September 2008

Latest Olympics Trademark Dust Up Is Of Anthemic Proportions

By In Branding, Legislation, Protection & Enforcement, Registration

A Canadian Press Story today reports that the Vancouver Organizing Committee for the 2010 Winter Olympic Games (VANOC) has recently filed applications with the Canadian Intellectual Property Office (CIPO) to register the phrases WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as trademarks. These applications are filed based on proposed use in Canada in association with a lengthy shopping list of goods and services. They also claim priority from earlier filed European Community Trademark (CTM) applications, filed with the Office for Harmonization in the Internal Market (OHIM) in March of 2008. Interestingly, the CTM applications are filed in the name of Filemot Technology Law Ltd. and not VANOC.

Canadian readers will immediately recognize WITH GLOWING HEARTS and DES PLUS BRILLIANTS EXPLOITS as phrases from “O Canada”, the Canadian national anthem. Copyright buffs out there might already know that the anthem was long ago placed in the public domain by the Government of Canada pursuant to the National Anthem Act. Read more

Making Room On The Brandwagon

By In Branding, Famous Marks

Here at the Canadian Trade-mark Blog, our first-ever post focused on Interbrand’s 2006 Best Global Brands Survey. As we’ve tracked the survey over the years, we’ve noted several constants – like COCA-COLA’s stranglehold on the number one spot, the predominance of US-brands in the top 10, and the sparse number of Canadian brands from the top 100.

The 2008 Best Global Brands survey was released last week, and little has changed: COCA-COLA took the top spot again and US-brands continue to dominate the top 10. However, we’re pleased to report that the list now features twice as many Canadian brands as last year.

At number 44 is THOMSON REUTERS – formerly The Thomson Corporation – who engaged in extensive advertising of its new brand following its merger with Reuters Group earlier this year.

Canada’s new addition? Charging in at number 73 is… Read more

Hyundai Keeps On Motoring

By In Case Law, Protection & Enforcement, Registration

An update on a battle we previously blogged about: the fight between, in one corner, Hyundai Auto Canada, a division of Hyundai Motor America (“Hyundai Canada”); and in the other corner, Cross Canada Auto Body Supply (West) Limited, Cross Canada Auto Body Supply (Windsor) Limited and AT Pac West Auto Parts Enterprise Ltd. (together, for the sake of brevity, the “Resellers”).

You may recall that in that case, the Resellers were re-selling automotive parts and accessories, including Hyundai automotive parts and accessories, in Canada. The Resellers sought expungement of five Hyundai-related marks in Canada owned by Hyundai Canada, claiming that all of the marks were non-distinctive, and further claiming that three of the marks had been abandoned.

(This central action spawned several others: in one, Hyundai Canada sought – though ultimately failed to obtain – an injunction to preclude the Resellers’ use of the Hyundai-related marks on the automotive parts packaging they offered for sale.  Other related actions included disagreements over the production of documents, and the appropriateness of photocopying and other charges.) Read more

Trademark Use Not to Be Inferred: Section 45

By In Case Law, Registration

In past blogs, we have discussed various Federal Court decisions made pursuant to section 45 of the Trade-marks Act, which is intended to be a summary and expeditious procedure for cleaning up the trade-mark register of trade-marks that have fallen into disuse.

In Grapha-Holding AG v. Illinois Tool Works Inc. the Federal Court, Trial Division allowed an appeal from the Registrar of Trade-marks, finding that the evidence the Registrar relied upon did not support her conclusion that the trademark in issue had been used during the previous three-year period. Read more

Liberals Settle Green Shift Trademark Dispute

By In Case Law, Protection & Enforcement

In an update to our previous posts on this topic, the federal Liberal party has apparently settled the dispute surrounding its use of the mark THE GREEN SHIFT, just in time for this fall’s recently called election race to begin in earnest. According to a story in the Canadian Press and the Liberals’ own website, the Liberals have reached an out of court settlement with Green Shift Inc., whereby the Liberals now have a license to use the mark THE GREEN SHIFT in association with their environmental policy. As is typical in such matters, terms of the settlement were not made public.

Canada’s Trademark Opposition Practice Changing Again?

By In Legislation, Trademark Oppositions

In case you missed it: the Canadian Intellectual Property Office has commenced a public consultation session concerning possible changes in practice before the Trademark Opposition Board.

These proposed changes follow on the heels of – and are likely motivated by – changes introduced to Opposition Board practice last fall. Many practitioners were surprised by those changes, and found frustration in some of the ambiguities contained in that Practice Notice, issued nearly a year ago.

The newly proposed Notice appears designed to remedy these problems: it provides greater clarity with respect to the number of available extensions and the possible duration thereof, and offers extensive guidance concerning the nature of the “exceptional circumstances” required to obtain an extension at certain stages of a proceeding. Read more