Canadian Trademark Blog

Maintained by Clark Wilson LLP

Proving a Trademark Licence

By In Case Law, Protection & Enforcement, Trademark Oppositions

3082833 Nova Scotia Company v. Lang Michener LLP and Registrar of Trade-marks illustrates the importance of providing evidence of any licences in place when confronted with a summary expungement under section 45 of the Trademarks Act:  an evidentiary burden that is not difficult to meet.

3082833 Nova Scotia Company (“3082”) owned the registered mark ENTRE NOUS for use in association with “telecommunication services, namely long distrance telephone services”.  The mark was originally owned and used by 3362426 Canada Inc. (“3362”) carrying on business as Primus Telecommunications Canada Inc. (“PTC”).  3082 acquired the mark in the course of a reorganization and the mark was used by PTC, which had become 3082’s wholly owned subsidiary.

In response to a section 45 summary expungement, 3082 put forward invoices issued by PTC as evidence of use, but the Registrar concluded that they only referred to “Primus Canada” and there was no evidence that 3362 or 3082 had used the mark and no evidence of a licence. Read more

BTO Members Taking Care of Legal Business

By In Case Law, Protection & Enforcement

Fans of the 70’s Canadian super group, Bachman Turner Overdrive (also commonly known as BTO), may have noted the report of a legal dispute between current and former band members over the rights to the band’s trademarks.  The mark BACHMAN-TURNER OVERDRIVE  is the subject of two registrations in the Canadian Intellectual Property Office and there are several pending applications for similar marks. 

While disputes between ex-band mates are not unusual, this one has an added twist in that it pits one brother (Randy Bachman, widely considered the most talented member) versus another (Robbie).

While this appears to be primarily a contractual dispute, the trademark issues are front and centre and serve to highlight the value of branding to musical groups, both during their heydey and into later years when remaining members (and often non-members) continue to live off the avails of a group’s prior glories.

Perhaps one day someone will turn this family feud into a Broadway musical – “Peg Boys” might be a nice nod to the Winnipeg roots of the band.

Counterfeit Goods: Statutory and Punitive Damages

By In Case Law, Protection & Enforcement

Microsoft Corporation v. 1276916 Ontario Ltd. et al is not a trademark case.   However, it is a further illustration of Canadian courts’ willingness to award substantial statutory damages under the Copyright Act, together with punitive damages, in counterfeit goods cases.

In this case Microsoft had received ten reports of software privacy.  An investigator attended the Mississauga, Ontario store operated by the defendant numbered company and was offered a computer system with unlicensed software.  A cease and desist letter was sent, but Microsoft continued to receive piracy reports.  An investigator subsequently bought a computer system with various unauthorized software loaded on it and Microsoft commenced the action.  The action was initially defended by the defendant numbered company and its owner, but the defence was struck out after the owner failed to attend discoveries, alleged the store was out of business, when it was not, and failed to appoint new counsel.

Microsoft applied for default judgment. Read more

More Beer Brand Wars

By In Branding, Case Law, Protection & Enforcement

You can tell that it’s Fall up here in the Great White North.  The weather is turning cooler, the NHL preseason is in full swing and another trademark battle between Canadian brewery icons Molson and Labatts has started. 

A recent report indicates that Molson Coors Brewing Company has launched a lawsuit in Canada’s Federal Court against Labatt Breweries of Canada, claiming that the mountain imagery in new ads for Labatt Kokanee beer infringes the copyrighted images that Molson uses on its Coors Light beer products in Canada.  Molson is reportedly seeking $10 million in damages.

For its part, Labatts says that mountain imagery has been part of its branding for four decades and that the new graphics feature the same Kokanee Glacier that the beer is named after.

Limey! Another Beer Battle a-Brewing

By In Branding, Case Law, Protection & Enforcement

News today that another battle is brewing in Canada’s notoriously litigious beer industry: Waterloo’s Brick Brewing Co. Ltd.–makers of Canadian beer brands Laker, Formosa, Red Cap, Red Baron and Waterloo–has been sued by Anheuser-Busch Co. and Labatt Brewing Co. over its labels for its Red Baron Lime beer product.

In the suit filed August 28 in Federal Court, Anheuser and Labatt take umbrage with the promotional material for Brick’s Red Baron Lime product.  In particular, they allege the labeling scheme used on Red Baron Lime products, including the use of the colours silver and green together with the depiction of a half a lime, will confuse consumers into believing there is a connection with their own Bud Light Lime product, whose label uses the colours green and white together with the depiction of a wedge of lime.

Additionally, Anheuser and Labatt have claimed that Brick’s promotional website for Red Baron Lime–located at lustforlime.com–will lead to consumers to believe there is a connection with the product and the promotional website for Bud Light Lime located at budlightlime.com.  Both sites feature prominent use of the colour green and images of young people in swimsuits. Read more

High Hurdles to Olympic Trade-mark Use

By In Branding, Legislation, Protection & Enforcement

With six months left until the start of the Vancouver 2010 Winter Olympic Games, it seems appropriate to highlight another story involving Olympic trademarks.  The Vancouver Organizing Committee (VANOC) is not the only Olympic Committee vigilantly monitoring the use of Olympics related trade-marks.  A recent bulletin chronicles the steps taken by the US Olympic Committee to protect the word OLYMPIC in the US, including obtaining an injunction against the use by Olympic Supply, Inc. of Maryland of the tradename “Olympic News”.

The bulletin summarizes that, in the US,  specific legislation prevents non-licensed use of the word OLYMPIC unless: (1) there was use with the same goods and services prior to September 21, 1950, or (2) it is obvious that the word refers to the Olympic geographic area named prior to February 6, 1998 and the word relates to goods or services that are marketed in the Olympic area and are not substantially marketed outside of that region.

In Canada, though VANOC has different enforcement tools at its disposal to prevent unauthorized persons from marketing their wares and services in association with the 2010 Olympic and Paralympic Winter Games, the results may be largely the same.   For example, the Olympic and Paralympic Marks Act (which we discussed in a previous post) prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that resembles an Olympic or Paralympic mark.  Lists of prohibited marks (including, of course, OLYMPIC) are set out in Schedules 1 and 2 of the Act.

The Act also prohibits anyone from promoting or otherwise directing public attention to a business in such manner as to lead the public into believing that there is a connection with the Canadian Olympic Committee or Canadian Paralympic Committee.   Perhaps most notably, this Act permits VANOC to obtain an interim injunction against alleged infringers without proof of irreparable harm, which is a significant and unprecedented advantage. Read more

Maple Melee Meets End?

By In Foreign Protection

There is an update available to an earlier story we blogged concerning an ongoing dispute between American Clothing Associates SA and the Office for Harmonisation in the Internal Market (OHIM).  We previously reported that a mark integrating Canada’s well-known maple leaf symbol could not be registered in the CTM because it contained the maple leaf, and accordingly improperly connoted an association with Canada.

In a decision released July 16th, the European Court of Justice dismissed American Clothing Associates’ appeal of this decision, and concluded that the maple leaf emblem was indeed protected as a state emblem.

Good coverage of the decision is available at German Trademark Law In A Nutshell – and thanks to Chris of GTLIAN for alerting us to the decision’s release.