Case Law

Payless to Pay More?

By In Case Law, Famous Marks, Protection & Enforcement

Collective Brand Inc., operator of the well-known US discount shoe retailer Payless ShoeSource, is again under attack from German-based sporting apparel manufacturer adidas. In a landmark US decision last spring, adidas persuaded an Oregon jury that Payless had wilfully infringed adidas’ trade mark and trade dress in various sneaker designs, and was awarded over $300 million in damages and disgorged profits. This award represented what was thought to be the largest ever US trademark verdict. On appeal, the award was later reduced to just over $65 million – still, a significant award and an important victory for adidas.

Flush from its win against Payless in the US, adidas has elected to try to repeat its success in Canada. Earlier this month, Adidas AG and Adidas Canada Ltd. filed a claim against Collective Brand Inc. in Federal Court. In Canada, adidas’ action will hinge on Payless’ alleged infringement of the rights adidas enjoys in the well-known 3 Stripes Design, and particularly the rights afforded adidas from these three trademark registrations.

If adidas is successful, it is not likely to be awarded damages anywhere near the amounts it secured in the US; nonetheless, the case will be of interest to both trademark lawyers and sneakerheads alike. We’ll keep all of you posted on material developments.

Yee Shall Seek… Declaratory Judgment

By In Case Law, Domain Name Disputes, Protection & Enforcement, Trademark Oppositions

Updating our previous post on the ROYAL CHINET trademark, the Nova Scotia Supreme Court in CKF Inc v. Huhtamaki Americas Inc. has confirmed “that declaratory relief is specifically available in the context of intellectual property disputes”, notwithstanding that such relief is not expressly provided for in the applicable act. In this case, the Plaintiff launched an action in Nova Scotia seeking, among other things, a declaratory judgment that it as an unconditional owner of certain trademarks in Canada. The Defendant, which commenced its own actions against CKF with respect to the same trademarks in Ontario and Maine, applied to strike CKF’s action on several bases, including that the Court could not grant CKF the declaratory relief it was seeking.

Finding that it had inherent jurisdiction to make the declaratory judgment sought, and that the declaration was not purely “hypothetical” or “speculative” since it related to an actual dispute between parties, and was practically necessary for the resolution of this dispute, the Court refused the Defendant’s application to strike.

Proving Trademark Infringement: Absent a Defendant

By In Case Law, Protection & Enforcement

Whether infringement of a trademark and depreciation of goodwill can be established turns on the facts, even if a defendant fails to file a defence or show up at trial. At least the Plaintiffs in a recent Federal Court decision, Salam Toronto Publications and Mohsen Seyed Taghavi v. Salam Toronto, Inc. et al. did not have to pay the Defendants’ costs.

In the absence of a defence and given proof that the Defendants had been properly served, the Court determined that the action was a proceeding in default of defence”, which meant every allegation in the Statement of Claim had to be treated as if it had been denied and the Plaintiff had to demonstrate on a balance of probabilities that the claims were made out.

In Farsi, “Salam” is a word meaning “hello” or “welcome”. The Plaintiffs had been publishing a current affairs newspaper since October 2000 and the Plaintiffs’ trademark, SALAM TORONTO, was registered in 2004 for use in association with wares, namely, newspapers and magazines. The Plaintiffs’ business name, “Salam Toronto Publications” was registered in 2001. The Plaintiffs also had domain names, salamtoronto.net and salamtoronto.ca. Read more

The Need for Proper Evidence of Trademark Use

By In Case Law, Protection & Enforcement

A previous blog commented on the importance of proper evidence of use when the registered owner of a Canadian trademark is faced with a potential expungement pursuant to section 45 of the Trade-marks Act.

Curb v. Smart & Biggar, on appeal to the Federal Court from a decision of the Registrar is a further illustration.  Mike Curb, a well-known American record producer was the registered owner of CURB RECORDS for use in association with wares described as “audio and audio-visual recordings; printed materials, namely posters; clothing, namely t-shirts and caps” and services described as “entertainment services provided by pre-recorded and live music; and the production, publishing and distribution of audio and audio-visual recordings”.  On the basis of the Affidavit evidence filed by the Senior Vice-President of Curb Records, the Registrar concluded there was use in association with audio and audio-visual recordings, but insufficient evidence of use in association with the other wares and all the services during the three years preceding the section 45 request. Read more

JAVACAFÉ: Clearly Descriptive in the French Language

By In Case Law, Registration, Uncategorized

Following up on an earlier blog posting, we note that the Supreme Court of Canada has refused leave to appeal from the Federal Court of Appeal’s decision in Shell Canada Limited v. P.T. Sari Incofood Corporation. 

The Court of Appeal earlier concluded that JAVACAFÉ when sounded as two words was clearly descriptive, in French, of the claimed wares, namely, coffee products.

In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine

By In Case Law, Registration

The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material mistatement in the processing of a registation renders the entire resulting registration void.

In Parfums de Coeur, Ltd. V. Asta the respondent individual filed a trademark application in 1999 based on proposed use of the trademark BOD in association with wares identified as “hair care, namely shampoo conditioner, treatment, styling aids, hairsprays, hairpolish, perms, … .” The respondent subsequently filed a Declaration of Use signed February 12, 2004 declaring that by himself or through a licensee he had commenced use of the trademark in association with all the listed wares. The applicant began selling body sprays in Canada in association with the trademark BOD MAN as early as 2002, but when it sought registration in Canada, the respondent’s mark was cited against it. When challenged regarding his Declaration of Use, the respondent amended the list of wares to read only “hair care, namely shampoo, conditioner”. Read more

Canadian Distiller Wins Latest Round In Trademark Battle

By In Case Law, Registration

Just in time for Robbie Burns day, Canada’s Federal Court of Appeal has ruled that a Canadian distiller of whiskey can use the word GLEN in its trademark, without misleading Canadian consumers into thinking that its product is whiskey that is from Scotland.  This is the latest round in the battle by Bedford, Nova Scotia based Glenora Distillers to register the mark GLEN BRETON in the Canadian Intellectual Property Office in association with its single malt whiskey.  There’s no word yet on whether the Scotch Whiskey Association will appeal the decision to the Supreme Court of Canada.