Canadian ReMARKS

Smart & Biggar/Fetherstonhaugh is proud to have been recognized with four prestigious awards by the U.K. publication Managing Intellectual Property (MIP).

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The effect of innocent misstatements on the validity of trademarks. In both Canada and the United States, an innocent misstatement does not appear to be sufficient to invalidate a trademark registration. However, trademark owners should remain vigilant and exercise caution when making representations to the respective trademark offices.

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Significant amendments proposed to Canada's Trademarks Regulations. The Trademarks Office has proposed significant amendments to the Trademarks Regulations that, if implemented, will have a substantive impact beyond purely procedural changes.

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Noteworthy cases

Recent Court decisions

Industries Lassonde Inc. v. Oasis D'Olivia Inc., 2012 QCCA 593 — Court reverses precedent-setting decision to award damages based on anti-SLAPP provisions. The Court of Appeal of Quebec reversed the Superior Court of Quebec's precedent-setting decision to award $125,000 in damages and costs due to the plaintiff having commenced an unfounded and frivolous proceeding, contrary to Quebec's anti-SLAPP ("Strategic Lawsuits Against Public Participation") provisions, under Quebec's Civil Code of Procedure. This decision of the Court of Appeal of Quebec is important as it reiterates the right of a trademark owner to defend its trademarks through opposition and court proceedings, without this necessarily resulting in a finding of an abuse of process under the Quebec anti-SLAPP provisions.

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Ontario Teachers' Pension Plan Board v. Canada (Attorney General), 2012 FCA 60 — Court of Appeal considers descriptiveness — the impression a trademark, understood in its proper context, would make in the mind of a normal or reasonable person. The Federal Court of Appeal affirmed a decision of the Federal Court, in turn affirming a decision of the Registrar of Trademarks, that the trademark TEACHERS' for use in association with the administration of a pension plan for teachers is unregistrable as it is clearly descriptive of the character or quality of the services. This case is particularly of interest since the Federal Court of Appeal confirmed the broad scope of section 12(1)(b) of the Trademarks Act and that a descriptiveness analysis requires one to consider what impression the trademark, understood in its proper context with the wares and/or services offered by the applicant, would make in the mind of a reasonable person.

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The Commissioner of Competition v. Yellow Page Marketing B.V. et al, 2012 ONSC 927 — Ontario Court orders defendants to pay $9 million for violating Competition Act by use of Yellow Pages marks. The Ontario Superior Court of Justice found that the respondents had violated the Competition Act by making false or misleading material representations so as to appear to be related to the Yellow Pages Group, inter alia, by using trademarks of the Yellow Pages Group, or close variants thereof, including the words "Yellow Page" and the "Walking Fingers" design. This decision is a reminder that section 74.01 (1)(a) of the Competition Act is not concerned with determining matters of trademark validity or infringement but rather whether materially false or misleading representations were made. It is also noteworthy for its international aspect, as well as for the administrative monetary penalties imposed amounting to $9 million, the highest penalties ever awarded in contested deceptive marketing proceedings in Canada, and representing the first decision in a contested proceeding to test the new penalty regime imposed three years ago.

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Trademarks Opposition Board decisions

Yellow Fence Rentals Inc. v. India Steel & Fence Rental Ltd., 2011 TMOB 257 — Colour difficult to protect as an element of a trademark because such elements may be seen as functional. The Trademarks Opposition Board refused an application to register a trademark described as the colours yellow and black applied to a fence panel in association with fence rental services and fence delivery, assembly and disassembly services. This decision is noteworthy given that the Trademarks Opposition Board found that the colour mark was inherently weak and therefore noted that it was incumbent for the applicant to demonstrate that the mark is recognized by consumers as a trademark and not as ornamental or functional elements of the product.

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Section 45 decisions

Blake Cassels & Graydon LLP v. Country Fresh Enterprises Inc., 2012 TMOB 2 — Compliance with statutes apart from the Trademarks Act not a relevant consideration in section 45 proceedings. In a section 45 proceeding, Country Fresh Enterprises Inc., the registered owner of the COUNTRY FRESH & Design mark, submitted evidence of use of the COUNTRY FRESH & Design mark in the form of sample labels and packaging that it asserted were representative of those used during the preceding three-year period. The party requesting the section 45 proceeding challenged the registrant's evidence, asserting that it was unclear whether the sample labels and packaging were actually used in Canada during the relevant period because they did not comply with Canadian labelling legislation. The Hearing Officer rejected the requesting party's argument and upheld the registration. This decision is important as it confirms that compliance with statutes apart from the Trademarks Act is not a relevant consideration in section 45 proceedings.

