Trademark Oppositions

Certification Mark Under the Trade-marks Act Refused: Evidence of Use by Others

By In Case Law, Registration, Trademark Oppositions

In Ministry of Commerce and Industry of the Republic of Cyprus v.  Les Producteurs Laitiers du Canada et al. the Federal Court set aside two decisions of the Registrar of Trade-marks, but allowed a third to stand in part, which was sufficient to prevent registration of the Applicant’s certification mark, HALLOUMI, in association with cheese.

The Registrar concluded that contrary to sections 38(2)(a) and 30(a) of the Trade-marks Act, the Applicant had not discharged its initial burden of proving that it was in fact the authority that issued licences authorizing the use of the Mark in association with cheese.  Section 23(2) of the Act provides that only the owner of a certification mark may authorize others to use the mark in association with wares that meet the defined standard.  Relying on the Applicant’s own affidavit material the Registrar concluded that it was the Ministry of Health, in collaboration with the Department of Veterinary Services of the Ministry of Agriculture, National Resources and the Environment, that issued licences.  On appeal by the Applicant, the Ministry of Commerce and Industry, filed additional evidence explaining the internal operations of the Cypriot government in terms of the responsibility for monitoring the use of the Mark.  The Court accepted this evidence, applied a correctness standard of review given the new evidence, and concluded that the Applicant was the authority with the power to authorize use of the Mark.

The Applicant also appealed on the basis that the Registrar incorrectly concluded that the Mark had become recognized in Canada by ordinary and bona fide commercial usage as designating a type of cheese, contrary to sections 38(2)(b), 10 and 12(1)(e) of the Act.  No new evidence was filed on this point and the standard of review was therefore reasonableness.  The Court agreed that one of the Opponents, the Cheese Council, had filed evidence before the Registrar, including packaging from cheese purchased in Ottawa and various cities in Quebec, establishing that marks resembling the Mark and likely to be mistaken for it had been used in Canada to designate a type of cheese.

The other two opponents could not rely on the evidence filed by the Cheese Council and therefore, given the Court’s finding on the other issue, their oppositions failed with the appropriate cost consequences.  Nevertheless, success by the Cheese Council meant the certification mark could not be registered, with costs to the Cheese Council on its opposition.

Beer, Trademarks and the Jurisdiction of the Opposition Board

By In Case Law, Registration, Trademark Oppositions

Molson Canada 2005 v. Anheuser-Busch, Incorporated, a decision of the Federal Court and another case in an ongoing “beer war”, provides an interesting analysis of the jurisdiction of the Opposition Board. The Opponent before the Opposition Board, Molson, through a predecessor in title, held the registered trademark for the label for Standard Lager:

Standard Lager Mark

(“the Standard Lager Mark”) a beer continuously sold in Canada since 1926, but almost exclusively in the province of Manitoba. Anheuser-Busch, the Applicant before the Opposition Board, had two labels that were registered as trade-marks:

Registered Anheuser-Busch Marks

(“the Registered Anheuser-Busch Marks”). The opposition arose when Anheuser-Busch sought to register an “updated” version of its two previously registered marks (“the Proposed Anheuser-Busch Marks”).

The Federal Court reviewed the litigation history arising in respect of the earlier registered marks, including a 1986 Federal Court of Appeal decision, Carling O’Keefe Breweries of Canada Ltd. v. Anheuser-Busch Inc., which concluded that the Standard Lager Mark and the Registered Anheuser-Busch Marks were confusing, that there was some sort of impropriety when the Standard Lager Mark was originally registered in 1929 since it was inspired by and designed with knowledge of the BUDWEISER label, but Carling (Molson’s predecessor in title) could rely on the equitable defence of laches and thus there was no basis for expunging either the Standard Lager Mark or the Registered Anheuser-Busch Marks.

The Opposition Board allowed the registration of the Proposed Anheuser-Busch Mark as it applied to clothing since Molson had not established that the ambit of protection accorded to the Standard Lager Mark included wares other than beer. With regards to use in association with beer the Opposition Board determined that it could limit the scope of protection afforded the Standard Lager Mark since the Court of Appeal had determined it was wrongfully obtained. Thus, Molson’s opposition with regards to use in association with beer was rejected.

The Federal Court disagreed and allowed the opposition with regards to use in association with beer. The Court was particularly concerned that the Opposition Board had exceeded its jurisdiction, since it is limited in an opposition proceeding to determining if a trademark is or is not registrable. Thus, for example, if there is a confusing mark on the register, the new mark cannot be registered. However, if the existing registration of an invalid trademark is interfering with the registration of a new trademark, it is up to the applicant for the new mark to take the necessary steps, usually an expungement application to the Federal Court, to get the register corrected. In an opposition proceeding, the validity of an opponent’s registered mark is not in issue.

