August 2008

Green Shift Trademark Battle Steps Up

By In Case Law, Protection & Enforcement

In an update to an earlier post, the battle between the Liberal Party of Canada and Green Shift Inc., over the trademark GREEN SHIFT, continues, with the Liberals having recently filed their Statement of Defence in the Court case.

In a Vancouver Sun story, the Liberals claim they never intended to intended or desired to trade off any reputation or goodwill established by Green Shift Inc. Green Shift Inc. owner Jennifer Wright disagrees strongly, citing the receipt by her company of numerous emails apparently intended for the Liberal party, seeking further information about and both panning and praising the proposed initiative, as well as Liberal party members themselves giving out incorrect references to Green Shift Inc.’s website in the House of Commons. Apparently, out of Court settlement discussions are still taking place.

Applicant Deemed Not a “Person Interested” Under the Trade-marks Act

By In Case Law, Famous Marks

In Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P., the Federal Court ruled that, despite the low threshold, the applicant, Fairmont Resort Properties Ltd., was not a "person interested" for the purposes of challenging the respondent’s, Fairmont Hotel Management, L.P.’s, trade-marks (the "Hotel Marks") under s. 57(1) of the Trade-marks Act.

The applicant was incorporated in 1979 as a numbered company for the purposes of marketing timeshare units constructed by Fairmont Hot Springs Resort Ltd. ("Fairmont Hot Springs"), which, at that time, had common ownership and control with the applicant. The timeshare units were located near Fairmont Hot Springs, British Columbia. In 1985, with the consent of Fairmont Hot Springs, the applicant changed its name to its current name. By 1996, the applicant was fully independent from Fairmont Hot Springs. In 2005, it had annual revenues of over $10 million dollars and Fairmont Hot Springs had revenues of over $12 million dollars.

The respondent is a wholly-owned subsidiary of Fairmont Hotels & Resorts Inc. ("Fairmont Hotels") The hotel chain was started by Tessie and Virginia Fair with one hotel on Knob Hill in San Francisco. They alleged to have coined the word "Fairmont" by combining the surname Fair and a description of Knob Hill as a "mont" or mount. Through the respondent, Fairmont Hotels claims to be North America’s largest luxury hotel management company. In 2004, Fairmont Hotels had revenues of over $320 million U.S. Read more

Discovery Questions in Trademark Cases

By In Case Law, Protection & Enforcement

Adidas AG et al v. 2690942 Canada Inc. c.o.b. Campea will be of interest to litigators. Adidas commenced a claim against Campea alleging infringement of its 3-stripes trademark registration and its copyright registration covering the Euro 2004 logo. Following discoveries, the Federal Court was asked to rule on whether a series of questions required answers.

Prothonotary Morneau applied the six-part test set out in a 1998 decision, Reading & Bates Construction v. Baker Energy Resources Corp. which, stated briefly, requires a consideration of:

  1. the relevance of documents, particularly whether they contain information allowing a party to advance its case;
  2. the scope of the questions;
  3. the relevance of questions in relation to the facts plead;
  4. whether the questions advance a party’s legal position;
  5. the usefulness of the information sought relative to the time and expense of obtaining it; and
  6. the avoidance of fishing expeditions

Read more