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Blake, Cassels & Graydon LLP v. Canadian Western Bank, 2011 TMOB 247 — Deficiencies in written license agreement between registrant and subsidiary should not be fatal to the subject registrations. The Hearing Officer reiterated that "the purpose and scope of section 45 of the [Trademarks] Act is to provide a simple, summary and expeditious procedure for removing 'deadwood' from the Register and, as such, the evidentiary threshold that the registered owner must meet is quite low." Following this principle, the Hearing Officer maintained the registrations for the trademarks CWT and CWEB on the basis that the registrant had provided sufficient evidence of use of the marks by a subsidiary, and that due to the nature and intent of section 45 proceedings, deficiencies in the written license agreement between the registrant and the subsidiary should not be fatal to the subject registrations.

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CIRA domain name disputes

TWENGA.CA – Twenga, S.A. v. John Doe, CIRA Dispute No. 00177 — First decision under current CDRP Policy expanding grounds upon which complainant can establish "rights in the mark." Version 1.3 of the CIRA Domain Name Dispute Resolution Policy, which came into effect in August 2011, removed the definitions of "rights" and "use" of a mark for the reason that those definitions were seen to improperly narrow what rights qualify for protection. This is the first decision under the current Policy expanding the grounds upon which a complainant can establish "rights in the mark." Specifically, the Panel found that where the complainant's trademark registration is for use with the same goods or services as the domain name, then that registration is evidence of the complainant's rights in the mark as of the date of filing of the application. However, where the goods and services are not the same, the registration can still only be used as evidence of rights in the mark as of the date of registration.

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Kaboom! Sound marks are now registrable in Canada
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Smart & Biggar/ Fetherstonhaugh tops WTR 1000 rankings and is recognized as a "trademark powerhouse"
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Smart & Biggar tops the Canadian IP rankings in Chambers Global — The World's Leading Lawyers for Business – "A really great IP boutique"
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Smart & Biggar/ Fetherstonhaugh earns highest ranking in Managing Intellectual Property's 2012 trade mark survey
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Smart & Biggar/ Fetherstonhaugh recognized as "the biggest and deepest IP shop in Canada" by Benchmark Litigation Canada 2012
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Smart & Biggar/ Fetherstonhaugh achieves top ranking in The Lexpert®/American Lawyer Guide to the Leading 500 Lawyers in Canada
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Smart & Biggar/ Fetherstonhaugh recognized in the Lexpert® Guide to the Leading US/Canada Cross-border Litigation Lawyers in Canada, 2011 edition
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Smart & Biggar/ Fetherstonhaugh tops the rankings in The Best Lawyers in Canada®
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Smart & Biggar/ Fetherstonhaugh tops the rankings in Who's Who Legal: Canada 2011
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Protecting the shape of wares or their containers in Canada. Under the Trademarks Act, the shape of a bottle, for example, is considered and treated as a "distinguishing guise." A distinguishing guise is defined as a shaping of wares or their containers, a mode of wrapping or packaging wares, the appearance of which is used for the purpose of distinguishing one's wares or services from those of others. In order for a distinguishing guise to be registered, it must have been on the market long enough and extensively enough for the distinguishing guise to have become distinctive as of the filing date of the application. An application to register a distinguishing guise therefore cannot be filed on the basis of proposed use and the "acquired distinctiveness" required at the time of filing can often be an obstacle. So, how can the shape of a bottle be protected in Canada in the absence of use and the requisite acquired distinctiveness under the Trademarks Act? By way of an industrial design registration, that's how. There is no acquired distinctiveness requirement under the Industrial Design Act. An application can be filed in the absence of any use in Canada. One caveat, however: an application for an industrial design must be filed within one year of the first publication or disclosure of the design in Canada or elsewhere. If more than one year has elapsed since the first publication, industrial design protection is no longer available.

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

Geneviève M. Prévost

Mark K. Evans


Philip Lapin



Timothy P. Lo

Kohji Suzuki


Daniel M. Anthony

Heather E. Robertson

Ekaterina K. Tsimberis


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

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