Protection & Enforcement

Penny For Your Thoughts

By In Protection & Enforcement, Registration

The lowly Canadian penny (to be fair, it’s currently worth more than it’s American counterpart) has been the subject of some intense legal discussions lately, according to a recent story in the Globe and Mail. This story highlights the importance of protection for trademarks under both trademark and copyright law in Canada.

 The Royal Canadian Mint has taken issue with the apparently unauthorized use of a Canadian penny design by the City of Toronto as part of an ad campaign which appears on posters on buses and in bus shelters and on bumper stickers and buttons. The campaign is part of the City’s attempt to convince the Federal Government to provide more funding to municipalities, specifically one cent out of every six collected by the Federal Government through the Goods and Services Tax. The penny design is also featured on the City’s Onecentnow.ca webpage

According to the story, the Mint claims ownership of intellectual property rights  in the design of the penny and is demanding that the City stop all use of its design and payment of a licensing fee for past use. While the news story doesn’t get into the legal specifics, the Mint is likely  relying on both copyright and its Official Mark status for the penny design. The Mint caused the Registrar of Trade-marks to publish a notice in the Trade-marks Journal on June 2, 2004, of the Mint’s adoption and use of the penny design as an Official Mark. Once such notice is published, Section 9 of the Trade-marks Act prohibits any other person from adopting, using or registering that mark in connection with a business, as a trademark or otherwise – a very strong form of protection available only to Canadian public authorities – basically government entities and entities over which there is significant ongoing governmental control – and universities. From the article, it appears the City is asserting a defence that it is using the penny design for educational purposes, but it’s not clear that even educational use is permitted under Section 9 without the consent of the owner.

The Mint may also be able to assert its copyright against the City, irrespective of the Official Mark issue, assuming ownership, originality, subject matter, fair dealing and related issues are not a problem. Copyright provides a very different cause of action than trademark – once a copyright protected work is copied, it’s irrelevant to a claim of infringement whether the copy is being used in association with any wares or services.

Actual Infringement Required for an Injunction

By In Case Law, Protection & Enforcement

Two recent Canadian cases may be of interest to our readers.

In the first, because the Defendant had not yet used the alleged infringing trademark and because the Registrar of Trade-marks had not yet made a decision regarding the Defendant’s applications to register the mark at issue and expunge certain of the Plaintiffs’ marks, the British Columbia Supreme Court refused the Plaintiffs’ summary trial application – Price Costco International, Inc. et al. v. Welcome Warehouse Ltd.. Costco, the international “big box” retailer, alleged that the Defendant, a local British Columbia company, would be passing off and infringing the Plaintiffs’ registered trademarks (which included PRICE CLUB PRICE COSTCO, PRICE COSTCO & Design, COSTCO Design and COSTCO WHOLESALE & Design) if the Defendant proceeded to use PRICECO WAREHOUSE. The Defendant had applied to register its mark on the basis of proposed use, which the Plaintiff opposed. The Defendant also brought proceedings to expunge PRICE CLUB, PRICE COSTCO and PRICE COSTCO & Design.

Notwithstanding the Plaintiffs’ survey evidence demonstrating confusion, the court declined to grant declaratory or injunctive relief since there was no evidence of any actual infringement or damage by the Defendant.

With regard to the second case, we earlier reported the decision in Sun World International Inc. v. Parmalat Dairy and Bakery Inc. in which the prothonotary agreed with the Registrar of Trade-marks that the statement filed in opposition to the registration of a trademark could not be amended after the Registrar had decided the merits of the registration. This decision was appealed further, to a Federal Court judge, who handed down a decision in late August, agreeing with the prothonotary.

