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January/February 2011 Noteworthy cases Recent court decisions Groupe Procycle Inc. v. Chrysler Group LLC, 2010 FC 918. The Federal Court reaffirmed the standard of review applicable to an appeal from a decision of the Registrar of the Trademarks Opposition Board and affirmed the latter’s holding as to an absence of confusion between identical trademarks used by a car manufacturer and a bicycle manufacturer. Miranda Aluminum Inc. v. Miranda Windows & Doors Inc., 2009 FC 669; affirmed 2010 FCA 104. In what was described by the Federal Court of Appeal of Canada as "an acrimonious dispute between a father and son over the right to use the family's surname, Miranda" in connection with the selling and installation of windows and doors, Brian P. Isaac of Smart & Biggar successfully acted on behalf of Miranda Windows & Doors Inc. in resisting an application by the father to expunge registrations for the MIRANDA and MIRANDA & DESIGN trademarks. Industries Lassonde Inc. v. Oasis D’Olivia Inc., 2010 QCCS 3901, permission to appeal granted, 2010 QCCA 1637. The Superior Court of Quebec dismissed an action for trademark infringement and depreciation of goodwill as manifestly unfounded and frivolous and, pursuant to a verbal motion made at the end of trial, condemned the plaintiffs to pay the defendants $25,000 in punitive damages and $100,000 in extrajudicial fees and costs pursuant to Quebec’s new anti-SLAPP provisions (articles 54.1-54.6 of the Code of Civil Procedure (CCP)). Trademarks Opposition Board decisions Canadian Fly-In Fishing (Red Lake) Ltd. v. Lac Seul Airways, Ltd., 2010 TMOB 149. The Trademarks Opposition Board reiterated the influence of acquired distinctiveness in a confusion analysis and demonstrated that jurisprudence based on confusion between two trademarks may not apply in cases where there is an allegation of confusion between a trademark and a trade name. Groupe TBWA France SA v. Tequila Communication & Marketing Inc., 2010 TMOB 128. The Trademarks Opposition Board dismissed an opposition by an international advertising and marketing group, finding that the evidence — and in particular the appearance of the mark in articles, as opposed to advertising per se — did not demonstrate that the opponent’s mark TEQUILA was made known in Canada or was known sufficiently to negate the distinctiveness of the applicant’s mark. CIRA domain name disputes Toyota Canada Inc. v. Ken Sproul, c/o KS/MC Enterprise, CIRA Dispute No. 00152. Under the Domain Name Dispute Resolution Policy, the complainant must prove that the domain name is confusingly similar to a mark in which the complainant has rights and that such rights existed prior to the registration date of the domain name. Articles 10 things you need to know when filing, prosecuting and maintaining trademark applications in Canada. When filing, prosecuting and maintaining a trademark application in Canada, there are several aspects of law and practice that are unusual and that are important to bear in mind. An update on counterfeiting and piracy remedies in Canada. While legislative changes have been slow to deal with counterfeiters, rights holders can look to a number of recent court cases as a signal that Canadian courts are prepared to take tough action. Canadian Trademarks Office may loosen restrictions on some non-traditional trademarks. There are indications that the Canadian Trademarks Office may become more accepting of certain types of non-traditional trademarks, such as colour, sound, scents, motion trademarks and holograms. The marking of trademarks in Canada. Appropriately using trademark symbols such as ®, TM, MD and MC can significantly benefit trademark owners. |
Trademarks Office news Confirmation that applicant is a "person" no longer required Priority claims Claims to registration and use abroad Amendments to trademark opposition procedures proposed Applications deemed abandoned for failure to file Declaration of Use Description of colour claims Amendments to trademark applications prior to examination Extension of the deadline for responding to examination reports 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 languages. Bilingualism also impacts the requirements for promoting, packaging and labeling 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. |
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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. smart-biggar.ca | Ottawa | Toronto | Montreal | Vancouver |
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