TM Newsletter

May/June 2011

Noteworthy cases

Recent court decisions

Aquasmart Technologies Inc. v. Robert Klassen, 2011 FC 212. On a motion for default judgment, the Federal Court reiterated the burden of proof on the plaintiff, the significant weight that will be given to circumstantial evidence of actual confusion, and the significant influence that party conduct can have on the determination of the quantum of damages and costs awarded on a solicitor-client basis.

Read more »

Chaussures Régence Inc. v. Naturmania Inc., 2011 QCCS 744. In a trademark infringement case, the Quebec Superior Court found that sales by the defendants of hunting boots marked with the trademark ACTION was likely to cause confusion with the plaintiff's registered trademark ACTON for use in association with similar wares. Nonetheless, the Court refused to hold the defendants liable for trademark infringement, concluding that the plaintiff, having previously manufactured ACTION boots for the defendants and having waited five years thereafter to launch their action, had either acquiesced or had its action barred by limitation period.

Read more »

Trademarks Opposition Board decisions

Coors Global Properties, Inc. v. Drummond Brewing Company Ltd., 2011 TMOB 44. The Trademarks Opposition Board refused an application to register the trademark BEER BEER in association with brewed alcoholic beverages on the basis that the mark was clearly descriptive of the character or the quality of the wares covered by the application. This decision is particularly noteworthy as the opponent was faced with the task of distinguishing the case from an earlier Federal Court decision in which the trademark PIZZA PIZZA was held registrable in association with, inter alia, pizza. This decision is also interesting insofar as the Trademarks Opposition Board remarked that whether a trademark is commonly used in the English language is not the applicable test for determining whether it is clearly descriptive.

Read more »

Pélican International Inc. v. GSC Technologies Corp., 2011 TMOB 42. The Trademarks Opposition Board held that the opponent was allowed to satisfy its initial evidential burden by relying upon the applicant's evidence where the relevant facts were more readily available to the applicant, and where such evidence was clearly inconsistent with the applicant's claim. In addition, the Opposition Board confirmed that to the extent that the facts pertaining to a ground of opposition are more readily available to the applicant, this evidential burden on the opponent is lower.

Read more »

Articles

Trademark "use" on samples and in clinical trials. Determining whether a trademark applicant has used its trademark in Canada is important, as an incorrect assertion of "use" is a ground of opposition and may jeopardize the validity of the registration that eventually issues. This article addresses whether distributing marked products as samples to potential Canadian customers or using them in clinical trials is considered "use" in Canada.

Read more »

Invalidating a Canadian trademark registration. The benefits of owning a trademark registration also give good cause for a business to attack the trademark registrations of its competitors. This article discusses the means by which one can attack a trademark registration with the aim of having that registration declared invalid or expunged.

Read more »

Canada's anti-spam legislation to come into force this year. Canada's first anti-spam legislation was passed by the Canadian government on December 15, 2010, and is expected to come into force later this year. The legislation brings Canada into line with other international communities, given that Canada was the last G8 country without anti-spam legislation. It is important for companies to be familiar with the new legislation and take steps to develop protocols for use once the legislation comes into force.

Read more »

Rankings and recognitions

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

Read more »

Firm achieves top ranking in the International Who's Who of Patent Lawyers 2011 edition

Read more »

Firm dominates in PLC Cross-border IP in Business Transactions Handbook 2011/12

Read more »

Smart & Biggar/Fetherstonhaugh recognized as a leading firm in the 2011 edition of the PLC Cross-border Life Sciences Handbook

Read more »

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

Read more »

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

Read more »

Canadian practice tip

For the purposes of filing an application for registration, Canada does not use the Nice International or a local system of classification. Wares (or goods) and services are simply listed in a Canadian application without any requirement that they be categorized in a particular manner. A benefit flowing from this system is that the applicant can include as many wares and services as have been used or are intended for use in Canada without the payment of any addition fee-per-class beyond the basic application fee. However, a corresponding downside is that the wares and services must be described in "ordinary commercial terms" rather than through the use of standard classification descriptions. This generally requires the use of quite specific listings of individual items. Although some guidance as to what will be accepted can be found in the Wares and Services Manual published by the Canadian Intellectual Property Office, reaching an agreement with the Examiner in charge of a case as to whether a particular specification is in sufficient detail so as to qualify as "ordinary commercial terms" can be a challenging and lengthy process.

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

 

 

Bio  Email
 

Bio  Email

 

TMO news editor:

Philip Lapin

 

 

 

Bio  Email
 

 

 

Articles editors:

Timothy P. Lo

Kohji Suzuki

 

 

Bio  Email
 

Bio  Email

 

Case brief editors:

Daniel M. Anthony

Heather E. Robertson

Ekaterina K. Tsimberis

 

Bio  Email
 

Bio  Email

Bio  Email

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.

smart-biggar.ca   |   Ottawa   |   Toronto   |   Montreal   |   Vancouver