Of London, Lithuania And A Popular Tree

By In Foreign Protection, Protection & Enforcement, Registration

A recent story in the London Free Press shows just how powerful Canadian trade-marks are becoming throughout the world – causing a country half a world away to drop a tree design that it had recently chosen to be the symbol for its latest tourism campaign. A similar tree design is the subject of an Official Mark Request advertised by the Canadian Registrar of Trade-marks at the request of the City of London, Ontario, known primarily, until now, as a centre for the insurance industry in Canada and as a University town. The design appears prominently on the City of London’s website.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

Sharing a Trademark: The Legal Problems

By In Case Law, Protection & Enforcement

For many years, CHAPMANS has been a well-known trademark in the Vancouver clothing trade. However, the mark has been used by two companies, a situation that can lead to problems, as evidenced by a recent decision of the British Columbia Court of Appeal.

In Edward Chapman Ladies’ Shop Limited v. Edward Chapman Limited the Court of Appeal upheld the trial judge’s decision in favour of Edward Chapman Ladies’ Shop Limited, permanently restraining Edward Chapman Limited from selling ladies’ clothing and accessories in association with the names Edward Chapman, Chapman’s, Edward Chapman’s Limited or similar names, except where at least equal prominence is given to the additional name, Chapy’s.

In 1959, the Edward Chapman retailing clothing business in Vancouver was divided between two corporate entities: Edward Chapman Limited to continue with the sale of men’s clothing and Edward Chapman Ladies’ Shop Limited to carry on the sale of women’s clothing. The two companies cooperated in their marketing, jointly buying advertising space and clothing labels bearing the EDWARD CHAPMAN name and a crown logo until relations soured in 1982.  

In 1982, Edward Chapman Limited opened up a women’s wear division under the name CHAPY’S. Edward Chapman Ladies’ Shop Limited objected that this was contrary to the spirit of the 1959 contract that divided the two companies, but ultimately, did not pursue legal action as it understood that Edward Chapman Limited’s women’s wear business would operate under the trade name CHAPY’S. An uneasy co-existence continued until, in 2002, Edward Chapman Limited opened a new shop which sold both men’s and women’s clothing under the name EDWARD CHAPMAN LIMITED and did not use the name CHAPY’S.

In response, Edward Chapman Ladies’ Shop Limited commenced an action in April 2003 alleging that by Edward Chapman Limited using the CHAPMAN names and crown logo in association with the sale of ladies’ wear it was passing off its products and services as those of Edward Chapman Ladies’ Shop Limited in violation of section 7(b) of the Trademarks Act.

The trial judge held that Edward Chapman Ladies’ Shop Limited established the elements of its passing off action since it had developed a distinctive reputation for fine women’s clothing under its corporate name, as well as the names CHAPMAN’S and EDWARD CHAPMAN’S. Edward Chapman Limited’s decision to drop the name CHAPY’S and market women’s clothing under the name EDWARD CHAPMAN had been made primarily to take advantage of the plaintiff’s established goodwill. The plaintiff suffered damage due to the risk of harm to, and loss of control over, its goodwill or reputation.

In upholding the decision of the trial judge, the Court of Appeal held that the parties in 1959 intended Edward Chapman Ladies’ Shop Limited to receive the exclusive right to sell ladies’ wear and accessories using the EDWARD CHAPMAN and CHAPMAN’S names and Edward Chapman Limited’s dropping of the CHAPY’S name had the effect of “elbowing out” Edward Chapman Ladies’ Shop Limited or increasing the risk of confusion in the market.  Therefore, the Court of Appeal held that Edward Chapman Ladies’ Shop Limited could properly sue for passing off and the permanent injunction was the appropriate remedy. The Court of Appeal also held that having jointly used and jointly benefited from the use of the crown logo and the notation, “Established 1890”, neither party could exclude the other from using them in association with their respective businesses.  

Olympic Trademark Legislation Closer to Becoming Law

By In Famous Marks, Legislation, Protection & Enforcement

Following up on an earlier story regarding the unique aspects of Bill C-47, we note that the Olympic and Paralympic Marks Act, has now received Royal Assent. We understand that the legislation has not yet come into force by order of the Governor in Council, as required by section 15 of the Act, and that regulations are contemplated.