The Federal Court was concerned that the Opposition Board could not limit the ambit of protection afforded the Standard Lager Mark on the basis that the Court of Appeal had questioned the lawfulness of the registration. Indeed, the Court of Appeal had not found the registration of the Standard Lager Mark was unlawful, but had instead found that the registration was not a nullity. Thus, Molson was relying on a valid registration and the question to be answered was whether the Proposed Anheuser-Busch Mark was confusing with the Standard Lager Mark. The Federal Court concluded they were confusing, applying the test in section 6(5) of the Trade-marks Act and giving particular weight to two surrounding circumstances: (1) that the Court of Appeal had found the Registered Anheuser-Busch Marks confusing; and (2) an acknowledgement in the Memorandums of Fact and Law filed by both the parties that the marks were confusing.

The beer wars continue and we may very well see an appeal.

“Bad Faith” Decisions Bad News for Trademark Applicants?

By In Case Law, Protection & Enforcement, Trademark Oppositions

The following article, authored by Jeffrey Vicq, was originally posted on the IPilogue—a co-operative blog hosted on the IP Osgoode website of York University’s Osgoode Hall Law School.

Those of us who provide trademark prosecution and counselling services—and particularly those of us who work with clients that have multi-national trademark portfolios—know that clients are sensitive to developments not only in Canadian practice, but also in other key markets around the world.  Many of my clients were concerned about a line of United States cases, decided over the last several years, that regarded innocent filing errors in applications, renewal forms, and other correspondence with the US Patent and Trademark Office as attempts to perpetrate a fraud on the Office, justifying refusal, expungement, or some other highly punitive penalty.  These decisions had effectively broadened the notion of “fraud” on the USPTO to include innocent mistake and negligence.

However, it appears generally acknowledged that this trend halted in 2009 with a decision titled In re Bose Corp. In the most general terms, Bose served to restore the concept of fraud on the Office to a more conventional meaning.  Now, only if an applicant knowingly makes a false, material representation with the intent to deceive does their action rise to the level of fraud, meriting harsh punishment.

However, I am becoming concerned we may be seeing the start of a trend in Canada toward permitting challenges to applications for alleged lack of good faith akin to what our US friends experienced pre-Bose.  In decisions released over the last two years, the Canadian Trade-marks Opposition Board appears to be breathing new life into the ability of opponents to challenge applications on the basis of good faith. Read more

A Confusing Trademark VIBE

By In Case Law, Trademark Oppositions

In Vibe Media Group LLC v. Lewis Craig Trading as VIBETRAIN the Federal Court of Canada set aside a decision of the Opposition Board and allowed the opposition to the application to register the mark VIBETRAIN.  The application was based on proposed use in Canada in association with wares and services that included sound recordings, printed promotional materials, magazines, clothing and souvenir items and entertainment services involving the provision of musical and entertainment performances in live, television, video and Internet media.  The opponent was a company with which Quincy Jones had an association and held the trademark rights, including an application and two pending applications, for VIBE, a popular magazine focusing on urban culture.

The Opposition Board member found that “vibe” was not inherently distinctive, relying on an earlier decision of the Court, Vibe Ventures LLC v. 3681441 Canada Inc.  The Board also found that VIBETRAIN consisted of two ordinary dictionary words that were disconnected from their respective meanings and which, when juxtaposed, were inherently distinctive.  The Board member referred to the Oxford English Dictionary for the definition of “vibe”.  Before the Court, the  Opponent argued that other dictionaries did not define “vibe” and it was therefore not an ordinary dictionary word.

On appeal, the Court found that “vibe” may no longer be inherently distinctive, but through continuous use it had become suggestive of the Opponent’s magazine, something the Board had acknowledged in its decision.  The Opponent also submitted new evidence on the appeal to show that the word “train” suggested a series of musical performances, that no other magazine titles in Canada began with VIBE and that VIBE had been used in Canada with programs, websites, books and recordings related to music.

The Court concluded there was a broad overlap in the music, culture and clothing wares and services that the VIBE and VIBETRAIN trademarks sought to identify, as well as similar channels of trade, since both targeted people with an interest in music, entertainment and culture.  Thus, there was a likelihood of confusion for a “casual consumer somewhat in a hurry”.

