Just in time for Robbie Burns day, Canada’s Federal Court of Appeal has ruled that a Canadian distiller of whiskey can use the word GLEN in its trademark, without misleading Canadian consumers into thinking that its product is whiskey that is from Scotland. This is the latest round in the battle by Bedford, Nova Scotia based Glenora Distillers to register the mark GLEN BRETON in the Canadian Intellectual Property Office in association with its single malt whiskey. There’s no word yet on whether the Scotch Whiskey Association will appeal the decision to the Supreme Court of Canada.
Trade-marks Act Amendments: Put Down That Glass of Canadian Burgundy!
On December 31st, while many readers (and writers!) of the Canadian Trademark Blog were likely raising a glass to celebrate the New Year, long-awaited amendments to the Canadian Trade-marks Act quietly came into force. The changes pertain to Section 11.1 of the Act which deals with geographic indications. In particular, the amendments eliminated several terms from a list of wine names that had been deemed generic, and accordingly available for use by anyone, in Canada.
The amendments were motivated by an agreement struck in 2003 between the Canadian government and the European Community concerning trade in wine and spirits. Under the terms of that deal, the Canadian government agreed to amend the Trade-marks Act to gradually eliminate the use of certain European wine and spirit names on Canadian labels, thereby opening the door to European producers to apply for the protection of these names as geographical indications in Canada. Read more
Section 45 Proceeding Practices to Change Again?
The Canadian Intellectual Property Office has announced that it will soon open a public consultation period relating to proposed changes to Section 45 proceedings. The Office advises its goal is to modernize and streamline the Registrar’s practice; what precisely this means, however, is not yet known.
Nonetheless, a few details have emerged: the anticipated changes will include a new practice of issuing, in limited cases, final decisions directly following the filing of evidence; changes are also expected to the Registrar’s practice concerning the granting of extensions of time.
We’ll provide a detailed discussion of the possible changes once the proposed practice notice is made available.
Practitioners Warm to Cooling-Off Periods
Regular readers of the Canadian Trademark Blog will recall that this past fall we reported on a public consultation undertaken by the Canadian Intellectual Property Office respecting proposed revisions to trademark opposition proceeding practices.
CIPO has recently released a compendium of the comments and suggestions it received during the consultation process.
While the submissions touch upon a broad number of issues implicated by the proposed practice notice, their common thread relates to the proposed “cooling-off” period. Nearly all of the submissions argue that to make the “cooling-off” period available only prior to the filing of a counter-statement is counterproductive to the amicable settlement of the proceeding. Instead, they argue that the request for a cooling-off period should be available at any time during an opposition proceeding.
In a posting on its site, CIPO advises that the proposed practice notice will be amended “to reflect decisions taken by CIPO as a result of comments received from stakeholders during the consultation period.” Precisely what changes CIPO will make, however, will not be known until later this month when CIPO posts the revised practice notice on its website. The final practice notice is expected to be published in the Trade-marks Journal and come into effect in February 2009.
Trademark Damages Following Termination of Franchise
The British Columbia Supreme Court recently considered the right to damages for the improper use of a trademark following the termination of a franchise agreement. In Fruiticana Produce Ltd. v. 575760 B.C. Ltd. et al., after determining that certain amounts remained unpaid under the terms of a franchise agreement, the Court also concluded that the franchise agreement had been terminated and the defendants continued to use the trademark FRUITCANA for a period of time following the termination. Nominal damages were calculated on the basis of the formula set out in Louis Vuitton Mulletier S.A. v. 486353 B.C. Ltd. and the Plaintiff awarded $12,000. A permanent injunction was also granted.
A Second Chance to Prove Use of a Trademark
Under section 45 of the Trade-marks Act, an applicant, upon receipt of the Registrar’s notice, must provide an affidavit or statutory declaration evidencing use within the previous three years or an acceptable excuse for non-use. In Vêtement Multi-Wear Inc. v. Riches, McKenzie & Herbert LLP, the Applicant failed to provide its attorney with all the information and documents necessary to respond to the section 45 notice and the evidence was not filed in time. Pursuant to section 56, the applicant appealed the Registrar’s determination to expunge the mark, and as allowed under section 56, filed its evidence.
The Court noted that where new evidence (or in this case, the only evidence) is filed on a section 56 appeal, the Federal Court decision is de novo. The Court also noted that the test for “use” under section 45 is not onerous. Thus, the appeal was allowed and the applicant’s trademark, L’AMADEI for use in association with ladies’ clothing, namely skirts, dresses and blouses (but not vests and sweaters) was allowed to remain on the register. The Affidavit evidenced 6 sales to Canadian companies and 10 sales to one American company. The invoices did not use the trademark, but the affidavit explained that the hang tags on the items referenced in the invoices would have used the trademark.