Canadian Trademark Blog

Maintained by Clark Wilson LLP

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.

CIRA Announces Formal Revisions To Implement New WHOIS Policy

By In Domain Name Disputes, Domain Names

The Canadian Internet Registration Authority has issued a news release announcing revisions to a number of its policies, rules and procedures, which are required to formally implement its new WHOIS Policy. These revisions will become effective on June 10, 2008. As reported in an earlier posting, the changes to the .CA WHOIS Policy will permit individual registrants of .CA domain names to not publicly disclose their WHOIS information.

Apple To Launch iPhone In Canada Amid Trademark Dispute

By In Trademark Oppositions

Notwithstanding an ongoing trademark dispute, Apple Inc’s iPhone is scheduled to launch in Canada later this year. The service will be offered by Rogers Communications Inc., the only Canadian carrier using the Global System Mobile (GSM) communications standard needed to run iPhone. The device has sold more than five million units worldwide since its launch in 2007.

We previously reported on the challenges facing Apple in seeking to register the IPHONE trademark in Canada. Apple applied to register the trademark in October of 2004 on a proposed use basis but the application was opposed by Comwave Telecom Inc., who claim to have been using the trademark in Canada since June 2004.  Comwave filed an application to register the trademark in November 2005. If Comwave can prove that it has prior use of the trademark, and that Apple’s IPHONE trademark will cause confusion in the market place, then Apple’s application could be refused.

More recently, both Apple and Comware filed additional applications in Canada and two new applications to register trademarks containing the term iPhone, iPhoneNow.ca and iphonemail.ca, have been filed by third parties. A Delaware-based company called Ocean Telecom also applied to register an iPhone trademark in July 2007 but this application was subsequently assigned to Apple.

Apple was previously involved in a dispute with Cisco Systems in the United States regarding ownership of the IPHONE trademark. The dispute was settled when the parties agreed to share the trademark.

Stanleypark.com – Not For Sale

By In Branding

We previously reported on the measures in place to secure protection for Olympic brands ahead of the 2010 Winter Olympics in Vancouver.

The potential windfall for local businesses due to Olympic tourism and general Olympic goodwill has now prompted the Vancouver park board to scramble to secure brand ownership of the popular Vancouver landmark, Stanley Park. The board are trying to purchase the domain name stanleypark.com from owner Gerry O’Neill who runs a lucrative horse-drawn carriage business in the park, but Mr. O’Neill, whose business generates close to $1 million in annual revenue, is not interested in selling. The website provides information to tourists on the fully-narrated horse-drawn carriage tours which include a complete history of the 1,000 acre park and cater to large crowds of visitors during the summer months.

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.