Combating Counterfeit Products Act introduced in Canada. On March 1, 2013, the Canadian Government introduced Bill C-56, the short title of which is "Combating Counterfeit Products Act." The bill introduces significant amendments to the Copyright Act and Trademarks Act with the aim of better protecting rights holders against counterfeit activity in Canada. A summary of the Bill has been prepared by our firm and is available here.
New examination guidelines released in Canada for computer-related subject matter. On March 8, 2013, the Canadian Patent Office released examination guidelines for computer-related subject matter to take into account the Federal Court of Appeal decision in Canada (Attorney General) v Amazon.com Inc. The guidelines acknowledge that the Patent Office must assess whether claimed subject matter falls within the definition of an "invention" in the Patent Act and is therefore statutory subject matter based on the essential elements of the claim as determined by a purposive construction. Further details can be found in a summary prepared by members of our firm, which is available here.
San Miguel’s trademark for beer is a horse of a different colour. Mr. Justice Phelan for the Federal Court reversed a decision of the Canadian Trademark Opposition Board wherein it found that San Miguel’s RED HORSE & Design mark for beer is confusing with Molson Canada’s BLACK HORSE mark. In an analysis of the likelihood of confusion, one has to assess the mark as a whole from the common-sense perspective of the average person in the market – in this case, a beer consumer. The Board, Justice Phelan opined, neglected to apply the “common-sense” approach and instead picked apart portions of the two trademarks in concluding that the RED HORSE mark is confusing with the BLACK HORSE mark. Justice Phelan held that in viewing the marks as would an “ordinary beer drinker,” the average consumer would be “sensitive to the names of beers and to what they know and like” and that the differences in the labels of the competing marks would dispel any notion of confusion. The question remaining was whether the average beer consumer, upon hearing the words RED HORSE and BLACK HORSE, would think that the beers are made by the same company. Finding no evidence suggesting this to be the case, and also as a matter of common-sense, Justice Phelan found that the marks are not confusing. Furthermore, the fact that there did not seem to be confusion in respect of other marks associated with beer containing the word HORSE undermined Molson’s claim that consumers associate the word HORSE with Molson beer products. In setting aside the Board’s decision, the Federal Court essentially pre-empted Molson’s monopoly over the word HORSE of any colour in relation to beer.
Bloor Street Boxing & Fitness attempts to exercise its IP rights against Bloor Fitness 24/7. The plaintiff, who is owner of Bloor Street Boxing & Fitness, sought an interlocutory injunction against the defendant from, among other things, using the trade name Bloor Fitness 24/7 for its fitness facility. The defendant, previously a minority shareholder of Bloor Street Boxing & Fitness, had left the company to open Bloor Fitness 24/7. In determining whether to grant the injunction, Mr. Justice Stevenson for the Ontario Superior Court of Justice applied a well-entrenched three-part test established by the Supreme Court. In the first part of the test, whether there is a serious issue to be tried, Justice Stevenson considered the plaintiff’s allegation that the defendant is trying to pass off its business as related to the plaintiff’s. For example, the plaintiff argued, the look and feel of the defendant’s logo is “almost identical”; their webpage addresses are very similar – the plaintiff’s is “www.bloorstreetfitness.com” and the defendant’s is “www.bloorfitness.com”; and the phone numbers contain the same last four digits. Furthermore, the plaintiff argued, Bloor Street Boxing & Fitness is located near Bloor Street, hence its prosaic name. Bloor Fitness 24/7, on the other hand, is not located anywhere near Bloor Street, therefore implying a connection with Bloor Street Boxing & Fitness. Mr. Justice Stevenson ultimately found that there was a serious issue to be tried and that, given the above factors, “the general purchasing public could reasonably conclude that the two businesses are affiliated with one another.” Further, Justice Stevenson held, a Google search on the defendant’s company indicates a “Dupont Street Location,” again suggesting to the public an affiliation with the plaintiff’s business. However, despite finding a serious issue to be tried, an interlocutory injunction was not granted as the plaintiff failed to meet the second and third parts of the three-part test – irreparable harm if injunction is not granted, and that the balance of convenience favoured granting the injunction.
LAWYERS WITHOUT BORDERS mark expunged on account of poor record-keeping. Lawyers Without Borders, Inc. (LWB), which was founded in 2000, is a non-profit corporation based in Hartford, Connecticut, and has obtained registrations for its trademark, LAWYERS WITHOUT BORDERS, in a number of countries, including in Canada in 2005. LWB’s objectives are to provide opportunities for lawyers, students and professors to participate in community education and outreach, research, and legal projects abroad. Another non-profit organization, Avocats Sans Frontières Québec (ASFQ), was founded in 2002. ASFQ contributes to the international efforts of other Avocats Sans Frontières groups, whose mission is to support the defence of human rights in fragile countries by reinforcing access to justice and legal representation. In 2008, ASFQ applied to register three trademarks, AVOCATS SANS FRONTIERES, LAWYERS WITHOUT BORDERS and ASF on the basis of prior use in Canada since 2002. However, in light of LWB’s registration, ASFQ experienced difficulty in registering the first two marks. Although ASFQ’s request for cancellation of the LAWYERS WITHOUT BORDERS mark for non-use was unsuccessful, ASFQ had also filed an application before the Federal Court for expungement of the LAWYERS WITHOUT BORDERS mark before the Board made its decision. One of the questions before the Court was: Who first used the marks in Canada? Justice Lemieux ruled in favour of ASFQ, finding that the marks were distinctive of ASFQ’s activities and that LWB’s mark did not distinguish the associated services and that LWB was not the party entitled to secure registration of the marks. A contributing factor to this decision was that LWB’s evidence was very poor. In the Court’s view, not only was LWB’s affidavit evidence contradictory, but the founder of the corporation could not provide details in respect of questions asked, relying instead on documents that she had reviewed but not produced. Ultimately, LWB could not establish first use of the mark in Canada. In contrast, ASFQ clearly established significant and substantive use of its marks in Canada prior to LWB’s trademark application in 2003. This decision serves as a reminder for new brands to keep detailed records in the event that substantiating claims of first use may become necessary in the future.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.