Case Law

Trademark Expungement Despite Plans for Future Use

By In Case Law, Registration

In Scott Paper Limited v. Smart & Biggar, the Federal Court of Appeal overturned a string of case law that deviated from the wording of section 45. The appellate court agreed with the trial judge that the Registrar erred in deciding not to expunge the trade-mark “VANITY” despite 13 years of non-use. We previously discussed different aspects of this “use-it or lose-it” provision.

The issue in this case was whether plans to use the trademark in the immediate future saved an unused trademark from expungement. In determining that future use amounted to special circumstances, the Registrar purported to rely on the three criteria laid down in Registrar of Trade-marks v. Harris Knitting Mills, namely the length of time during which the trademark has not been in use, whether reasons for the absence were due to circumstances beyond the control of the owner, and a serious intention to shortly resume use.

However, the Federal Court of Appeal found that the Registrar was “in fact, relying upon the gloss put upon Harris Knitting Mills in … Lander Co v. Alex E MacRae and Co.. Later in the Scott Paper judgment, the Federal Court of Appeal explained that “[i]t is important to distinguish between explaining an absence of use and excusing an absence of use”. Thus, special circumstances must explain the absence of use and the three criteria are used to determine if the absence is excused. Read more

Motion For Particulars: Part of a Larger Trademark Battle

By In Case Law, Protection & Enforcement

A Federal Court decision on a procedural point is apparently just one more step in a larger legal battle, according to an article entitled “Despite lawsuit, restaurateur tries again under a new name, familiar format” in the March 29, 2008 edition of the The Globe and Mail.

In Mövenpick-Holding v. Inter Management Services Limited et al. the Federal Court judge agreed with the prothonotary’s decision dismissing the Plaintiff’s, Mövenpick-Holding’s, motion for particulars and to strike certain paragraphs of the defence and counterclaim, noting that a discretionary order of a prothonotary ought not to be disturbed on appeal unless it is clearly wrong, having been based on a wrong principle or misapprehension of the facts.

Mövenpick-Holding brought the action alleging violation of its MARCHÉ trademarks covering restaurant services after the Defendant company and its principles, the Reicherts, opened a restaurant under the name and trademark, INNISFIL HEIGHTS MARCHE, set up like a “marché” or market, where customers visited various food stations, a system allegedly similar to the Plaintiff’s. Read more

Official Marks: Federal Court Confirms Clear Evidence of Use Required

By In Case Law, Registration

In a recent decision, See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee, the Federal Court of Appeal agreed with the decision of the application judge which we reported on last May.

The Court of Appeal also concluded that the Canadian Olympic Committee (“the COC”) had not proved use of its official marks, “See You in Torino”, “See You in Beijing” and “See You in Vancouver”, because there was no clear evidence of a public display of the marks at issue and the COC’s evidence on this point was equivocal at best.

The appellant, See You In – Canadian Athletes Fund (“the SYI Fund”) argued, even though it was successful before the application judge, that the judge should not have dismissed its argument that the COC was a licensee of the International Olympic Committee and could therefore not register the official marks. The Court of Appeal declined to consider this argument noting that where an appellant obtains the relief sought, the appellant is not normally allowed to appeal the judge’s reasons. A decision on this point would have been useful to the SYI Fund, and presumably others seeking to challenge official marks registered by the COC.

Obtaining Judgment Requires Lawyer, But Not Settlement Agreement

By In Case Law

Farouk Systems Inc. v. Rica International Inc. and Munesh M. Mavadia raises a procedural point, namely whether a corporation requires a lawyer to resolve an action before the Federal Court.

The personal Defendant sought an order for an exemption from Rule 120 of the Federal Court Rules (which requires all corporate Defendants to be represented by lawyers) so that he could sign the requested judgment in his personal capacity and as an officer of the corporate Defendant.

The case law under Rule 120 requires proof of special circumstances, namely impecuniosity, the complexity of the issues and whether the proposed representative might be a witness.

The Judge was not convinced that there was impecuniosity since the proposed judgment included a $24,000.00 payment. The legal issues as evidenced by the proposed judgment were also not simple.

More importantly, there was no need for the relief sought given that the personal Defendant could sign a settlement on behalf of the corporation in the same way he could execute any other contract, thereby precluding the need for a judgment.

