Case Law

Maple Leaf Melee

By In Case Law, Foreign Protection

A recent CTM case concerning an iconic Canadian symbol caught our attention.

The dispute between American Clothing Associates SA and the Office for Harmonisation in the Internal Market (“OHIM” – the body that administrates the Community Trademark System) focuses upon the Canada’s well-known maple leaf symbol–stylized versions of which appear as part of our own logo, above.

The case considers the extent to which national symbols are afforded protection under the Community Regulation 40/94 and under the Paris Convention.  American Clothing Associates SA (“ACA”) originally sought to register a logo made up of the Maple Leaf symbol, with the letters RW located beneath, for use in association with both goods and services.

OHIM’s examiner refused the initial application concluding that the mark as a whole would improperly connote an association with Canada.  ACA appealed and lost again, the Appeal Board noting that the inclusion of the RW element in the mark did not avoid the application of Article 6ter of the Paris Convention which prohibits the use of marks incorporating State indicia without consent. Read more

Osteoporosis Marks a Bone of Contention: NPS Pharmaceuticals v. Biofarma

By In Case Law, Trademark Oppositions

The Federal Court recently issued its judgment in NPS Pharmaceuticals, Inc v. Biofarma, Société Par Actions Simplifiée.   This case was an appeal by NPS from a decision of the Trade-marks Opposition Board, which had refused NPS’s application to register PREOS, on the basis that it was confusing with Biofarma’s prior application for PROTOS.   Both marks were associated with osteoporosis medications.

The Board analyzed the facts with respect to the criteria laid out in Section 6(5)  of the Trade-marks Act and also considered the issue of drug errors and whether or not Biofarma would actually use the PROTOS mark.   When considering the nature of the wares and the channels of trade for the two marks, the Board found that although the PREOS and PROTOS drugs would be administered in very different forms (PREOS being self injected and PROTOS being dissolved in a glass of water) and could be aimed at different groups of patients, the description of the wares in the applications for both drugs covered identical wares and were not limited as to physical form, dosage and mode of application.   The Board also found a “fair degree of resemblance” between the marks, rejecting the “microscopic analysis” by NPS regarding the differences in appearance and sound of the marks.   On the issue of possible drug administration errors, the Board held that this was not directly relevant to the issue of confusion.   In addition, the Board found that Biofarma was entitled to rely on its allowed application for PROTOS (which was in good standing) to oppose PREOS, despite uncertainty surrounding whether the PROTOS mark would ever be used in Canada.   Based on all the factors considered, the Board held that the PREOS mark was confusing with PROTOS. Read more

Breweries Battle Over Ontario

By In Case Law, Protection & Enforcement

In yet another Canadian trademark dispute involving alcoholic beverages – seems to be a bit of a trend lately – Ontario based Brick Brewing Co. Limited has issued an announcement that Labatt Brewing Company Limited has commenced an action in Canada’s Federal Court against Brick, alleging that Brick’s RED BARON trademark infringes Labatt’s BRAVA trademark.  While these marks, taken by themselves, seem quite different, the dispute focuses on the similarities between the labels and packaging used with these products, along with the similarity of the bottles.

In an interesting side bar, Labatt has a significant ownership interest in Ontario’s “The Beer Store” which is by far the largest retail channel for beer in Canada’s most populous province.  As such, Labatt indirectly receives fees from Red Brick in order to display its RED BARON lager in a lobby display program at The Beer Store, as well as fees to sort RED BARON bottles, which are non-industry standard.  Brick argues that because of the set up of The Beer Store, where more popular brands such as those sold by Labatt are featured more prominently, consumers generally have to ask for Brick’s products, such as RED BARON, by name, thereby lessening any likelihood of confusion.

Counterfeit Goods: Another Substantial Award of Damages

By In Case Law, Protection & Enforcement

This blog previously reported on Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd., which, along with Louis Vuitton Malletier S.A. v. Yang and Microsoft Corp. v. 9038-3746 Quebec Inc., evidences a recent trend toward substantial damage awards in counterfeit goods cases. The April 2009 decision in Microsoft Corp. v. PC Village Co. Ltd. follows the approach taken in these cases and appears to confirm the courts’ commitment to cracking down on the sale of counterfeit goods in Canada.

In this most recent case, Microsoft Corporation brought an action for copyright and trademark infringement against corporate defendants known as PC Village Markham and PC Village Downtown, which were computer retailers in the Greater Toronto Area. The action was also brought against two employees that worked in sales at these stores. Evidence provided by the plaintiff’s investigators showed that both retail locations engaged in selling computers with unlicensed Microsoft software loaded onto the hard drives. The individual defendants served a Statement of Claim, but did not file it and proceeded to negotiate a settlement which was never finalized. Microsoft then brought a motion for default judgment. Read more

Court Distills Wisdom from Vodka Trade-mark Appeal

By In Case Law

The Federal Court of Appeal recently delivered its decision on the appeal in SC Prodal 94 SRL v. Spirits International B.V., as well as on a motion to quash the appeal.

The Respondent (Spirits) had applied to the Federal Court to expunge the Appellant’s (SC Prodal’s) mark STALINSKAYA for Vodka from the register.  In the meantime, the Appellant had submitted a new application for the same trade-mark and subsequently cancelled the original mark.  By the time the Respondent’s application for expungement of the original mark was considered, it was no longer on the register and consequently the Appellant did not file a notice of appearance.  Although the original mark had been cancelled, the applications judge allowed the Respondent’s application and went on to issue a declaration that the trade-mark STALINSKAYA was not distictive as it was confusing with the Respondent’s trade-marks, including STOLICHNAYA for Vodka.  The applications judge ordered a stay of proceedings and granted a “permanent mandatory injunction” prohibiting the Registrar of Trade-marks from considering the Appellant’s new STALINSKAYA application.  The Appellant appealed and the Respondent moved to quash the appeal on the grounds that the Appellant had waived its rights in the court below by failing to file a notice of appearance. Read more

Limited Evidence of Use on Section 45 Proceeding

By In Case Law, Registration

Brouilette Kosie Prince v. Great Harvesting Franchising, Inc. involved two Appeals under section 56 of the Trade-marks Act from decisions of the Opposition Board.  The Appellant had sought, unsuccessfully, to have the Registrar expunge two trademarks pursuant to section 45 of the Act, namely two design trademarks, both for GREAT HARVEST BREAD CO. & DESIGN.  The one was registered for use in association with the services of “operation and franchising of retail bakery shops”.  The second was registered for the same services, as well as services described as “franchising services, namely offering technical assistance in the establishment and/or operation of retail bakeries and retail bakery shop services” and wares described as “bakery goods, namely bread, cookies, muffins, and cinnamon rolls; wheat; jams and jellies; clothing, namely hats, sweatshirts, aprons, t-shirts and sweaters”.

The Federal Court agreed with the Opposition Board that the one mark registered solely in respect of the services could be maintained in its entirety and the other could be maintained in part.

In the course of the section 45 proceeding, the owner of the trademark had provided a Statutory Declaration that included two photographs (the first showing bread baskets sitting on a portable table in a mall, with a banner pinned to the table and the second showing the banner with the trademark in full), a page from a booklet regarding how to become a franchisee, and four labels, together with invoices of sales for one particular day in the three-year period preceding the Section 45 Notice.  No further evidence was provided by the owner of the trademark on the Appeal. 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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