Archive for the ‘Case Law’ Category
« Older Entries |Trademark Expungement Proceedings: Standing as a “Person Interested”
Thursday, December 29th, 2011
In McCallum Industries Ltd. v. HJ Heinz Co. Australia Ltd., the Federal Court dismissed the applicant’s action to expunge the respondent’s trademark under s. 57(1) of the Trade-marks Act.
Both the applicant and the respondent produced canned and processed meat products in Canada, the applicant under the name “PALM & Device“, and the respondent under the name “OX & PALM”. The applicant was granted a trademark in July 2003, while the respondent was granted a trademark in October 2005.
Section 57(1) allows “any person interested” to apply to the Federal Court for an order that any entry in the register be struck out or amended on the grounds that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trademark. The applicant sought expungement of the respondent’s trademark on the grounds that the trademark was confusing to the public, that the respondent was not the person entitled to secure registration of the trademark, and that the trademark was non-distinctive.
The Court dealt first with the issue of whether the applicant was a “person interested” such that it had standing under s. 57(1). The phrase “person interested” is defined in s. 2 of the Trade-marks Act. A corporation such as the applicant is a “person interested” if it may be affected by any entry on the register or reasonably apprehends that it may be affected by any act or omission, or contemplated act or omission under or contrary to the Trade-marks Act. Ultimately, the Court found that the applicant was not a “person interested” because the applicant did not initially oppose the registration of the respondent’s trademark, because it waited until near the end of the 5-year deadline provided by s. 17(2) of the Trade-marks Act, and because it did not establish that its business had suffered as a consequence of the registration of the respondent’s trademark. Simply carrying on the same business and targeting the same consumers were found to be insufficient to show that the applicant was affected by the respondent’s trademark. In addition, the court found that the nearly five-year delay in bringing the action was indicative that the respondent’s trademark did not cause the applicant to suffer any harm.
Despite the Court’s finding that the applicant was not a “person interested”, it acknowledged the de minimis threshold for that issue and proceeded to discuss the remainder of the applicant’s claims. In considering whether the trade-marks of the applicant and the respondent were confusing, the Court applied the test in s. 6(5) of the Trade-marks Act. In addition to finding that the two trademarks bore little resemblance to one another in appearance, sound and idea, the Court also found that the co-existence of the two trademarks in the United States since 1998 was support for the conclusion that the trademarks did not create confusion.
The Court concluded by finding that the respondent’s trademark was distinctive both because it was adapted to distinguish, and because it actually distinguished. This finding was based on the uniqueness of the respondent’s trademark and the fact that it was a recognized brand name within its target community.
The Court was satisfied that the Respondent was the person entitled to secure the registration of the OX & PALM trademark. The applicant’s claim was dismissed with costs.
Posted in Case Law, Protection & Enforcement | No Comments »
Trademark Interlocutory Injunction Denied to Target
Tuesday, October 11th, 2011
In Target Brands Inc. v. Fairweather Ltd., the Federal Court of Canada refused to grant the interlocutory injunction sought by the American retail chain, this recent application being part of a continuing battle.
In 2002, Target’s counsel initiated proceedings under s. 45 of the Trade-Marks Act to cancel INC’s trade-mark registration for TARGET APPAREL. The Registrar of Trade-marks issued a notice on April 2002 requiring INC to show use of the trade-mark registration in Canada. INC filed an affidavit on its use of the trade-mark in response to the s. 45 notice. The Registrar of Trade-marks held that the evidence was insufficient to show use. INC appealed the Registrar’s decision and the Federal Court reversed that decision on October 19, 2006. Target’s counsel appealed to the Federal Court of Appeal, which affirmed the Federal Court decision on November 26, 2007.
Target claimed that they only became aware of INC’s use of TARGET APPAREL as a store name in June 2010. Its counsel sent a letter to INC objecting to the use of the TARGET trade name on August 3, 2010. Again, Target commenced a s. 45 proceeding to cancel the trade-mark registration of TARGET APPAREL. The Registrar of Trade-marks has issued another notice to INC under s. 45 of the Trade-marks Act on July 30, 2010, and the proceeding is currently underway.
Target also requested an injunction for the months leading up to the trade-mark dispute trial, scheduled to begin in November 2012.
The Court set out and applied the three-step test for applications for interlocutory injunctions. Although the Court found the first requirement of a serious question to be tried had been met, the question of irreparable harm to the Plaintiff was answered in the negative.
The Court found the Plaintiff’s submission on irreparable harm, advanced on the basis of a marketing theory about “sincere” and “exciting” brand personalities, difficult to assess. The Court noted, where expert evidence is provided by affidavit and is challenged in the course of the proceedings, the assessment of such expert evidence is best left for the fullness of a trial where review of qualifications and in-court testimony, direct, cross-examination and redirect, are present.
In deciding the question of irreparable harm, the Court held that the level of confusion among prospective customers to be a matter of debate, the expert opinions required closer examination and assessment, and the time to trial was relatively short. Resultantly, Target had not proved on balance of probabilities that it would suffer irreparable harm during the intervening months until a decision is rendered at trial.
The Court further considered the issue of the balance of convenience and determined that the balance favoured INC. In looking back upon the chain of events, the Court noted that INC did not begin expansion with the Target Apparel stores until after the Federal Court of Appeal decision in its favour. At that point, Target had not yet announced its expansion into Canada. The Court held that INC’s decision was not the sort of risk that should be met with the Court’s disapproval. They had taken precautionary steps in the face of Target’s claims: they had inscribed a red maple leaf in a circle rather than using a red bull’s-eye; posted a disclaimer to the effect that it is not Target; and undertaken to maintain records of sales while the litigation is continued.
No evidence was presented to suggest that Target would be prevented or delayed from opening Target stores in Canada, but the granting of the requested injunction would result in INC having to remove and replace its signage for all stores. Such removal and replacement would not only be costly, but may also suggest instability to INC’s customers, having significant consequences for the company. Consequently, the balance of inconvenience, as it was described by the Court, lay with INC rather than Target. Presumably the matter will now proceed toward trial in November 2012.
Posted in Case Law, Famous Marks | No Comments »
Certification Marks: Decision Affirmed by Court of Appeal
Monday, September 26th, 2011
An earlier blog discussed a Federal Court decision, agreeing with a decision of the Registrar of Trade-marks and preventing the registration of a certification mark, HALLOUMI, in association with cheese. In The Ministry of Commerce and Industry of the Republic of Cyprus v. International Cheese Council of Canada, the Federal Court of Appeal affirmed the decision.
The Trade-marks Act defines a certification mark as a type of trademark and sets up a specific regime for its adoption and registration by a person not engaged in the manufacture, sale, leasing or hiring of the wares or services in question, who wishes to license others to use the marks. With wares a certification mark is intended to signify character or quality, working conditions, the class of persons producing the wares or the area they are produced.
The opponent successfully established that HALLOUMI could not be registered pursuant to section 12(1)(b) of the Trade-marks Act, which precludes registration of a mark contrary to section 10, namely a mark that has by ordinary and bona fide usage become recognized in Canada as designating, among other things, a kind of wares. The evidence established such usage with regards to the cheese at issue.
On appeal to the Court of Appeal, the Cyprus Ministry of Commerce and Industry argued that the relevant date for an opposition based on section 10 was other than the date of the Registrar’s decision and that the judge had failed to apply the proper burden of proof and assess the evidence. However, none of these arguments succeeded and the registration was not allowed.
Posted in Case Law, Registration | No Comments »