Canadian Trademark Blog

Maintained by Clark Wilson LLP

Limited Evidence of Use on Section 45 Proceeding

By In Case Law, Registration

Brouilette Kosie Prince v. Great Harvesting Franchising, Inc. involved two Appeals under section 56 of the Trade-marks Act from decisions of the Opposition Board.  The Appellant had sought, unsuccessfully, to have the Registrar expunge two trademarks pursuant to section 45 of the Act, namely two design trademarks, both for GREAT HARVEST BREAD CO. & DESIGN.  The one was registered for use in association with the services of “operation and franchising of retail bakery shops”.  The second was registered for the same services, as well as services described as “franchising services, namely offering technical assistance in the establishment and/or operation of retail bakeries and retail bakery shop services” and wares described as “bakery goods, namely bread, cookies, muffins, and cinnamon rolls; wheat; jams and jellies; clothing, namely hats, sweatshirts, aprons, t-shirts and sweaters”.

The Federal Court agreed with the Opposition Board that the one mark registered solely in respect of the services could be maintained in its entirety and the other could be maintained in part.

In the course of the section 45 proceeding, the owner of the trademark had provided a Statutory Declaration that included two photographs (the first showing bread baskets sitting on a portable table in a mall, with a banner pinned to the table and the second showing the banner with the trademark in full), a page from a booklet regarding how to become a franchisee, and four labels, together with invoices of sales for one particular day in the three-year period preceding the Section 45 Notice.  No further evidence was provided by the owner of the trademark on the Appeal. Read more

GLAMOUR Mark Fails to Dazzle Federal Court

By In Branding, Case Law, Famous Marks, Trademark Oppositions

The Federal Court recently handed down its decision in Advance Magazine Publishers Inc. v. Farleyco Marketing Inc., an appeal from an earlier decision by the Registrar of Trade-marks that had found no likelihood of confusion between the Farleyco mark GHOULISH GLAMOUR for Halloween cosmetics and eyelash accessories and the Advance mark GLAMOUR used in association with magazines and related products and services.  New evidence was filed that went significantly beyond that which had been considered by the Registrar, so the Court considered the matter afresh.

The Court found that both marks were inherently weak as both were suggestive of their wares and services but considered whether Advance’s GLAMOUR mark had “an acquired distinctiveness through use and promotion… sufficient to warrant a wide scope of protection”.

The Court determined that while the GLAMOUR mark was well known in Canada in association with magazines (and thus had acquired distinctiveness), it was not associated with all wares and services that make up the glamour industry.  Advance argued that the wares of both parties belonged to the same general class of goods, namely cosmetic, fashion and beauty, but the Court found: “Just because cosmetic products are advertised, discussed, or otherwise featured in Advance’s magazine and related wares does not mean…  that any acquired distinctiveness of the GLAMOUR mark should extend to cover such products.”

Read more

CIPO Releases Its Plan

By In Legislation

The Canadian Intellectual Property Office recently released its 2009-2010 Business Plan to the public. The Plan is designed to direct CIPO toward its goal to “be a leading intellectual property office that is recognized for excellence in its products and services while strengthening Canada’s innovative capacity through ongoing quality improvement and continuous development of employees.”

For trademark practitioners, owners and other stakeholders, the Plan contains a few interesting tidbits:

  • the Trade-mark Opposition Board plans to establish a new service standard of four months from the date of a hearing for the issuance of final decisions of the Registrar in both section 45 and opposition cases;
  • the Board also plans to use 2009 to create an action plan relating to the goal of making section 45 and opposition case decisions available online;
  • similarly, CIPO as a whole will use 2009 to assess activities and determine requirements related to planned support of:
  • the online filing of extension of time requests for the Trade-marks Opposition Board;
  • the online filing of extension of time requests at the examination stage for trade-marks;
  • certain enhancements to the electronic application filing system for trade-marks; and
  • the electronic transmission of examiner’s reports and trade-mark correspondence.

The Trade-marks Branch also plans to conduct a feasibility assessment related to the prospective implementation of a program to assist unrepresented owners seeking trade-mark protection, similar to programs currently offered by each of UK’s Intellectual Property Office and IP Australia.

Payless to Pay More?

By In Case Law, Famous Marks, Protection & Enforcement

Collective Brand Inc., operator of the well-known US discount shoe retailer Payless ShoeSource, is again under attack from German-based sporting apparel manufacturer adidas. In a landmark US decision last spring, adidas persuaded an Oregon jury that Payless had wilfully infringed adidas’ trade mark and trade dress in various sneaker designs, and was awarded over $300 million in damages and disgorged profits. This award represented what was thought to be the largest ever US trademark verdict. On appeal, the award was later reduced to just over $65 million – still, a significant award and an important victory for adidas.

Flush from its win against Payless in the US, adidas has elected to try to repeat its success in Canada. Earlier this month, Adidas AG and Adidas Canada Ltd. filed a claim against Collective Brand Inc. in Federal Court. In Canada, adidas’ action will hinge on Payless’ alleged infringement of the rights adidas enjoys in the well-known 3 Stripes Design, and particularly the rights afforded adidas from these three trademark registrations.

If adidas is successful, it is not likely to be awarded damages anywhere near the amounts it secured in the US; nonetheless, the case will be of interest to both trademark lawyers and sneakerheads alike. We’ll keep all of you posted on material developments.

Window of Opportunity: Extra savings on CTM applications until May 1, 2009

By In Foreign Protection, Registration

While not, strictly speaking, a Canadian trade-mark issue, many Canadian trade-mark owners will be interested in this limited time opportunity to save money while obtaining protection for their marks in the European Union.

The official fees for European Union Community Trade-mark (“CTM”) applications are being reduced by about 40% (from EU 1,600 to EU 900).

In addition, applicants who apply before May 1, 2009 can save an extra EU 150, because while the final registration fee (EU 850) has already been eliminated, the minimal increase in filing fees (from EU 750 to EU 900) does not take effect until May 1, 2009.

We encourage trade-mark owners considering CTM applications to act quickly to take advantage of the extra savings available before May 1, 2009.

You Can’t Judge A Wine By It’s Label…

By In Branding

… but you sure can increase sales, or at least improve visibility in a very crowded market.  In a recent story in the Globe and Mail, the author discusses the well documented success of such British Columbia wineries as DIRTY LAUNDRY and LAUGHING STOCK, who re-branded with the help of local wine branding gurus Brandever Strategy Inc. The author then notes the recent attempts by more traditional French wineries, such as Bouchard Père & Fils, to capitalize on the trend away from more traditional wine labels, as a way to increase visibility and hopefully market share.

Trademark Statistics: Another Year in Review

By In Uncategorized

The Canadian Intellectual Property Office released its 2007-8 Annual Report a few weeks back.  A few highlights:

  • over 47,500 applications were filed in the twelve month period ending March 31, 2008, reflecting nearly a 5% increase over the previous year
  • Canada remains the most common country of applicant origin, with over 20,000 applications filed; the US placed second, with over 15,400 applications, while applicants from Germany, the United Kingdom and France rounded out the top 5
  • despite the addition of 24 new Examiners, turn-around times between filing and first exam increased by approximately 1.6 months per application, with the average turn-around time being 6.8 months
  • the number of Statements of Opposition filed increased by 25%, reversing declines seen in the previous three years
  • in contrast, the number of Section 45 (cancellation) notices issued fell to its lowest point in three years
  • interestingly, there was a 41% increase in the total number of trademark assignments filed with the Office.

Further details can be found in the full report, available here.