TM Newsletter

July/August 2011

Articles

The Federal Court applies its new summary trial rules in the largest anti-counterfeiting award in Canadian history. On June 27, 2011, the Federal Court issued the highest award of damages and costs to date in Canada against purveyors of counterfeit goods in Louis Vuitton Malletier S.A. and Burberry Limited et al. v. Singga Enterprises et al.

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Official marks — a uniquely Canadian concept. After the hyphen separating "trade" and "mark," the "official mark" arguably represents the most arcane feature of Canadian trademark law. While continued use of a pre-existing trademark is exempt, official marks can seriously curtail the ability of a trademark owner to expand its use of a trademark, or register a trademark based on previous common law usage that has not yet been applied for.

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How to ace the test for establishing trademark confusion. The value of trademarks lies in their capacity to act as an indicator of source for the associated wares or services and the goodwill that flows therefrom. Use or registration by a third party of a confusing mark can lessen this value by reducing the established mark's distinctiveness, thereby diminishing the goodwill connection in the minds of consumers between the wares or services and the trademark owner.

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Defining wares and services in Canada — what is an "ordinary commercial term"? This article discusses effective strategies and practical considerations for formulating descriptions of wares and services that are likely to be accepted by a Canadian Examiner as "ordinary commercial terms."

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Trademark examination: approvals issued in special circumstances. During the examination of a trademark application, the Trademarks Office will conduct a search of their database for confusing marks that are already registered or were previously filed. Confusing marks will be cited against the application and if the applicant is not successful in overcoming the citation(s), the application will be refused. However, approvals may nevertheless be issued in special circumstances.

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Noteworthy cases

Recent court decisions

Republic of Cyprus (Commerce and Industry) v. International Cheese Council of Canada, 2011 FCA 201 — Important certification mark decision. In Canada, a mark that distinguishes wares or services that are of a defined standard with respect to their character, quality or origin can be protected by way of a certification mark. On the other hand, section 10 of the Canadian Trademarks Act also prohibits the registration and use as a trademark of marks that have become recognized in Canada, through ordinary and bona fide commercial usage, as designating the kind, quality or place of origin of any wares or services. The potential conflict is obvious: when will a mark be considered to have become recognized as designating the very product it aims to protect such that protection is no longer available? CHEDDAR, which is likely recognized by most Canadians as a hard, orange cheese and unlikely to be remembered as having originated in the 12th century in the English village of Cheddar, is a good example of this interaction. It is not often that Canadian courts have had the opportunity to examine this question.

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BBM Canada v. Research In Motion Limited, 2011 FCA 151 — New procedure for faster and cheaper litigation. The Federal Court of Appeal held that it is open to trademark owners to bring proceedings for infringement, passing-off and depreciation of goodwill by means of an "application" to the Court, which is heard and resolved summarily and relatively quickly, on the basis of affidavit evidence. This decision may pave the way for trademark owners to resolve trademark infringement matters in Canada in a more expeditious and cost-effective way.

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Hardy Way LLC v. Little Blue Box Co., 2011 FC 620 — Damages not automatically assessed. On a default judgment motion, the Federal Court did not accept that use of the words ED HARDY on their own infringed the registered trademark DON ED HARDY, and the Court awarded only nominal damages, delivery up and an injunction absent any evidence directed to a specific quantum of damage. Therefore, the Federal Court may not automatically assess damages according to the scale that it previously adopted for default judgments.

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Trademarks Opposition Board decisions

Specialized Bicycle Components, Inc. v. Goodbaby Child Products Co, Ltd., 2011 TMOB 71 — Co-existence of marks on foreign register not relevant. The Trademarks Opposition Board refused an application to register the trademark GLOBE CLAIRS Design in association with "bicycles," "baby trolleys" and related wares on the basis of confusion with the opponent's trade mark GLOBE, registered in association with "bicycles and structural parts therefor." This decision is noteworthy as the Opposition Board found that the coexistence of the parties' marks on foreign registers was not a relevant consideration, noting that no evidence had been adduced by the applicant that the marks coexisted in the marketplace in the foreign jurisdictions.

