Archive for December, 2009
« Older Entries |No Trademark Expungement Although Language Describing Wares Outdated
Tuesday, December 29th, 2009
Loro Piana S.P.A. v. Canadian Council of Professional Engineers is a further example of the importance of providing proper evidence in response to a Registrar’s notice requiring evidence of use within the previous three years pursuant to the summary expungement provisions in section 45 of the Trade-marks Act. The Applicant had, in 1989, registered the trademark ING. LORO PIANA & C. for use in association with “textile fabrics, bed covers, blankets, scarves, mufflers, shawls and gloves”. On the basis of the affidavit submitted by the Applicant, the Hearing Officer concluded that use of the mark in association with “textile fabrics” had been shown, but not use in association with the remaining wares.
On appeal to the Federal Court, Trial Division, the Applicant filed further evidence and the Court, applying a standard of correctness, concluded that use of the mark in association with each of the listed wares had been shown. In doing so, the Court was also satisfied that the sale of “stoles” constituted the sales of “mufflers” and that the sale of “bed covers” or “blankets” constituted the sale of “throws”. The Applicant provided evidence explaining its use of the terms.
The Court referred to the 2006 decision of Levi Strauss & Co. v. Canada (Registrar of Trade-marks) which held that a section 45 proceeding is intended to be a simple, expeditious procedure to get rid of “deadwood” and is not intended to be a meticulous verbal analysis and stated, “where the language used to describe a ware has changed with common usage, but the use of the trade-mark has continued, the use of the outmoded word will be allowed to remain”.
The Court was also satisfied that while the use of the trademark deviated slightly from the trademark as registered, the differences were unimportant and would not mislead an unaware purchaser.
Posted in Case Law, Registration | No Comments »
Olympic and Paralympic Marks Act amended
Tuesday, December 29th, 2009
An Order in Council has amended Schedule 2 of the Olympic and Paralympic Marks Act to add 38 new marks to the prohibited marks list.
As noted in an earlier post, section 3 of the Act prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, any mark that resembles an Olympic or Paralympic mark. Schedules 1 and 2 of the Act list the Olympic and Paralympic trademarks that are protected under the Act.
The additional marks added to Schedule 2 under the amendment include marks such as the Olympic mascots’ names (Miga, Mukmuk, Quatchi, and Sumi) and design marks representing pictograms for individual sports. These marks have apparently been in use for some time but were either not in use or not known at the time the Act was originally brought into force and therefore not included in the original Schedule 2.
As noted before, the main purpose of the Act is to prevent ambush marketing. Nonetheless, as we have reported in an earlier post regarding Lululemon’s recent clothing launch, businesses are finding creative ways to stay onside the letter of the law set out in the Act.
Posted in Branding, Legislation | No Comments »
Non-Use of a Trademark – Evidence of Special Circumstances Required
Thursday, December 24th, 2009
Jose Cuervo S.A. de C.V. v. Bacardi & Company Ltd. and the Registrar of Trade-marks was the second time that Bacardi had sought summary expungement, pursuant to section 45 of the Trade-marks Act, of the trade-mark CASTILLO for use in association with rum. This time, the Federal Court Trial Division agreed with the Registrar and expunged the mark for non-use. At issue before the Federal Court was the standard of review and whether special circumstances justified the non-use.
In the course of the earlier expungement action, the Appellant’s predecessor in title to the trademark had, on appeal, produced evidence of a sale of 41 cases of CASTILLO rum on November 21, 1994 to the Ontario Liquor Control Board. Thus, in Quarry Corp. v. Bacardi & Co (1996) 124 F.T.R. 264, the Court concluded the transaction was in the normal course of trade and set aside the Registrar’s decision to expunge. On further appeal, the Federal Court of Appeal upheld the Trial Division’s decision, but commented that a “single sale divorced from all context” would not normally be sufficient use. In other words, a single sale contrived to protect a trademark was not sufficient.
On October 26, 2005, at Bacardi’s request, the Registrar again issued a section 45 notice requiring evidence of use within the previous three years. The manager of Jose Cuervo’s legal department provided an affidavit dated June 23, 2006 attaching the invoice of November 21, 1994 evidencing the sale to the Ontario Liquor Control Board and an invoice of November 24, 1999 evidencing 100 cases sold to the Alberta Liquor and Gaming Commission (neither sale being within the 3-year limit). The manager also deposed that the Appellant had undertaken a new marketing strategy in 2002 to incorporate a secondary trademark, COHIBA, into the label (owned by a related company), but the co-branding strategy had triggered a worldwide dispute, including threatened litigation that was not yet resolved.
The Registrar concluded there was no use within the requisite 3-year period and, while threatened litigation might be a reasonable excuse for a short period, six years was not reasonable. Relying on the reasoning in Scott Paper Ltd. v. Smart & Biggar (previously discussed) the Registrar concluded that there were no special circumstances.
On appeal, Jose Cuervo provided an affidavit stating that it had resumed use of CASTILLO on August 4, 2008 and attached an invoice for a consignment to the Alberta Liquor and Gaming Commission. The Court noted that the standard of review should be resonableness. The new evidence was not such that it would have affected the Registrar’s decision (being evidence of use well after the 3-year limit) and therefore the standard of review was not correctness.
The Court affirmed the Registrar’s decision, noting that Jose Cuervo produced no evidence as to why the co-branding could not be suspended, stating that it ws “illogical to suspend the use of a valid Canadian trade-mark because of a threat of impending trade-mark litigation with respect to a secondary trade-mark”. The decision to suspend use of CASTILLO in Canada was voluntary and a trade-mark dispute over a secondary mark did not constitute exceptional circumstances.
Posted in Branding, Trade-mark Oppositions | No Comments »