TM Newsletter

September/October 2011

Articles

Canadian trademark litigation practice: 10 things to know. The Canadian trademark litigation process, although similar in many ways to other countries such as the United States, has several distinctive characteristics. These unique features differentiate the Canadian system and make Canada a favourable jurisdiction for litigating trademark disputes.

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Canadian opposition proceedings. The complexity, length and cost of an opposition proceeding depend on many factors, including the number and nature of the grounds of opposition, the factual scenario and resulting issues to be addressed, the amount of evidence required and, in particular, the steps that are taken in the opposition, many of which are optional.

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Noteworthy cases

Recent court decisions

Target Brands, Inc. and Target Corporation v. Fairweather Ltd., International Clothiers Inc. and Les Ailes de la Mode Incorporées, 2011 FC 758 — Federal Court denies the plaintiffs' motion for an interlocutory injunction. The Federal Court dismissed, with costs, the plaintiffs' motion for an interlocutory injunction to restrain the defendants, pending final disposition of the action, from operating retail stores in Canada in association with the trademark TARGET APPAREL. This case illustrates the heavy onus on the moving party to establish that irreparable harm will be suffered if an injunction is not granted. Fairweather Ltd. and Les Ailes de la Mode Incorporées were successfully represented by Mark K. Evans, Mark G. Biernacki and Geneviève M. Prévost of our Toronto office.

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Hortilux Schreder B.V. v. Iwasaki Electric Co. Ltd, 2011 FC 967 — Hortilux Schreder's opposition to Iwasaki's application for HORTILUX allowed on appeal. The Federal Court allowed an appeal by Hortilux Schreder B.V. from a decision of the Trademarks Opposition Board rejecting its opposition to Iwasaki Electric Co. Ltd.'s application for the trademark HORTILUX. Justice Russell of the Federal Court reversed the findings of the Opposition Board on both grounds of opposition in issue on the appeal and allowed Hortilux Schreder B.V.'s opposition. The appellant Hortilux Schreder B.V. was successfully represented by Steven B. Garland and Philip Lapin of our Ottawa office.

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Tucows.Com Co v. Lojas Renner SA, 2011 ONCA 548 — Ontario Court of Appeal finds domain names are personal property. The Ontario Court of Appeal has determined that domain names can constitute a form of personal property in Canada. This case is of particular importance as it will facilitate the ability of a domain name registrant with a place of business in Ontario to have a domain name dispute heard by an Ontario court. However, this potential procedural advantage is contingent on the ability to establish a sufficient connection between the registrant and Ontario.

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Spirits International B.V. v. BCF S.E.N.C.R.L., 2011 FC 805 — Evidence found insufficient to establish control by owner of licensed trademark. The Federal Court upheld a decision of the Registrar of Trademarks to expunge Trademark Registration No. TMA208,808 on the basis of the trademark owner's failure to show that use of the trademark by its licensee accrued to the benefit of the owner. This case illustrates the kind of evidence of use by a licensee that was deemed insufficient by the Federal Court to establish that the registered owner of the trademark exerted control over the character and quality of such licensed use by its licensee during the relevant period.

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Trademarks Opposition Board decisions

Canadian Dental Association v. Ontario Dental Assistants Association, 2011 TMOB 125 — Opposition Board confirms that professional designations cannot function as certification marks. The Trademarks Opposition Board refused an application to register the certification mark CDA in association with "dental assisting services." In refusing the application, the Opposition Board confirmed previous jurisprudence that professional designations cannot function as certification marks and found that the applied-for trademark CDA, being an abbreviation for the professional designation "Certified Dental Assistant," could not function as a certification mark.

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Reitmans (Canada) Ltd. v. The Thymes, Limited, 2011 TMOB 100 — Use of lawyer's affidavit admissible if it does not include opinion evidence about a contentious issue. The Trademarks Opposition Board refused an application to register the trademark THYMES & Design on grounds including confusion with a previously registered trademark. The Board discussed the admissibility and use of a lawyer's affidavit in a trademark opposition proceeding, and confirmed that such an affidavit is admissible if it does not include opinion evidence about a contentious issue. The Board also confirmed that an application filed based on registration and use in the country of origin requires an applicant to have used the trademark in the jurisdiction of the country of origin as of the Canadian filing date.

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Cheung's Bakery Products Ltd v. Saint Honore Cake Shop Limited, 2011 TMOB 94 — For wares offered to Chinese consumers, average Canadian consumer for determining likelihood of confusion is one who can read and understand Chinese characters. The Trademarks Opposition Board refused an application to register the trademark SAINT HONORE CAKE SHOP & Chinese Characters Design in association with certain overlapping wares on the basis that, inter alia, the mark was confusing with the opponent's registered trademarks. This decision is noteworthy as the Trademarks Opposition Board found that in a situation where the wares are offered primarily to Chinese consumers, the average Canadian consumer for determining the likelihood of confusion would be one who can read and understand Chinese characters. Also of interest is the Opposition Board's conclusion that despite the inclusion of English words in the design mark, the parties' marks were similar in both appearance and sound, because the English words were not emphasized in any way and were included merely as part of the applicant's corporate name. The case also provides guidance on the admissibility of expert evidence following the Supreme Court of Canada's Masterpiece decision.

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CIRA domain name disputes

The Excite Group, Inc. v. Zucker International Marketing Inc. CIRA Dispute No. 00166 — Details regarding specific manner of use of a mark required. In order to rely on common law trademark rights to establish that "the domain name is confusingly similar to a mark in which the complainant had rights as of the date of registration of the domain name," the complainant must provide at least some evidence of use of the mark in Canada. A simple statement that the mark has been used in Canada, without any details regarding the specific manner in which the mark was used, did not allow the panel to make a finding of fact that the mark has been "used" as defined in paragraph 3.5 of the CDRP Policy.

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Rankings and recognitions

Smart & Biggar/
Fetherstonhaugh chosen by Managing Intellectual Property as Canada's IP Firm of the Year and Trademark Firm of the Year.

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Smart & Biggar/
Fetherstonhaugh tops the rankings in The Best Lawyers in Canada©

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Smart & Biggar/
Fetherstonhaugh recognized in The International Who's Who of Trademark Lawyers 2011

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

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CIRA news

CIRA considers the adoption of French internationalized domain names

Summary »

Canadian practice tip

An application in Canada based on proposed use will only proceed to registration upon the filing of a Declaration of Use. While extensions of time are available, if use has not yet commenced in association with all wares and/or services and proceeding to registration without further delay is desired, there are options available to an applicant.

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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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