Archive for May, 2008
« Older Entries |Trademark Expungement Despite Plans for Future Use
Thursday, May 29th, 2008
In Scott Paper Limited v. Smart & Biggar, the Federal Court of Appeal overturned a string of case law that deviated from the wording of section 45. The appellate court agreed with the trial judge that the Registrar erred in deciding not to expunge the trade-mark “VANITY” despite 13 years of non-use. We previously discussed different aspects of this “use-it or lose-it” provision.
The issue in this case was whether plans to use the trademark in the immediate future saved an unused trademark from expungement. In determining that future use amounted to special circumstances, the Registrar purported to rely on the three criteria laid down in Registrar of Trade-marks v. Harris Knitting Mills, namely the length of time during which the trademark has not been in use, whether reasons for the absence were due to circumstances beyond the control of the owner, and a serious intention to shortly resume use.
However, the Federal Court of Appeal found that the Registrar was “in fact, relying upon the gloss put upon Harris Knitting Mills in … Lander Co v. Alex E MacRae and Co.. Later in the Scott Paper judgment, the Federal Court of Appeal explained that “[i]t is important to distinguish between explaining an absence of use and excusing an absence of use”. Thus, special circumstances must explain the absence of use and the three criteria are used to determine if the absence is excused.
Posted in Case Law, Registration | No Comments »
Motion For Particulars: Part of a Larger Trademark Battle
Friday, May 23rd, 2008
A Federal Court decision on a procedural point is apparently just one more step in a larger legal battle, according to an article entitled “Despite lawsuit, restaurateur tries again under a new name, familiar format” in the March 29, 2008 edition of the The Globe and Mail.
In Mövenpick-Holding v. Inter Management Services Limited et al. the Federal Court judge agreed with the prothonotary’s decision dismissing the Plaintiff’s, Mövenpick-Holding’s, motion for particulars and to strike certain paragraphs of the defence and counterclaim, noting that a discretionary order of a prothonotary ought not to be disturbed on appeal unless it is clearly wrong, having been based on a wrong principle or misapprehension of the facts.
Mövenpick-Holding brought the action alleging violation of its MARCHÉ trademarks covering restaurant services after the Defendant company and its principles, the Reicherts, opened a restaurant under the name and trademark, INNISFIL HEIGHTS MARCHE, set up like a “marché” or market, where customers visited various food stations, a system allegedly similar to the Plaintiff’s.
Posted in Case Law, Protection & Enforcement | No Comments »
Official Marks: Federal Court Confirms Clear Evidence of Use Required
Wednesday, May 14th, 2008
In a recent decision, See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee, the Federal Court of Appeal agreed with the decision of the application judge which we reported on last May.
The Court of Appeal also concluded that the Canadian Olympic Committee (“the COC”) had not proved use of its official marks, “See You in Torino”, “See You in Beijing” and “See You in Vancouver”, because there was no clear evidence of a public display of the marks at issue and the COC’s evidence on this point was equivocal at best.
The appellant, See You In – Canadian Athletes Fund (“the SYI Fund”) argued, even though it was successful before the application judge, that the judge should not have dismissed its argument that the COC was a licensee of the International Olympic Committee and could therefore not register the official marks. The Court of Appeal declined to consider this argument noting that where an appellant obtains the relief sought, the appellant is not normally allowed to appeal the judge’s reasons. A decision on this point would have been useful to the SYI Fund, and presumably others seeking to challenge official marks registered by the COC.
Posted in Case Law, Registration | No Comments »