Trademark Confusion or Chalk and Cheese

By In Case Law, Protection & Enforcement

As the owner of a HÖRST brand shirt and a cyclist, I might be inclined to think there is a connection between HÖRST shirts and HORST WATERPROOF cycling bags. But I would fail to realize that HÖRST is a common German name and that I may not be a typical Canadian consumer.

A recent Québec case, Octeau et al v. Kempter Marketing Inc., illustrates that identical or similar names do not necessarily mean there is infringement, absent use in association with similar wares and for a similar purpose.

The Plaintiff had three registered Canadian trademarks, HÖRST DÜSSELDORF & Design, CULT HÖRST and H HÖRST & Design, for use in association with an extensive line of clothing. The Defendant manufactured and distributed sporting goods, including high-end cycling and ski products and introduced the HORST WATERPROOF, a waterproof cycling bag named in honour of Horst Kempter, the founder of the company.

The judge noted that there was no attempt by the Plaintiff to prove the Defendant was selling any product “comparable in either style, nature or purpose” to the Plaintiffs’ products. He also pointed out the absence of any evidence that the Defendant sold any product resembling a product produced and sold by the Plaintiff. There was also no evidence of any person drawing a connection between the Plaintiffs’ and the Defendant’s businesses.

The judge reviewed the test for confusion, noting the discussion in Mattel, Inc. v. 3894207 Canada Inc. (the Barbie case) that trademark law affords protection that transcends the traditional product lines, but the issue is whether confusion arises.

What the Plaintiff failed to prove was confusion. In Veuve Cliquot Ponsardin et al v. Boutiques Cliquot Ltée et al Justice Binnie concluded that “luxury champagne and mid-priced women’s wear are as different as chalk and cheese”, a comparison that also applies to HÖRST shirts and HORST WATERPROOF cycling bags.

Round 2 Won By Scotch Whisky Association

By In Case Law, Protection & Enforcement, Trademark Oppositions

As a follow up to earlier postings on the ongoing battle between the Scotch Whisky Association (the “Association”) and the Canadian distillers of GLEN BRETON single malt whisky, the Association is reporting today that it has won its appeal to the Federal Court of Canada.

The Trade-marks Opposition Board denied the Association’s opposition to the application by Glenora Distilleries of Nova Scotia to register the mark GLEN BRETON, on the basis that, in the Opposition Board’s view, Canadians would not be confused by the use of the word GLEN in the mark, such that they would think they were purchasing Scotch Whisky. The Association appealed that decision to the Federal Court.

During the appeal, the Association produced evidence that GLEN BRETON was misdescribed in various retail outlets, newspaper articles, pricelists, menus and websites as a Scotch Whisky and the Federal Court agreed with its submissions that Canadian consumers would likely be confused that they were purchasing a Scotch Whisky when that was not the case.

Stay tuned for Round 3 of this battle, as CBC reports that Glenora Distilleries is already planning to file an appeal of the Federal Court decision.

Appeal saves CANADA DRUGS

By In Case Law

The recent Federal Court of Appeal decision in Thorkelson v Pharmawest Pharmacy Ltd. overturned an earlier Federal Court decision which ordered the expungement of the trademarks CANADADRUGS.COM and CANADA DRUGS. On appeal, the court found that the evidence was not capable of establishing that the trademarks in issue were clearly descriptive or deceptively misdescriptive of the character or quality of the services provided by the online phramacy business controlled by the Appellant.

The Federal Court judge who ordered the expungement was found to have decided the case on the basis of his own interpretation of the meaning of the words “Canada” and “drugs” when used in association with an online pharmacy business, as well as the inferences he drew, without any evidence, about what consumers would or would not understand.  The Appeal Court in setting aside the expungement concluded that the phrase “Canada Drugs” did not have any known meaning at the time of the earlier decision and accordingly, was not “clearly descriptive” or “deceptively misdescriptive” under Section 12 (1) (b) of the Trade-marks Act. To come within the prohibition under section 12 (1) (b), the trademark must initially be found to be descriptive and then be found to mislead the public as to the character of the quality of the wares. The test applied is whether the general public in Canada would be misled concerning the product with which the trademark is associated.