domain.  Perhaps more interestingly, it appears SdM have additionally directed Sparko to hand over the code that supports the iPhone application. Read more

GLAMOUR Mark Fails to Dazzle Federal Court

By In Branding, Case Law, Famous Marks, Trademark Oppositions

The Federal Court recently handed down its decision in Advance Magazine Publishers Inc. v. Farleyco Marketing Inc., an appeal from an earlier decision by the Registrar of Trade-marks that 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.  New evidence was filed that went significantly beyond that which had been considered by the Registrar, so the Court considered the matter afresh.

The Court found that both marks were inherently weak as both were suggestive of their wares and services but considered whether Advance’s GLAMOUR mark had “an acquired distinctiveness through use and promotion… sufficient to warrant a wide scope of protection”.

The Court determined that while the GLAMOUR mark was well known in Canada in association with magazines (and thus had acquired distinctiveness), it was not associated with all wares and services that make up the glamour industry.  Advance argued that the wares of both parties belonged to the same general class of goods, namely cosmetic, fashion and beauty, but the Court found: “Just because cosmetic products are advertised, discussed, or otherwise featured in Advance’s magazine and related wares does not mean…  that any acquired distinctiveness of the GLAMOUR mark should extend to cover such products.”

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