TM Newsletter

March/April 2011

Smart & Biggar/Fetherstonhaugh recognized by Managing Intellectual Property with four prominent awards honouring excellence in Canadian IP law

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Noteworthy cases

Recent court decisions

TSA Stores, Inc. v. The Registrar of Trademarks, 2011 FC 273. The Federal Court has overturned a decision of the Registrar of Trademarks, and held that a series of registrations for the SPORTS AUTHORITY retail sporting goods stores are in use in Canada, and are to be maintained, based solely upon information accessible by Canadians on a website based in the United States. TSA Stores was successfully represented by Mark Evans and Jayda Sutton from our Toronto Office.

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Wonderfarm Biscuits & Confectionery SDN BHD v. Borden Ladner Gervais LLP, 2011 FC 117. After new evidence of use was provided by the trademark owner on appeal, the Federal Court overturned a decision of the Registrar of Trademarks to expunge all but a few wares in registration pursuant to section 45. Nevertheless, costs were ordered against the successful appellant for its failure to file proper evidence before the Registrar.

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Empresa Cubana del Tabaco trading also as Cubatabco v. Shapiro Cohen and the Registrar of Trademarks, 2011 FC 102. The Federal Court set aside a decision of the Registrar of Trademarks to expunge registrations for the trademarks COHIBA and COHIBA & DESIGN on the basis of the failure of the trademark owner to show that use of the trademarks by its licensee accrued to the owner as well as the failure to show use of the word mark on the wares as specifically listed. The case illustrates the impact of additional evidence filed on appeal and provides guidance as to the nature of the evidence required to establish the notion of control for the purposes of section 50 of the Trademarks Act.

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Ontario Teachers' Pension Plan Board v. Canada (A.G.), 2011 FC 58. The Federal Court confirmed the decision of the Registrar of Trademarks to refuse the application to register the trademark TEACHERS' for use in association with services relating to the "administration of a pension plan, management and investment of a pension fund for teachers in Ontario" as being clearly descriptive of the intrinsic character of the services, contrary to section 12(1)(b) of the Trademarks Act.

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Eva Gabor International Ltd. v. 1459243 Ontario Inc., 2011 FC 58. The Federal Court overturned a decision of the Registrar of Trademarks to expunge a trademark registration further to a section 45 request, finding that hearsay evidence from the President of the appellant was admissible for the purpose of a section 45 proceeding since it was reliable and necessary, and that promotional material bearing a slightly modified mark provided to customers with the wares can constitute evidence of use of the trademark.

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Trademarks Opposition Board decisions

Kelemata S.p.A. v. Gillette Company, 2011 TMOB 18. In dismissing an opposition, the Trademarks Opposition Board held that the applied-for trademark GILLETTE VENUS was not confusing with the trademark VENUS & DESIGN, for which an application had been previously filed by the opponent in association with overlapping wares. Notably, the Opposition Board concluded that the applicant's extensive use and advertisement in Canada of its pre-existing family of GILLETTE trademarks made confusion with the opponent's mark unlikely.

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Canadian Dental Hygienists' Association/L'Association canadienne des hygiénistes dentaires v. Canadian Dental Association/ L'Association Dentaire Canadienne, 2011 TMOB 7. The Trademarks Opposition Board refused an application by the Canadian Dental Association for the mark NATIONAL DENTAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ DENTAIRE, finding the mark to be confusing with marks registered by the opponent, the Canadian Dental Hygienists' Association, and also finding the mark to be clearly descriptive. The Trademarks Opposition Board clarified that the descriptiveness of a mark is to be assessed from the perspective of a bilingual consumer.

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MSLO Shared IP Sub LLC v. Shady Glen Enterprises Limited, 2011 TMOB 4. The Trademarks Opposition Board held that the applicant's previous registration for a similar trademark did not necessarily give the applicant the right to obtain the registration of the marks at issue.

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CIRA domain name disputes

Warren Miller Entertainment, Inc. v. Willi Vogl & Associates, Ltd.,CIRA Dispute No. 00159. Under the Canadian Domain Name Dispute Resolution Policy, the complainant must show on the balance of probabilities that the registrant registered the domain name in bad faith. Where bad faith cannot be demonstrated as of the date of the registration, the factor is not established, even though the domain name may be used in bad faith after the registration date.

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Articles

Proposed use applications in Canada. Using the United States as a comparative tool, the following outlines some important points to keep in mind when filing an application in Canada on the basis of proposed use.

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The Quebec Charter of the French Language: What you need to know. With the expansion of businesses into different provinces and countries, comes the obligation of ensuring that the products or services offered are commercialized in accordance with the laws of such jurisdictions, including notably any applicable language laws.

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Preparing filing instructions for Canadian agents — Am I missing anything? In addition to the basic information provided to Canadian trademark agents when preparing filing instructions, there is often additional information that should also be provided, which is either required, or could strengthen the application and the resulting registration.

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Trademarks Office news

Introduction »

Prosecution:

Name or surname

Summary »
CIPO notice »

Entitlement to use the trademark in Canada

Summary »
CIPO notice »

Relevant date for section 14

Summary »
CIPO notice »

Oppositions:

Deadline to complete cross-examinations

Summary »
CIPO notice »

Filing of written arguments

Summary »
CIPO notice »

Other news and announcements:

New Registrar of Trademarks

Summary »

Overview of previous proposals and comments received

CIPO notice »

CIRA news

CIRA releases its conclusions on the CDRP public consultation

Summary »

Canadian practice tip

If a trademark has already been used in Canada at the time an application for registration is filed, it is necessary to provide the date of first use, or a date at least by which the applicant is certain that use had begun in Canada. Sometimes, determining the exact date of the first sale of a product or provision of a service can be difficult. However, there are three alternatives for providing the date. If it is known, the exact date, such as May 1, 2010, can be used. If only the month and year are known, these can be used, in which case the date will be considered to be the last day of the month. If only the year is known, simply providing the year is acceptable, in which case the date will be considered to be December 31 of that year.

Smart & Biggar

Contact information

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

Managing editors:

Keltie R. Sim

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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