Archive for April, 2007
« Older Entries |Wine Trademark Trends
Friday, April 13th, 2007
We recently reported on the increased appearance of creative trademarks for wine, based on applications to the Canadian Trade-marks Registrar over the last few months. Thanks to the creative talents of wine marketing trendsetters like B.C.’s own Bernie Hadley-Beauregard of Brandever Strategies, this movement appears to be continuing.
Recent applications include some animal references such as SPEEDY TURTLE (Application No. 1,299,250), FOUR EMUS & Design (Application No. 1,280,221), CAT’S TAIL (Application No. 1,305,983) and RED KANGAROO (Application No. 1,277,928).
Many Canadian companies have taken the lead with some less traditional names for wine appearing as recently advertised marks in the Canadian Trade-marks Journal. They include: from Ontario, BARE NAKED (Application No. 1,302,240, but apparently opposed by Bear Naked, Inc.), and from Québec, SEXY LIZARD (Application No. 1,299,249) and LOST BIKINI (Application No. 1,299,255), giving new meaning to the phrase “in vino veritas“. Other applications showing a little more restraint include LITTLE BLACK DRESS (Application No. 1,282,547) and QUEEN OF HEARTS & Design (Application No. 1,300,388).
Despite the move to more creative wine brands, the more prevalent trend seems to be in favour of old world references. Many recent applications for trade-marks for wines in Canada refer to the foreign language names of origin, invoking images of warm Mediterranean climates and rambling vineyards and include: from France, TERRA DI CORSICA (Application No. 1,295,086), from Italy, BELLA TAVOLA (Application No. 1,293,966) and TORRAE DEL SALE (Application No. 1,303,138), from Spain, GRAN SANGRE DE TORO (Application No. 1,287,621), GRAN VIÑA SOL (Application No. 1,287,627) and MAS LA PLANA (Application No. 1,287,622), from Portugal QUINTA NOVA DE NOSSA SENHORA DO CARMO (Application No. 1,287,990), from Quebec, AMBROZZI DI CHANTIO (Application No. 1,264,858), from Argentina VALLE PERDIDO & Design (Application No. 1,295,840). ¡Salud!
Posted in Branding, Registration | No Comments »
Dot-ca Whois Privacy Policy
Wednesday, April 4th, 2007
As an update to earlier posts (here and here), the Canadian Internet Registration Authority (CIRA) announced the results of its consultation with the public regarding implementing changes to the dot-ca domain name Whois Privacy Policy. Under the proposed new policy, technical information will still be displayed on the Whois information for a dot-ca domain name but access to registrant personal information will require submission of a formal request for disclosure of such information. There is also a proposed opt-in rule by which individual registrants may choose to have their personal information publicly accessible in the Whois database.
According to CIRA’s announcement, there was “overwhelming” support for its proposed changes. CIRA will now prepare a final set of policies and a plan for implementing the new Whois policy. CIRA anticipates that implementation will start in later 2007. Once implemented, the revised dot-ca Whois policy will mean that the privacy rights of Registrants will take precedence over trademark owners’ attempts to track down details about those registrants who may be infringing the owners’ marks.
Posted in Domain Name Disputes, Protection & Enforcement | No Comments »
March 2007 Case Law
Tuesday, April 3rd, 2007
There were four decisions from the Canadian courts in March that readers may find of interest.
Expungement Allowed – In Emall.ca Inc. et al. v. Cheap Tickets and Travel Inc. the applicant sought expungement of the respondent’s trademarks in Federal Court after the respondent commenced an action in the British Columbia Supreme Court for infringement. The Federal Court agreed with the applicant and expunged the trademarks CHEAP TICKETS and CHEAP TICKETS AND TRAVEL & Design on the basis that they were clearly descriptive, noting that in effect the respondent, by registering the trademarks had “withdrawn the combination of words from use in the commercial world in Canada”.
Passing Off Claim Allowed (In Part) – In BMW Canada Inc. v. Nissan Canada Inc. BMW claimed that Nissan’s advertising of its Infiniti vehicles in association with the letter M alone and the advertising and sale of its M6 vehicle infringed BMW’s M3, M5 and M & Design marks. The Federal Court concluded that BMW’s claim of infringement under section 20 of the Trade-marks Act was not established given that there was no likelihood of confusion as to the sources of the wares or as to the wares themselves among the relevant group of prospective purchasers. Likewise, the claim for depreciation of the value of the goodwill attaching to BMW’s registered marks failed since Nissan’s use of the letter M was not a use of a registered trademark. Moreover, the evidence of loss of goodwill came from individual witnesses and there was no evidence of sales lost or a price reduction. However, BMW’s claim of passing-off contrary to section 7(b), was successful. Nissan’s use in 2005 of the letter M and of the descriptor M6 as trademarks, both similar in form to BMW’s trade-marks for similar wares, in essentially the same trade or business, created a likelihood of confusion, whether intentional or not. Nissan has applied for a stay of the order pending appeal (Nissan Canada Inc. v. BMW Canada Inc.).
Section 45 Expungement Set Aside - Guido Berlucchi & C.S.r.l. v. Brouilette Kosie Prince was from a decision of the Registrar under section 45 of the Trade-marks Act to expunge the applicant’s trademark (a label for sparkling wines), registered in 1983. The Registrar concluded there was evidence of a sale during the relevant three-year period, but the evidence was ambiguous as to whether a registered trademark had been used. On appeal, the applicant filed a new affidavit attaching a label that was affixed to bottles sold to a distribution company during the relevant period. The Court acknowledged the evidence of a single sale, whether wholesale or retail, in the normal course of trade was sufficient to establish “use” so long as the evidence cannot be seen to be manufactured, although it was also noted that if an owner only produces evidence of a single sale, “he is playing with fire”. The Court also commented on the standard of review for an appeal of a decision under section 45, explaining that where new evidence is produced, the issue is to be decided de novo, but otherwise, for matters considered by the Registrar, the standard is one of reasonableness. After considering the new evidence of use and concluding the differences between the trademark as registered and the label actually used were not significant, the Court set aside the expungement order. The Court also concluded that the Registrar had correctly concluded that the sale to an exclusive agent was a genuine commercial transaction.
Severing Liability and Damages – Osmose-Pentox Inc. v. Société Laurentide Inc. (March 1, 2007) involved a procedural issue. The defendant applied for a second time in 4 years to sever the issues of validity and infringement from those relating to remedy. The Federal Court agreed that the circumstances had changed and the Court could revisit the severance issue. Given that discoveries had become bogged down in matters relating to the defendant’s profits, that Court concluded it was proper to sever the issue of damages and profits and first decide the issues of validity and infringement, particularly when a decision contrary to the plaintiff on these issues would render the question of damages and profits unnecessary.
Posted in Case Law, Trade-mark Oppositions | 2 Comments »