Confusing CANNABIS CULTURE

By In Case Law, Trademark Oppositions

The Friendly Stranger Corporation v. Avalon Sunsplash Ltd.was an appeal of a decision of the Trade-marks Opposition Board refusing several trademark applications filed by the Applicant.  The Applicant sells products related to hemp and marijuana through its Toronto store, The Friendly Stranger Cannabis Culture Shop, and sought to register CANNABIS CULTURE SHOP, CANNABIS CULTURE SHOP & Design and FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design.  The Opponent, Avalon Sunsplash Ltd., publishes a bi-monthly magazine called “Cannabis Culture”, operates a store in Vancouver and maintains a website at cannabisculture.com.

The Opposition Board had concluded that “the distinctiveness of the Opponent’s mark was sufficient to negate the distinctiveness of the applied for mark”.  Notwithstanding additional evidence filed on appeal, the Federal Court agreed, noting the similarity of the wares and services, and that the only difference between the Applicant’s mark, CANNABIS CULTURE SHOP, and the Opponent’s mark, CANNABIS CULTURE was the use of the word “shop”, which was not in itself inherently distinctive.

The Opposition Board had also refused FRIENDLY STRANGER CANNABIS CULTURE SHOP on a balance of probabilities, since it resembled the Opponent’s mark and both parties targeted the same market.  However, the Federal Court was satisfied that this mark should be allowed since additional evidence shifted the emphasis to the words “Friendly Stranger” from “Cannabis Culture Shop”.

The Court also considered section 6(2) of the Trade-marks Act, which provides that a trademark causes confusion with another trademark if the use of both trademarks in the same area would lead to the inference that the wares or services associated with the trademarks are marketed by the same person.  On this point the Court referenced the finding in United Artist Corp. v. Pink Panther Beauty Corp. [1998] F.C.J. No. 441 that “the question posed by [section 6(2)] does not concern the confusion of the marks, but confusion of goods or services from one source as being from another source”.  Although the wares of the parties were similar, the Court was satisfied there was also no confusion as to source since the marketplaces were very different.  Friendly Stranger Cannabis Culture shop had a strong presence in Toronto, while the Opponent’s marketplace was Vancouver.  Moreover, the internet sales were only a small fraction of what was sold in the stores and the domain names of the parties were very different.  Presumably, if the Opponent had had a stronger internet presence the Court might have found confusion on the basis of section 6(2) since it would have then been difficult to differentiate the “marketplaces” in Vancouver and Toronto.  However, this was not the case.

Malcolm Parry’s VANCOUVER LIFE Fails to Impress Federal Court

By In Case Law, Trademark Oppositions

The Federal Court recently issued its decision in Sim & McBurney v. Malcolm Parry.  This case was an appeal by Sim & McBurney from a decision of the Trade-marks Opposition Board, relating to Sim & McBurney’s Section 45 challenge to society columnist Malcolm Parry‘s trade-mark VANCOUVER LIFE.  Toronto Life Publishing Company Limited (represented by Sim & McBurney) has a pending application to register VANCOUVER LIFE for similar wares and services.
 
Under Section 45 of the Trade-marks Act, at the request of a third party, the Registrar may require a trade-mark owner to show that the registered mark has been used in association with the wares or services specified in the registration within the past three years.  The Registrar found that there had been no use of the trade-mark VANCOUVER LIFE in association with the specified services and most of the specified wares, but maintained the registration in part, finding there had been use of the trade-mark in association with “editorial/advertising inserts into publications and periodicals”.  Sim & McBurney appealed this decision and sought to have the trade-mark expunged in association with all registered wares.  Read more

Evidentiary Omissions Lead to Trademark Appeal

By In Case Law, Registration, Trademark Oppositions

The recent Federal Court case of Sanders v. Smart & Biggar Intellectual Property and Technology Law is a good example of the difference that well prepared evidence can make.  The Trademarks Opposition Board expunged the applicant’s trade-mark, “UGGLY BOOTS” pursuant to section 45 of the Trade-marks Act because the applicant had not demonstrated use of the trademark in Canada.  The Board found that the applicant’s evidence was “rampant with ambiguities” and omissions. 

The applicant appealed to the Federal Court pursuant to section 56 of the Act.  The applicant was allowed to present new evidence and the appeal was treated as a new hearing.  The applicant’s new evidence consisted of the affidavits of five clients, which all showed the transfer of wares with the trademark.  The affidavits also attached invoices proving the transfers took place.  The Court found that this new evidence went beyond mere allegations of use, noting that the applicant was only required to produce “evidence of a single sale, whether wholesale or retail, in the normal course of trade” so long as the sale was not deliberately manufactured or contrived to protect the registration of the trademark.  In applying the principle of use “in the normal course of trade”, the Court also noted that good faith is presumed when there is no evidence challenging the affiant’s credibility.  Thus, the Court found in the applicant’s favour, something the Board might have done if better evidence had been presented at first instance.