October 2010

Loss of Control of Trademark Constitutes Damages for Passing Off

By In Case Law, Protection & Enforcement

This blog previously reported on the Federal Court’s decision in Target Event Production Ltd. v. Paul Cheung and Lions Communications Inc. In that January 11, 2010 decision, the Court considered the trademark and copyright infringement claims of the Plaintiff, Target Event Production, which arose when the Defendants, Paul Cheung and his company Lions Communications, operated a Chinese night market beginning May 2008 in the location where Target had previously run a similar business until late 2007.  Specifically, Target’s claims were based on Lions’ use of a name similar to the “RICHMOND NIGHT MARKET” trademark owned by Target, as well as Lions’ use of a nearly identical site plan and vendor registration form.

The Court found that although Target’s trademark was valid as of January 2007, it was not durable and lost its distinctiveness when Target failed to re-open open a market by 2009.  However, the Court proceeded to find that Lions’ actions in 2008 were confusing to visitors (but not to vendors) of the market in breach of section 6(5) of the Trade-marks Act.  The Court found that since Lions had lost money operating its market, there could be no accounting of profits but only an award of $15,000 in damages for copyright infringement and the tort of passing off.  The Court held Paul Cheung jointly liable with Lions and issued an injunction preventing Paul Cheung and Lions from operating their market in a manner which was a “substantial reproduction” of Target’s site plan.

Paul Cheung and Lions appealed the Court’s decision and a 15 page judgement was issued by the Federal Court of Appeal on October 5, 2010.  Paul Cheung and Lions contended that the Federal Court was mistaken in finding that Target had a valid enforceable trademark, and that Target suffered damage, both of which are necessary for a court to have jurisdiction to entertain a claim for passing off under the Trade-marks Act (the existence of goodwill and deception due to misrepresentation being the other requirements).  Further, Paul Cheung and Lions argued that the Federal Court was mistaken in finding them jointly and severally liable and in enjoining them from operating their market.  Target cross appealed claiming that the Federal Court was mistaken in finding that its trademark lost its distinctiveness by 2009 and in awarding inappropriate injunctive relief. Read more

Is There a Trademark Enforcement App For That?

By In Foreign Protection, Protection & Enforcement

News today that Apple is about to obtain a US trademark registration for “THERE’S AN APP FOR THAT”.

Filed in 2009, Apple’s initial application covered both wares and services.  However, following a recent division and filing of evidence of use, the USPTO approved the registration of the mark for use in association with retail store services and various online services, including app recommendations.  Additional claims pertaining to various wares and to telecommunication services remain in the divided parent application, and Apple  has obtained an extension of time to file use information on those points.  (In Canada, Apple filed an application for “THERE’S AN APP FOR THAT” this past May; it remains pending with CIPO.)

With a registration nearly in hand, it is unclear is whether Apple plans a campaign to aggressively enforce its mark.  In addition to Apple’s use, the mark and its derivatives have been widely referenced in the US – most notably by Verizon in its “There’s A Map For That” advertising campaign (intended to mock the limited coverage of Apple’s exclusive US carrier, AT&T).  An “app for that” catch-phrase generator, “App For That“, was also developed.  And writers seem to love using the phrase in their article and blog headlines.

In this light, one wonders if such uses of the mark and its derivatives reinforce or dilute the mark’s association with Apple. If the latter, Apple will have to go on the offensive to protect its rights, lest it lose them.

We’ll keep you “app”-rised of new developments.

Bonhomme’s Bad Day

By In Protection & Enforcement

There has been considerable coverage this week about the Maclean’s magazine article on alleged corruption in Quebec.  The magazine’s cover (which can be seen here) depicts the well-known mascot of the Quebec City Winter Carnival, Bonhomme Carnaval, clutching a briefcase bursting with money.

Perhaps unsurprisingly, the article quickly elicited a loud hue and cry from politicians, both federal and provincial alike.  The resulting pressure was so intense that Maclean’s publisher – Rogers Publishing – felt compelled to issue an apology, noting that both the article and the cover image promoting it had clearly rankled some readers, and expressing regret for any offence caused.

In addition to being quite eye-catching (at least for Canadians), the cover raises an interesting trademark issue.   Specifically, the association of Bonhomme Carnaval with an article on corruption might be argued to lessen the goodwill in the mascot itself.  (To be clear, there is no suggestion in the article that Carnival organizers are corrupt.)

While the Carnival owns several trademark registrations for depictions of Bonhomme, it would be difficult to argue that Bonhomme’s image was being used as a trademark, or that anyone was confused as to the source of goods following the depiction of Bonhomme on the Maclean’s cover.

Though section 22 of the Trade-marks Act contemplates an action may be brought for depreciation of goodwill, it also appears that the tests associated with such a claim would be difficult to make out for similar reasons.

Nonetheless, the Carnival is seeking advice from counsel in order to determine what action, if any, it can take to protect Bonhomme. We’ll keep you posted on whether or not this dispute gets any more (ahem) …frosty.