Archive for February, 2009
| Newer Entries »Oily Loonie offside Official Mark?
Monday, February 16th, 2009
Dogwood Initiative, a British Columbia environmental group, is facing legal action from the Royal Canadian Mint over a campaign to add one million oily loon decals to loonies in circulation. (For our international readers, “loonie” is the commonly used term used to refer to the Canadian one dollar coin.) Dogwood’s campaign is intended to create awareness about the risks of oil tanker traffic on BC’s north central coast, in the hopes that legislation might be passed banning such traffic.
The Royal Canadian Mint has alleged Dogwood Initiative’s activities bring it offside the Currency Act, but query whether the Mint may also have an action under the Canadian Trade-marks Act (the "Act"), for infringement of the Mint’s Official Mark rights in the loonie.
Section 9 of the Act deals with Official Marks, and in particular, it prohibits the adoption in connection with a business, as a trade-mark or otherwise, of any mark which consists of, or so nearly resembles as to be mistaken for, an Official Mark.
Posted in Branding, Famous Marks, Legislation | Comments Off
Change in Canadian Trademark Opposition Practice
Tuesday, February 10th, 2009
As an update to our earlier post, the Canadian Trade-marks Opposition Board has introduced a new Practice Notice – Practice in Trade-mark Opposition Proceedings – which comes into effect March 31, 2009.
Some of the important changes that will be brought into effect through this new Practice Notice include:
- introduction of “cooling-off” periods, whereby each side may request one extension of time up to a maximum of 9 months
- guidance as to what constitutes exceptional circumstances for requests for extensions of time beyond the maximum benchmarks
- clarification regarding benchmarks for the Registrar’s granting of extensions of time
- changes in the scheduling of hearings
This new Practice Notice replaces all prior Practice Notices that the Board had issued in respect of Opposition proceedings. However, proceedings involving applications advertised prior to October 1, 2007 will still be conducted in accordance with the Trade-marks Regulations, as they read on September 30, 2007.
Posted in Trade-mark Oppositions | Comments Off
In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine
Tuesday, February 3rd, 2009
The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material mistatement in the processing of a registation renders the entire resulting registration void.
In Parfums de Coeur, Ltd. V. Asta the respondent individual filed a trademark application in 1999 based on proposed use of the trademark BOD in association with wares identified as “hair care, namely shampoo conditioner, treatment, styling aids, hairsprays, hairpolish, perms, … .” The respondent subsequently filed a Declaration of Use signed February 12, 2004 declaring that by himself or through a licensee he had commenced use of the trademark in association with all the listed wares. The applicant began selling body sprays in Canada in association with the trademark BOD MAN as early as 2002, but when it sought registration in Canada, the respondent’s mark was cited against it. When challenged regarding his Declaration of Use, the respondent amended the list of wares to read only “hair care, namely shampoo, conditioner”.
Posted in Case Law, Registration | 6 Comments »