Archive for the ‘Case Law’ Category
« Older Entries |Trademark Issues at Richmond Night Market
Friday, March 5th, 2010
Target Event Production Ltd. v. Paul Cheung and Lions Communication Inc. concerns a trademark and copyright claim that arose when the Defendants took advantage of a business opportunity the Plaintiff chose not to exploit.
During the summer months of 2000 through 2007 the Plaintiff operated a popular Asian night market in Richmond, British Columbia. The market was held on land leased by the Plaintiff, and the Plaintiff in turn leased space to vendors selling a wide variety of food products and merchandise. The Plaintiff created a logo which included the text “Richmond Night Market Summer Festival” in English and “Richmond Summer Night Market” in Chinese characters. The market was popularly known as “Richmond Night Market” and the Plaintiff applied for that name as a trademark in English and Chinese, although only the English mark was registered at the time of the hearing of the court action.
In 2007, when the Plaintiff was unable to renegotiate its lease at a favourable price, it announced that the market might not be held in 2008, unless the Plaintiff located an alternative space, which it was unable to do. The Defendants became aware that the space the Plaintiff had been leasing was available, negotiated a lease, obtained the necessary permits from the City and sought out vendors. However, the Defendants adopted a name similar to that which the Plaintiff had been using, and copied various documents the Plaintiff had created, including a vendor application form and a plan for the market showing the location of food and merchandise booths.
In lengthy reasons, Madam Justice Simpson of the Federal Court carefully examined the various allegations of passing off and copyright infringement.
The Court found that the Plaintiff had acquired rights in four trademarks: RICHMOND NIGHT MARKET, RICHMOND NIGHT MARKET SUMMER FESTIVAL and Chinese characters for each of these. The trademarks were originally merely descriptive, but by January 2007 they were valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness in association with the Plaintiff and the location of the market. However, the Court also concluded that the distinctiveness was not durable, and the marks lost their distinctiveness and associated goodwill when the Plaintiff failed to open another night market in 2009.
The Court then examined the allegations of passing off, taking into account the elements of confusion listed in section 6(5) of the Trade-marks Act, including the surrounding circumstances. The Court concluded that the visitors, but not the vendors, would have been confused by the Defendants’ actions and thus passing off was established (the key elements of the tort being the existence of goodwill, deception due to a misrepresentation and actual or potential damage). However, given that the Defendants lost money in their endeavor, there could be no accounting of profits; further, given that the Plaintiff had not operated a market in 2008 or 2009, the Plaintiff had not lost money as a result of the Defendants’ activities. However, the Plaintiff did recover damages for copyright infringement for use by the Defendants of the Plaintiff’s site plan and application forms, but the total amount was only $15,000.00 plus costs and interest.
Thus, the Defendants had failed to adequately distance themselves from the Plaintiff’s former business when trying to take advantage of the opportuntity presented by the Plaintiff’s cessation of services. As a result, the Court found both copyright infringement and passing off, although in the circumstances the damages were small.
Posted in Case Law, Protection & Enforcement | No Comments »
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.
Posted in Case Law, Trade-mark Oppositions | No Comments »
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.
Posted in Case Law, Registration, Trade-mark Oppositions | No Comments »