Archive for December, 2007
| Newer Entries »More On Section 45
Wednesday, December 12th, 2007
Last week we reported on a decision of the Federal Court, Trial Division. The Federal Court of Appeal has also handed down a recent section 45 decision referring to the section as the “‘use it or lose it’ provision for removing ‘deadwood’ from the Register”.
In Bereskin & Parr v. Fairweather Ltd. the Court refused the appeal on the basis that the trial judge’s application of the law to the undisputed facts disclosed neither a palpable and overriding error on a question of mixed fact and law, nor a readily extricable error on a question of legal principle.
The trial judge had allowed the appeal from the Registrar of Trade-marks decision to expunge the trademark TARGET APPAREL for use in association with “men’s clothing, namely, suits, pants, jackets and coats”. The trademark had been acquired by Fairweather Ltd. from another company. In front of the Registrar, Fairweather had failed to produce evidence demonstrating a serious intention to use the mark. Such evidence can constitute special circumstances and excuse the absence of actual use in the preceding 3 years. However, when Fairweather appealed under section 56 of the Trade-marks Act, it filed new evidence (which is allowed on a section 45 appeal) and provided the judge with preliminary design and artwork showing an ongoing intention to use the mark. There was also evidence of sales after the date of the section 45 notice that gave credibility to the evidence of an intention to use. Thus, use was established.
Posted in Case Law, Registration, Trade-mark Oppositions | 2 Comments »
2010 Olympic Mascots
Wednesday, December 5th, 2007
The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC) unveiled the 2010 Olympic mascots on November 27, 2007. A recent Vancouver Sun article discusses the secrecy surrounding the development and design of the mascots, QUATCHI, SUMI, MIGA and MUKMUK. From an intellectual property perspective, it appears to have been a well-orchestrated campaign.
The November 27th launch date was known in advance but applications to register the trade-marks QUATCHI, SUMI, MIGA and MUKMUK were not filed with the Canadian Intellectual Property Office until November 27, 2007. As well, it appears that some of the domain names (miga.ca and quatchi.ca) were not registered until November 27th. The domain name mukmuk.ca was registered to 1686808 Ontario Inc. on November 28, 2007, but it is not clear whether this entity has any connection to VANOC. The applications for copyright registrations for the mascots were also filed November 27, 2007.
There have been some rumblings from the public that the mascots do not resemble anything. However, from an intellectual property perspective, the whole point is that these mascots are distinctive trade-marks and that should decrease the ability of someone to infringe the marks and designs.
The mascot names were not among the marks listed on the Schedule to Olympic and Paralympics Marks Act, but we would expect to see that VANOC has filed requests for the mascot marks to be advertised as Official Marks. Such requests are not made public until the request is advertised in the Trade-marks Journal.
For a contrast to VANOC’s branding efforts, see the recent story about the counterfeiting problems that the organizers of the Beijing games are experiencing.
Posted in Branding, Registration | No Comments »
Clear Evidence of Use Required: Section 45 Appeal Allowed
Tuesday, December 4th, 2007
Section 45 of the Trade-marks Act allows the Registrar, at the written request of any person, to give notice to the registered owner of a trademark requiring the registered owner to furnish, within three months, an Affidavit or Statutory Declaration showing that the trademark has been used in association with each of the wares and services specified in the registration during the preceding three-year period.
In 88766 Canada Inc. v. Monte Carlo Restaurant Limited Justice Pinard of the Federal Court allowed an appeal from the decision of the Registrar of Trade-marks and expunged the mark. The mark at issue was MONTE CARLO that was registered for use in association with the wares “pizza and spaghetti” and the services “operation of a restaurant, food take-out and catering, operation of a bar and operation of a banquet hall”. On the basis of the Affidavit evidence furnished by the owner of the mark, the Registrar struck out only “operation of a bar and operation of a banquet hall”.
The Court first noted, given there was no new evidence filed on the Appeal (an option where there is an appeal from a section 45 mark), that the standard on the Appeal was one of reasonableness. The Court then reviewed the Affidavit furnished by the registered owner and concluded that it did not clearly establish use during the relevant period. Thus, the mark was struck from the registry.
It was not sufficient to simply establish that advertising materials had been distributed in the previous five years. The Court noted that there was nothing specifically stated regarding distribution during the preceding three-year period and noted that it was up to the owner of the mark to provide clear proof regarding use. The Court also referred to BMW Canada Inc. v. Nissan Canada Inc., a case that we previously commented on, for the proposition that the appearance of a trademark in an advertisement does not constitute use in association with wares unless the advertisement is distributed at the time of the transfer of the property in or the possession of the wares.
Posted in Case Law, Registration | 1 Comment »