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Kost Klip Manufacturing Ltd. v. BGI Holdings Inc., 2011 TMOB 62 — Importance of adequately defining wares and services. The Trademarks Opposition Board refused an application to register the trademark CLEARVISION in association with the wares "binders" on the basis that the term "binders" is not an ordinary commercial term and is therefore unacceptable. This decision is particularly noteworthy as it underscores the importance of adequately defining the associated wares and/or services in a trademark application and emphasizes that in an opposition proceeding an allegation based on an inadequate statement of wares/services must be countered by the applicant; failure to do so, as shown in this decision, can result in the refusal of the application.

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Section 45 decisions

McCarthy Tetrault LLP v. AutoZone Parts, Inc., 2011 TMOB 73 — Use in association with online retail store services. The Registrar maintained a registration in an expungement proceeding pertaining to the trademark GET IN THE ZONE for use in association with "retail auto parts store services" provided to Canadian customers by way of the registrant's website. This case is of particular importance as it summarizes the requirements for establishing "use" in Canada of a trademark in association with retail store services offered to Canadian customers through a website, and reiterates that the registrant need not have a physical store located in Canada to satisfy the use requirements under the Trademarks Act.

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CIRA domain name disputes

Jockey International, Inc. v. Ingenuity.Net Services Corp., CIRA Dispute No. 00164 — Establishing bad faith. Under the Domain Name Dispute Resolution Policy, in order to establish that a domain name was registered in bad faith, the complainant can rely on the fact that the registrant has engaged in a pattern of registering domain names confusingly similar to well-known trademarks. This is especially relevant where bad faith cannot be shown through any other means.

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Rankings and recognitions

Smart & Biggar/
Fetherstonhaugh recognized in Managing Intellectual Property's 2011 World IP Survey in the top tier of Canadian patent, trademark and copyright firms

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Smart & Biggar/
Fetherstonhaugh dominates the rankings in World Trademark Review 1000

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Smart & Biggar/
Fetherstonhaugh achieves top ranking in IP law in the 2011 edition of The Canadian Legal Lexpert Directory

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CIRA news

CIRA's announces revised CDRP Policy and Rules to take effect on August 22, 2011

Summary »

Canadian practice tip

When filing an application in Canada, the applicant must indicate whether the trademark has been used and, if so, provide a date of first use. When the trademark has been used, it is important to correctly file the application on the basis of use, since an application filed on the basis of proposed use cannot later be amended to claim use, and such an application can also be successfully opposed by a third party on the ground that the application was improperly filed.

Similarly, an application claiming a date of first use that is earlier than the actual date of first use can also provide a valid ground of opposition. However, in this case, the application can be amended to claim a later date, provided the amendment is made prior to advertisement of the application in the Canadian Trademarks Journal.

In view of the foregoing, when obtaining instructions from a client for the filing of a new trademark application in Canada, required information for filing purposes include whether the trademark is in use in Canada and, if so, since when.

Smart & Biggar

Contact information

To offer your feedback on this newsletter or any of its articles, please contact:

Managing editors:

Geneviève M. Prévost

Mark K. Evans

 

 

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TMO news editor:

Philip Lapin

 

 

 

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Articles editors:

Timothy P. Lo

Kohji Suzuki

 

 

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Case brief editors:

Daniel M. Anthony

Heather E. Robertson

Ekaterina K. Tsimberis

 

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Our trademarks practice group

From the day Russel Smart Sr. published Canada's first text on trademarks and designs, Smart & Biggar/ Fetherstonhaugh has been at the forefront of Canadian trademark law. The tradition continues today as our experience and expertise provide clients with sophisticated and practical advice in all areas of trademark practice, from registering Canada's first sound mark to precedent-setting anti-counterfeiting customs remedies and reshaping the law of pharmaceutical trade-dress protection. For more information on our group and a full list of its members, please click here.

Disclaimer

The preceding is intended as a timely update on Canadian trademark law and practice. To request a copy of any decision, paper or legislative document, or for more detailed information or to make suggestions, kindly contact any of the editors listed above. The contents of this newsletter are informational only and do not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly. To join the Canadian ReMARKS mailing list, be removed from the mailing list or make changes to contact information, please send an email to canadianremarks@smart-biggar.ca.

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