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  • Archive for February, 2010

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    Malcolm Parry’s VANCOUVER LIFE Fails to Impress Federal Court

    Friday, February 19th, 2010

    The Federal Court recently issued its decision in Sim & McBurney v. Malcolm Parry.  This case was an appeal by Sim & McBurney from a decision of the Trade-marks Opposition Board, relating to Sim & McBurney’s Section 45 challenge to society columnist Malcolm Parry‘s trade-mark VANCOUVER LIFE.  Toronto Life Publishing Company Limited (represented by Sim & McBurney) has a pending application to register VANCOUVER LIFE for similar wares and services.
     
    Under Section 45 of the Trade-marks Act, at the request of a third party, the Registrar may require a trade-mark owner to show that the registered mark has been used in association with the wares or services specified in the registration within the past three years.  The Registrar found that there had been no use of the trade-mark VANCOUVER LIFE in association with the specified services and most of the specified wares, but maintained the registration in part, finding there had been use of the trade-mark in association with “editorial/advertising inserts into publications and periodicals”.  Sim & McBurney appealed this decision and sought to have the trade-mark expunged in association with all registered wares. 

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    Posted in Case Law, Trade-mark Oppositions | No Comments »

    Blawg Review #251

    Sunday, February 14th, 2010

    This Blawg Review comes to you from the Canadian Trademark Blog, resident in Vancouver, British Columbia – a blawg run by several of the talented trademark law practitioners at Clark Wilson LLP.

    Our city, Vancouver, is one that knows a lot about hosting – whether it be blog carnivals, tourists, or currently, the Winter Olympics. And, given all the excitement on the streets around us right now, we thought it appropriate that we take “Vancouver: Olympic Host City” as a theme.

    As Vancouver stepped onto the world stage this past weekend to embrace the pandemonium that comes with hosting the 2010 Olympic and Paralympic Winter Games, we cannot be help but reflect on the hard work our city has put in through several years of preparations to welcome the world in a fashion best described as “Citius, Altius, Fortius”. As athletic enthusiasts, corporate representatives, government officials and athletes themselves continue to pour in from around the globe, Vancouver will be in the spotlight over these next two weeks – much like the athletes themselves, delivering the performance of a lifetime. (And of course, we want to keep in mind that some of those athletes may be lawyers too, as noted by Business Insider Law Review!)

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    Evidentiary Omissions Lead to Trademark Appeal

    Tuesday, February 9th, 2010

    The recent Federal Court case of Sanders v. Smart & Biggar Intellectual Property and Technology Law is a good example of the difference that well prepared evidence can make.  The Trademarks Opposition Board expunged the applicant’s trade-mark, “UGGLY BOOTS” pursuant to section 45 of the Trade-marks Act because the applicant had not demonstrated use of the trademark in Canada.  The Board found that the applicant’s evidence was “rampant with ambiguities” and omissions. 

    The applicant appealed to the Federal Court pursuant to section 56 of the Act.  The applicant was allowed to present new evidence and the appeal was treated as a new hearing.  The applicant’s new evidence consisted of the affidavits of five clients, which all showed the transfer of wares with the trademark.  The affidavits also attached invoices proving the transfers took place.  The Court found that this new evidence went beyond mere allegations of use, noting that the applicant was only required to produce “evidence of a single sale, whether wholesale or retail, in the normal course of trade” so long as the sale was not deliberately manufactured or contrived to protect the registration of the trademark.  In applying the principle of use “in the normal course of trade”, the Court also noted that good faith is presumed when there is no evidence challenging the affiant’s credibility.  Thus, the Court found in the applicant’s favour, something the Board might have done if better evidence had been presented at first instance.

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    Posted in Case Law, Registration, Trade-mark Oppositions | No Comments »

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