Archive for the ‘Case Law’ Category
« Older Entries |Certification Mark Under the Trade-marks Act Refused: Evidence of Use by Others
Monday, August 16th, 2010
In Ministry of Commerce and Industry of the Republic of Cyprus v. Les Producteurs Laitiers du Canada et al. the Federal Court set aside two decisions of the Registrar of Trade-marks, but allowed a third to stand in part, which was sufficient to prevent registration of the Applicant’s certification mark, HALLOUMI, in association with cheese.
The Registrar concluded that contrary to sections 38(2)(a) and 30(a) of the Trade-marks Act, the Applicant had not discharged its initial burden of proving that it was in fact the authority that issued licences authorizing the use of the Mark in association with cheese. Section 23(2) of the Act provides that only the owner of a certification mark may authorize others to use the mark in association with wares that meet the defined standard. Relying on the Applicant’s own affidavit material the Registrar concluded that it was the Ministry of Health, in collaboration with the Department of Veterinary Services of the Ministry of Agriculture, National Resources and the Environment, that issued licences. On appeal by the Applicant, the Ministry of Commerce and Industry, filed additional evidence explaining the internal operations of the Cypriot government in terms of the responsibility for monitoring the use of the Mark. The Court accepted this evidence, applied a correctness standard of review given the new evidence, and concluded that the Applicant was the authority with the power to authorize use of the Mark.
The Applicant also appealed on the basis that the Registrar incorrectly concluded that the Mark had become recognized in Canada by ordinary and bona fide commercial usage as designating a type of cheese, contrary to sections 38(2)(b), 10 and 12(1)(e) of the Act. No new evidence was filed on this point and the standard of review was therefore reasonableness. The Court agreed that one of the Opponents, the Cheese Council, had filed evidence before the Registrar, including packaging from cheese purchased in Ottawa and various cities in Quebec, establishing that marks resembling the Mark and likely to be mistaken for it had been used in Canada to designate a type of cheese.
The other two opponents could not rely on the evidence filed by the Cheese Council and therefore, given the Court’s finding on the other issue, their oppositions failed with the appropriate cost consequences. Nevertheless, success by the Cheese Council meant the certification mark could not be registered, with costs to the Cheese Council on its opposition.
Posted in Case Law, Registration, Trade-mark Oppositions | No Comments »
Expungement: A Poisoned Trademark – for Both Parties
Wednesday, July 21st, 2010
In JAG Flocomponents N.A. Inc. v. Archmetal Industries the Plaintiffs sought expungement of the Canadian trademark FUSION, as well as a declaration that the Defendants had breached section 7(a) of the Trade-marks Act. The trademark was registered for use in association with ball valves for industrial use and use was claimed since as least as early as September, 2002.
One of the Defendant companies had been a 30% owner of one of the Plaintiff companies and a Letter of Intent had been executed setting out the basic relationship whereby the Plaintiff s were to distribute valves manufactured by the Defendants in China. The parties had also executed a Consignment Agreement which the Court found to be a critical document since clause 12 specified that the intellectual property arising by virtue of the Agreement was deemed to be equally owned by the parties.
For marketing purposes, the Plainitffs adopted the trademark FUSION and proceeded to market wares manufactured by the Defendants, as well as wares sourced from a different manufacturer, using the trademark. However, following the breakdown of the relationship, one of the Defendants registered the trademark. The disputes arising between the parties were eventually settled under an Alberta Queen’s Bench action, which left only the intellectual property issues unresolved. The Plaintiffs had also applied to register the trademark, but the Defendants successfully opposed the application on the basis of alleged prior use.
Posted in Case Law, Registration | No Comments »
First Canadian Decision on Keyword Advertising
Friday, June 18th, 2010
The British Columbia Supreme Court recently issued the first Canadian Court decision dealing with the use by one party of another party’s trademarks in keyword advertising. The case involved a defendant, Vancouver Career College (Burnaby) Inc. (VCC), that provides post-secondary career training services under different business names and trademarks. As part of its internet marketing strategy, VCC, like numerous other businesses, uses keyword advertising, whereby VCC pays search engines such as those provided by GOOGLE and YAHOO! for links to its websites to appear as “sponsored links” or “‘sponsored results” alongside the search engine’s normal search results. In order to use keyword advertising, VCC selected certain keywords to describe its website, including the business names and trademarks of various VCC competitors.
The plaintiff, the Private Career Training Institutions Agency (Agency) is a provincial regulatory agency charged with overseeing career training institutions that operate throughout the Province of British Columbia. Acting on complaints received from other career training institutions in the Province, the Agency sought an injunction against VCC’s practice of using the names and trademarks of those other institutions in VCC’s keyword advertising program, on the basis that such use was false, deceptive or misleading. The Court held that VCC’s keyword advertising program was not false, deceptive or misleading and therefore no injunction was granted.
While framed as a false, deceptive or misleading advertising complaint, rather than a trademark infringement or passing off claim, the Judge in his reasons specifically referenced trade-mark and passing off concepts when looking at the issue of what is confusing or misleading in the context of alleged improper advertising. The Judge found that what the defendants were doing did not amount to false, deceptive or misleading advertising. The Judge also held in his reasons that: “I also accept VCC Inc.’s argument that its practice of using Keyword Advertising is no different than the time-honoured and generally accepted marketing practice of a company locating its advertisement close to a competitor’s in traditional media (e.g., placing its Yellow Pages advertisement next to or in close proximity to a competitor’s telephone number in the same directory so that potential customers of that competitor discover there is another company offering a similar product or service and that they, the consumer, have a choice).”
The Agency has until June 28, 2010 to file an Appeal of the decision, should it choose to do so.
Posted in Case Law, Protection & Enforcement | No Comments »