Canadian ReMARKS

Articles

Court rules on first-ever trademark infringement proceeding brought by way of application. The Federal Court recently decided against BBM Canada in its first-ever ruling on an "application" to the Court for trademark infringement, passing-off and depreciation of goodwill in BBM Canada v. Research In Motion Ltd., 2012 FC 666.

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Noteworthy cases

Recent Court decisions

Richard v. Time Inc., 2012 SCC 8 (February 28, 2012) — Supreme Court addresses false and misleading advertising. The Supreme Court addressed the test to be applied to determine what constitutes a false or misleading representation pursuant to the Quebec Consumer Protection Act. In so doing, the Supreme Court addressed the issues of "general impression" and "average consumer," the interpretation of which it considered informed by relevant trademark jurisprudence, both being forms of consumer protection legislation.

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Spirits International B.V. v. BCF S.E.N.C.R.L. and Registrar of Trademarks, 2012 FCA 131 (April 27, 2012) — Federal Court clarifies the standard of review to be applied in an appeal of a decision under section 45(1) of the Trademarks Act when additional evidence is put forth. In an appeal of a section 45 proceeding, the Federal Court of Appeal held that the trademark RUSSIAN VODKA & Design in association with vodka should be maintained on the register. This case considers the evidentiary requirement for establishing control over the character or quality of the registered wares in a section 45 proceeding where a company related to the registrant acts as the selling agent in Canada. While merely attributing use to "MY COMPANY," a phrase used to refer to a group of related corporations, is insufficient to establish control, assertions of facts describing how the registrant exercises control over the character or quality of the registered wares is sufficient. The appellant was successfully represented by Brian P. Isaac and Heather E. Robertson of our Toronto office.

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Skipper Online Services (SOS) Inc. v. 2030564 Ontario Inc., 2012 ONSC 1852 (March 22, 2012) — Ontario Superior Court canvasses the law regarding the interpretation of settlement agreements. The Ontario Superior Court of Justice held that the respondent, Boatsmart, had breached a settlement agreement prohibiting the use of the term "EXAMEN DE BATEAU," or any translations thereof, by using the terms "boat exam" and "boating exam." This case demonstrates the importance of contextual interpretation as to the intention of the parties as well as specificity in matters of prohibited and permitted terms in settlement agreements.

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Trademarks Opposition Board decisions

CoreLogic, Inc. v. MLXjet Media Corp., 2012 TMOB 67 (April 4, 2012) — Service performed in association with a trademark need not be paid for by a third party for such service to be within the meaning of "use" as defined by the Trademarks Act. The Trademarks Opposition Board refused an application to register the trademark MLXJET in association with uniforms for employees and pens because the uniforms and pens were only used for the applicant's own promotional purposes. While ultimately refusing the instant trademark application, the Opposition Board clarified that services performed in association with MLXJET need not be paid for by a third party for such services to be within the meaning of "use" as defined by the Trademarks Act.

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385229 Ontario Ltd. v. ServiceMaster Company, 2012 TMOB 59 (March 30, 2012) — The first portion of a trademark is considered most relevant for the purpose of distinction if no aspect of mark is striking or unique. The Trademarks Opposition Board refused applications to register the trademarks SERVICEMASTER CLEAN and SERVICEMASTER CLEAN & Design in association with, among other things, cleaning and janitorial services based upon a finding that the applicant's marks were confusing with the opponent's previously used trademarks MASTERCLEAN and MASTER CLEAN. This decision is particularly noteworthy for the Opposition Board's position that in assessing confusion, if there is no aspect of either trademark that is particularly striking or unique, the first portion of the trademarks is considered to be dominant and most relevant for the purpose of distinction.

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CIRA domain name disputes

JOBRAPIDO.CA – Jobrapido, S.r.l. v. Jonathan Langue, CIRA Dispute No. 00186 (April 20, 2012) — Panel holds that rights based on a trademark registration should only run from the date of registration, and fails to address the expanded interpretation of the term "rights" under the current CDRP Policy adopted in Twenga. 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. At least one decision has since expanded the scope of the term "rights" by holding that a trademark owner may, in certain circumstances, assert rights based on a trademark registration going back to the application filing date. In the present case, however, the Panel held that rights based on a trademark registration should only run from the date of registration. As a result, there are now conflicting decisions as to what can constitute "rights" in a mark under the current Policy. It will be interesting to see which approach is adopted in future decisions.

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CADILLACXTS.CA – General Motors LLC v. Tony Wilson, CIRA Dispute No. 00182 (March 21, 2012) — Complainant succeeds because of the switch to a non-exhaustive list of bad faith factors. Version 1.3 of the CIRA Domain Name Dispute Resolution Policy, which came into effect in August 2011, amended the provisions dealing with bad faith registration of a domain name to add a fourth circumstance describing bad faith and to make the list of bad faith circumstances non-exhaustive. The Panel in this case applied the non-exhaustive language of the current Policy to find that the factual circumstances at issue, while not described precisely under any enumerated circumstances, fell "within the spirit" of the provision. On this basis, the Panel ordered that the disputed domain name be transferred to the complainant. This decision is one of the first under the current Policy where a complainant has succeeded because of the switch to a non-exhaustive list of bad faith factors.

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TrademarkS OFFICE NEWS

Descriptions of wares/services
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CIRA NEWS

ICANN releases list of new gTLD applications on June 13, 2012
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RANKINGS AND RECOGNITIONS

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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Smart & Biggar/ Fetherstonhaugh dominates the rankings in IP law in the 2012 edition of The Canadian Legal Lexpert® Directory
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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 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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Firm recognized in PLC's IP in Business Transactions multi-jurisdictional guide
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CANADIAN PRACTICE TIP

It's important to bear in mind that Canada has two official languages: English and French. This impacts many aspects of Canadian trademark practice. As just one example, when assessing whether a mark is clearly descriptive
or deceptively misdescriptive, the Canadian Trademarks Act requires that Examiners have regard to the meaning of the mark in both English and French. Bilingualism also impacts the requirements for promoting, packaging and labelling products for sale in the province of Quebec. The Charter of the French Language contains detailed requirements and imposes penalties for contraventions, which include significant fines in some circumstances. Smart & Biggar can provide expert and
up-to-date advice on these requirements.
 

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

MANAGING EDITORS
Geneviève M. Prévost

 
Mark K. Evans

 
 

TMO NEWS EDITOR
Philip Lapin

 
 

 
 

ARTICLES EDITORS
Timothy P. Lo

 
Kohji Suzuki

 
 

CASE BRIEF EDITORS
Daniel M. Anthony

 
Heather E. Robertson

 
Ekaterina K. Tsimberis

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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