Canadian ReMARKS

Articles

Protecting colour trademarks in Canada. In the interest of preserving the availability of colour for use by all and in order to avoid what is sometimes called an "exhaustion of colours," a somewhat restricted regime for the protection of colour has developed in Canada.

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Noteworthy cases

Recent Court decisions

Archmetal Industries Corporation v. Jag Flocomponents N.A., 2011 FCA 235 — Decision regarding the entitlement by an importer to register a trademark used in the chain of trade. The Federal Court of Appeal dismissed an appeal by Archmetal and upheld a decision of the Federal Court ordering the expungement of Archmetal's registration of the trademark FUSION on the basis that Archmetal was not entitled to registration of the mark because it was only the importer of the valves bearing the trademark FUSION.

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Chanel S. de R.L. and Chanel Inc. v. Jiang Chu, 2011 FC 1303 — Court awards over $320,000 against counterfeiter. The Federal Court applied recently developed jurisprudence on damages, and punitive and exemplary damages, in matters involving the sale of counterfeit goods, granting over $320,000 to the plaintiffs by way of default judgment. The plaintiffs were successfully represented by Karen F. MacDonald of our Vancouver office.

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Trademark Opposition Board decisions

Fuji Television Network, Inc v. Ramesh Suri, 2011 TMOB 194 — Expense of wares not a relevant factor in determining confusion. The Trademarks Opposition Board refused an application to register the trademark IRON CHEF in association with "bar-be-que (designed and built for kitchen); stainless steel backsplash for any kitchen" as the mark was confusing with the opponent's trademark IRON CHEF, which had been previously used in Canada in association with a television program featuring cooking competitions and kitchen related products, including knives, mugs and glasses, and related wares. This decision is noteworthy as the Opposition Board relied on the recent Supreme Court of Canada decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, to find that, when considering confusion, the expense of the wares is not a relevant factor and should not limit trademark protection.

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674802 BC Limited (Amanda Enterprises) v. Encorp Pacific (Canada), 2011 TMOB 180 — A trademark found not to be clearly descriptive or deceptively misdescriptive may be found not to be distinctive. The Trademarks Opposition Board held that the trademark BOTTLE DEPOT & Design is clearly descriptive of recycling services but not so for recycling boxes. This decision is noteworthy because, notwithstanding its finding that the trademark was not clearly descriptive of recycling boxes, the Opposition Board held that the trademark was not registrable as it was not distinctive of recycling boxes, because the use of BOTTLE DEPOT would be understood by consumers as signifying a box for the deposit of beverage containers. In making this finding, the Opposition Board relied on earlier jurisprudence indicating that it does not necessarily follow that if a mark is held not to be descriptive, it is necessarily distinctive.

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Hillstone Restaurant Group, Inc. v. Houston Canada Inc., 2011 TMOB 154 — Board considers evidence of opponent's foreign use to be sufficient to establish that it has become sufficiently well-known in Canada to negate the distinctiveness of an applied-for mark. The Trademarks Opposition Board refused an application to register the trademarks HOUSTON STEAKS AND RIBS Design and HOUSTON STEAKS ET CÔTES LEVÉES Design in association with restaurant services. The Opposition Board held that the marks were not distinctive of the applicant's services as there was a likelihood of confusion with at least one of the opponent's United States HOUSTON'S marks. The Opposition Board found that the opponent's marks, used solely in the U.S. in association with restaurants, had become sufficiently known in Canada at the relevant date to negate the distinctiveness of the applicant's marks, notwithstanding that the opponent was unable to establish that the opponent's marks were "previously made known" under section 16(1)(a) of the Trademarks Act. The case is particularly noteworthy given that it summarizes the type of evidence required to establish that a mark used in another country is sufficiently known in Canada to negate the distinctiveness of a Canadian applied-for mark. The case also distinguishes a Federal Court decision in which an opponent failed to establish that its U.S. BOJANGLES mark had a sufficient reputation in Canada.

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CIRA domain name disputes

AIR FRANCE — KLB v. ML Group (Maher Roz), CIRA Dispute No. 00168 — Domain name ordered transferred from registrant to complainant. One basis upon which legitimate interest in a domain name may be established is that the domain name is a "... name, surname or other reference by which the registrant was commonly identified," as set out in paragraph 3.6(e) of the Canadian Domain Name Dispute Resolution Policy. It was held that it is insufficient for the registrant to make a bald statement that the domain represents the initials of his family members. The registrant must prove that he (or his family) is commonly identified by the name or reference. This implies public recognition so as to justify rights therein, and not just that the registrant attributes some personal meaning to the name or reference.

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RANKINGS AND RECOGNITIONS

Smart & Biggar/ Fetherstonhaugh chosen by Managing Intellectual Property as Canada's IP Firm of the Year, Trademark Firm of the Year, and recognized for success with the award for Canadian Case of the Year
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Smart & Biggar/ Fetherstonhaugh tops the rankings in Canadian IP law in the 2011 edition of Chambers Global — The World's Leading Lawyers for Business
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Smart & Biggar/ Fetherstonhaugh tops the rankings in The Best Lawyers in Canada®
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Firm dominates rankings in The 2011 Lexpert/ American Lawyer Guide to the Leading 500 Lawyers in Canada
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Smart & Biggar/ Fetherstonhaugh tops the rankings in Who's Who Legal: Canada 2011
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CANADIAN PRACTICE TIP

Section 50(1) of the Canadian Trademarks Act (the "Act") provides that the licensed use of a trademark enures to the benefit of the owner, if the owner has, under the licence, direct or indirect control over the character or quality of the wares or services provided or performed by the licensee.
 
A licence need not be in writing, but in the absence of a written agreement, it can be difficult to establish the existence of a licensed arrangement. However, section 50(2) of the Act creates a rebuttable presumption that the use of a trademark is licensed by the owner, and that the character or quality of the wares is under the control of the owner, if public notice is given of (1) the fact that the use of a trademark is a licensed use and (2) the identity of the owner.
 
While what constitutes proper "public notice" is not defined in the Act, it is well established that public notice is given, for example, when it is indicated on the wares (packages and/or labels) that the use is licensed and the identity of the owner is provided. It is therefore recommended that public notice of a licence be given in order for the owner to benefit from the rebuttable presumption provided by section 50(2) of the Act.
 

ANNOUNCEMENTS

Firm news
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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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