Case Law

Trademark Use Not to Be Inferred: Section 45

By In Case Law, Registration

In past blogs, we have discussed various Federal Court decisions made pursuant to section 45 of the Trade-marks Act, which is intended to be a summary and expeditious procedure for cleaning up the trade-mark register of trade-marks that have fallen into disuse.

In Grapha-Holding AG v. Illinois Tool Works Inc. the Federal Court, Trial Division allowed an appeal from the Registrar of Trade-marks, finding that the evidence the Registrar relied upon did not support her conclusion that the trademark in issue had been used during the previous three-year period. Read more

Liberals Settle Green Shift Trademark Dispute

By In Case Law, Protection & Enforcement

In an update to our previous posts on this topic, the federal Liberal party has apparently settled the dispute surrounding its use of the mark THE GREEN SHIFT, just in time for this fall’s recently called election race to begin in earnest. According to a story in the Canadian Press and the Liberals’ own website, the Liberals have reached an out of court settlement with Green Shift Inc., whereby the Liberals now have a license to use the mark THE GREEN SHIFT in association with their environmental policy. As is typical in such matters, terms of the settlement were not made public.

Green Shift Trademark Battle Steps Up

By In Case Law, Protection & Enforcement

In an update to an earlier post, the battle between the Liberal Party of Canada and Green Shift Inc., over the trademark GREEN SHIFT, continues, with the Liberals having recently filed their Statement of Defence in the Court case.

In a Vancouver Sun story, the Liberals claim they never intended to intended or desired to trade off any reputation or goodwill established by Green Shift Inc. Green Shift Inc. owner Jennifer Wright disagrees strongly, citing the receipt by her company of numerous emails apparently intended for the Liberal party, seeking further information about and both panning and praising the proposed initiative, as well as Liberal party members themselves giving out incorrect references to Green Shift Inc.’s website in the House of Commons. Apparently, out of Court settlement discussions are still taking place.

Applicant Deemed Not a “Person Interested” Under the Trade-marks Act

By In Case Law, Famous Marks

In Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P., the Federal Court ruled that, despite the low threshold, the applicant, Fairmont Resort Properties Ltd., was not a "person interested" for the purposes of challenging the respondent’s, Fairmont Hotel Management, L.P.’s, trade-marks (the "Hotel Marks") under s. 57(1) of the Trade-marks Act.

The applicant was incorporated in 1979 as a numbered company for the purposes of marketing timeshare units constructed by Fairmont Hot Springs Resort Ltd. ("Fairmont Hot Springs"), which, at that time, had common ownership and control with the applicant. The timeshare units were located near Fairmont Hot Springs, British Columbia. In 1985, with the consent of Fairmont Hot Springs, the applicant changed its name to its current name. By 1996, the applicant was fully independent from Fairmont Hot Springs. In 2005, it had annual revenues of over $10 million dollars and Fairmont Hot Springs had revenues of over $12 million dollars.

The respondent is a wholly-owned subsidiary of Fairmont Hotels & Resorts Inc. ("Fairmont Hotels") The hotel chain was started by Tessie and Virginia Fair with one hotel on Knob Hill in San Francisco. They alleged to have coined the word "Fairmont" by combining the surname Fair and a description of Knob Hill as a "mont" or mount. Through the respondent, Fairmont Hotels claims to be North America’s largest luxury hotel management company. In 2004, Fairmont Hotels had revenues of over $320 million U.S. Read more

Discovery Questions in Trademark Cases

By In Case Law, Protection & Enforcement

Adidas AG et al v. 2690942 Canada Inc. c.o.b. Campea will be of interest to litigators. Adidas commenced a claim against Campea alleging infringement of its 3-stripes trademark registration and its copyright registration covering the Euro 2004 logo. Following discoveries, the Federal Court was asked to rule on whether a series of questions required answers.

Prothonotary Morneau applied the six-part test set out in a 1998 decision, Reading & Bates Construction v. Baker Energy Resources Corp. which, stated briefly, requires a consideration of:

  1. the relevance of documents, particularly whether they contain information allowing a party to advance its case;
  2. the scope of the questions;
  3. the relevance of questions in relation to the facts plead;
  4. whether the questions advance a party’s legal position;
  5. the usefulness of the information sought relative to the time and expense of obtaining it; and
  6. the avoidance of fishing expeditions

Read more

Applicant Fails to Prove Damages

By In Case Law, Protection & Enforcement

The recent Federal Trial Court decision of Pharmacommunications Holdings Inc. v. Avencia International Inc. (“Avencia“) is a reminder to all lawyers that a successful claim requires proof of every element of the applicable legal test.

At issue in Avencia was whether the respondent’s trademark, PHARMACOMM, caused, or was likely to cause, confusion with the applicant’s trademark, PHARMACOMMUNICATION. Both companies provided marketing services to the pharmaceutical industry, although the degree of overlap was not agreed on. The applicant relied on s. 7(b) of the Trade-marks Act, which prohibits a person from directing “public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another.”

The applicant sought various relief, including a declaration, a permanent injunction and delivery up of all infringing materials. The applicant focused its submissions on the issue of confusion. The respondent denied any confusion and also argued that a trademark holder cannot appropriate descriptive words, even by combining two words together. Read more

Damages for Counterfeit Goods – Another Significant Award

By In Case Law, Famous Marks, Protection & Enforcement

We previously reported on the Federal Court case Louis Vuitton Malletier S.A. et al. v. Yang et al. (“Yang”). Louis Vuitton was back in court in June, but this time the venue was the British Columbia Supreme Court. In Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd., Louis Vuitton proceeded by way of a summary trial under British Columbia’s Rule 18A, seeking judgment against a number of defendants for trademark and copyright infringement.

In 2004, Louis Vuitton had executed an Anton Pillar Order against the defendants. In 2005, Louis Vuitton obtained a Federal Court order against the defendants and entered into a settlement agreement in 2006, whereby the defendants pledged to Louis Vuitton that they would not sell any more counterfeit merchandise.

There were four individual defendants and two corporate defendants. The principal of the enterprise was Wynnie Lee (“W. Lee”). W. Lee’s daughter, Francisca Hung-Yee Ngan (“Ngan”), W. Lee’s sister, Jacqueline Lee (“J. Lee”), and a former employee, Lisa Le Dung Tran (“Tran”) were co-defendants. W. Lee and J. Lee carried on business through W. Lee Corporation and J. Lee Corporation, respectively. However, the Court found that the corporations could not be used as a shield, because W. Lee’s and J. Lee’s actions constituted willful and deliberate infringement. Read more