The British Columbia Supreme Court recently considered the right to damages for the improper use of a trademark following the termination of a franchise agreement. In Fruiticana Produce Ltd. v. 575760 B.C. Ltd. et al., after determining that certain amounts remained unpaid under the terms of a franchise agreement, the Court also concluded that the franchise agreement had been terminated and the defendants continued to use the trademark FRUITCANA for a period of time following the termination. Nominal damages were calculated on the basis of the formula set out in Louis Vuitton Mulletier S.A. v. 486353 B.C. Ltd. and the Plaintiff awarded $12,000. A permanent injunction was also granted.
A Second Chance to Prove Use of a Trademark
Under section 45 of the Trade-marks Act, an applicant, upon receipt of the Registrar’s notice, must provide an affidavit or statutory declaration evidencing use within the previous three years or an acceptable excuse for non-use. In Vêtement Multi-Wear Inc. v. Riches, McKenzie & Herbert LLP, the Applicant failed to provide its attorney with all the information and documents necessary to respond to the section 45 notice and the evidence was not filed in time. Pursuant to section 56, the applicant appealed the Registrar’s determination to expunge the mark, and as allowed under section 56, filed its evidence.
The Court noted that where new evidence (or in this case, the only evidence) is filed on a section 56 appeal, the Federal Court decision is de novo. The Court also noted that the test for “use” under section 45 is not onerous. Thus, the appeal was allowed and the applicant’s trademark, L’AMADEI for use in association with ladies’ clothing, namely skirts, dresses and blouses (but not vests and sweaters) was allowed to remain on the register. The Affidavit evidenced 6 sales to Canadian companies and 10 sales to one American company. The invoices did not use the trademark, but the affidavit explained that the hang tags on the items referenced in the invoices would have used the trademark.
Depreciation A Possible Ground in Opposition Proceedings
In Parmalat Canada Inc. v. Sysco Corporation, the Federal Court allowed an application by Parmalat to set aside the Trade-mark Opposition Board’s refusal to amend a statement of opposition to include an additional ground of opposition. Sysco had filed an application on May 3, 2002 to register the trademark, BLACK DIAMOND, in association with various kitchen utensils, chef’s apparel, cooking pots and frying pans. Parmalat had registered various BLACK DIAMOND trademarks in Canada for use since 1933 in association with cheese and other food products. Parmalat originally filed its statement of opposition on May 4, 2004 based on a number of grounds, including confusion with Parmalat’s family of BLACK DIAMOND trademarks.
On June 2, 2006, the Supreme Court of Canada released its decision in Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Boutiques Cliquot Ltée which discussed the depreciation of goodwill contrary to section 22 of the Trade-marks Act. Subsequent to the Veuve Clicquot decision Parmalat sought to amend its statement of opposition to include depreciation of the value of the goodwill attached to its registered trademark, BLACK DIAMOND, as an additional ground of opposition. The Trade-mark Opposition Board dismissed Parmalat’s application for leave to amend on the basis that the inquiry on the issue of depreciation of goodwill was not to be decided in an opposition hearing; instead, the Federal Court had jurisdiction to decide the issue. Read more
Dead Frog in a Clear Bottle Leaves Sleeman Seeing Red
Sleeman Breweries has reportedly filed a lawsuit against Dead Frog Brewery over Dead Frog’s use of a clear glass bottle design, in association with its beer. Sleeman is the third largest brewery in Canada; Dead Frog is a small and relatively new enterprise located in Aldergrove, BC. Invoking references to the classic David v. Goliath story, the President of Dead Frog has stated that the lawsuit is a silly waste of time, that there are many similar clear glass bottles on the market, and that the raised glass frog design on his bottles makes his products distinctive from those of Sleeman.
For its part, Sleeman will likely rely on its Canadian Trademark Registration for a distinguishing guise. A distinguishing guise is a type of trade-mark that is a distinctive shaping of goods or their containers or a mode of packaging or wrapping such goods. To obtain a registration for a distinguishing guise in Canada, an applicant must prove that the distinguishing guise is, in fact, distinctive of the applicant’s wares in Canada. This normally requires proof of significant sales and advertising in every region of the country over an extended period of time. Read more
“Bad Faith” Decision Bad News for Applicants?
A recent Opposition Board decision highlights a little-examined area of Canadian trademark law, raising questions pertaining to the entitlement to file a trademark application, and issues of good faith related thereto.
In Cerveceria Modelo, S.A. de C.V. v. Marcon, issued August 12, 2008, the Trade-mark Opposition Board upheld an opposition brought by Cerveceria Modelo against Marcon’s application to register the trademark CORONA for use in association with both a variety of beverages and with beverage bottling services.
The application was opposed on several grounds, including alleged confusion with Cerveceria Modelo’s familiar CORONA trademark. Additionally, the opposition was also founded on Marcon’s alleged failure to comply with s. 30(i) of the Trade-marks Act, which requires the applicant to file with the Registrar an application that contains a statement that the applicant is satisfied that “he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.” Read more
The Perils of Insufficient Evidence in Trademark Cases
Whatever the advantages of not submitting certain evidence, such as expediency, complexity, or risk of ambiguity, the Federal Court of Appeal decision, Shell Canada Limited v. P.T. Sari Incofood Corporation demonstrates the significant risk of this course of action.
Shell Canada opposed the registration of JAVACAFE in relation to coffee products, arguing that it was not distinctive, but rather descriptive of the geographical source of the coffee products. Submitting various evidence regarding the definitions of the component words, the parties curiously omitted any evidence regarding the meaning of the word java in French. Noting this omission, the Registrar looked up the word in a 1968 edition of Larouse, discovered that it meant a type of dance, and concluded that Shell’s evidence fell short of its contention that a Canadian Francophone would associate JAVACAFE with coffee from the island of Java. Read more
Hyundai Keeps On Motoring
An update on a battle we previously blogged about: the fight between, in one corner, Hyundai Auto Canada, a division of Hyundai Motor America (“Hyundai Canada”); and in the other corner, Cross Canada Auto Body Supply (West) Limited, Cross Canada Auto Body Supply (Windsor) Limited and AT Pac West Auto Parts Enterprise Ltd. (together, for the sake of brevity, the “Resellers”).
You may recall that in that case, the Resellers were re-selling automotive parts and accessories, including Hyundai automotive parts and accessories, in Canada. The Resellers sought expungement of five Hyundai-related marks in Canada owned by Hyundai Canada, claiming that all of the marks were non-distinctive, and further claiming that three of the marks had been abandoned.
(This central action spawned several others: in one, Hyundai Canada sought – though ultimately failed to obtain – an injunction to preclude the Resellers’ use of the Hyundai-related marks on the automotive parts packaging they offered for sale. Other related actions included disagreements over the production of documents, and the appropriateness of photocopying and other charges.) Read more