While similar legislation has been enacted in other Olympic host countries in recent years, the removal of the normal requirement that the Canadian Olympic Committee, the Canadian Paralympic Committee or the Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (“VANOC”) prove irreparable harm in order to obtain an injunction has certainly raised some eyebrows in the legal community.

The controversy noted earlier continues, as evidenced in an article in the Globe and Mail, “Olympics Bill Toughens Trademark Muscle“.

EcoDensity and the Mayor

By In Branding, Protection & Enforcement, Registration

An Article in the Vancouver Sun this past weekend raises questions about why the Mayor of the City of Vancouver has applied to register in his own name, the mark ECODENSITY for a housing density initiative that is funded and run by the City. The Mayor indicates in the story that he filed the proposed use application a few days before the initiative was publicly unveiled in order to stop others from doing so.

As the mark was not used by the City at the time the Mayor’s application was filed, the City would have been unable to properly request at that time, that the Registrar give public notice of the City’s adoption and use, as a public authority, of the mark as an Official Mark, pursuant to Section 9 of the Trade-marks Act. Official Mark requests are commonly submitted by all levels of government in Canada, including the City of Vancouver itself, to protect what they consider to be their proprietary marks.

An alternative to filing an application in the Mayor’s own name, would have been to file the proposed use application in the name of the City, as such an application doesn’t require prior adoption and use by the City. It’s also not clear why, now that the City has publicly started promoting its EcoDensity Plan, it has not submitted an Official Mark Request to the Registrar.

In a follow up story today, the Vancouver Sun reports that Vision Vancouver, the opposition civic party, will request an extension of time to oppose the Mayor’s application on or before the deadline to do so.

Establishing a Trademark’s Distinctiveness: Recent Case Law

By In Case Law, Protection & Enforcement, Registration

In Cross-Canada Auto Body Supply (Windsor) Limited v. Hyundai Motor America, the Applicant (the reseller of automotive parts and accessories and the Defendant in an ongoing trademark action brought by the Respondent) sought to expunge five of the Respondent’s trademark registrations: HD Design, HD & HYUNDAI Design, HMC Design, HYUNDAI and SONATA. In 1985 the Respondent’s parent company had assigned three of the marks to the Respondent’s predecessor, which in turn assigned the marks to the Respondents, in 1996, but the assignment was only registered in August 2004. The other two marks were assigned to the Respondent in September 2004.

The Applicant argued that the marks were not distinctive of the Respondent, the relevant date for determining distinctiveness in this case being the date the expungement action was commenced, because the the consuming public was not advised during the 1985 -2004 period of the change in ownership.

The Court noted that distinctiveness is the cardinal requirement of a trademark and it is a question of fact whether a clear message has been given to the public that the wares associated with the mark are those of the trademark owner and not those of another party. Relying on survey evidence, the Court concluded that the purchasing public was not confused about the source of the wares and always understood the Respondent to be the source of the vehicles, even though they were sold through dealers.

Moreover, since 1985 the Respondent and its predecessor, although they had not officially registered the assignment, had built up goodwill through extensive advertising.

The Court distinguished the Respondent’s situation from the earlier cases (Wilkinson Sword (Canada) Ltd. v. Juda and Breck’s Sporting Goods Co. v. Magder ) where a transfer of marks by a foreign parent company to its Canadian subsidiary and sales in Canada by a third party of wares purchased from the parent company resulted in a loss of distinctiveness. In the earlier cases there was no evidence that the source of the goods had become identified with the Canadian subsidiary. In this case, however, the Court was convinced by the expert evidence that the consuming public identified the source of the goods as the Canadian subsidiary.

There was delay in the registration of the assignment, but no reliable evidence of any public confusion that the source of the goods was other than the Respondent.

The Court was, however, convinced that one of the marks had been abandoned, not having been used in Canada for a long time and there being no justifiable excuse for non-use. The other four marks had not been abandoned and thus the Respondent was successful and awarded costs.