Archive for the ‘Case Law’ Category
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Thursday, May 26th, 2011
Following up on a couple of earlier posts on this topic, the Supreme Court of Canada has this morning handed down its decision in the Masterpiece Inc. v. Alavida Lifestyles, Inc. case. This decision has been long awaited as it appears to put to rest a critical issue in relation to the assessment of confusion in the context of who is entitled to registration of a mark in Canada.
First, a recap of the basic facts. Alavida obtained a registration of the mark MASTERPIECE LIVING in Canada in 2007 for use in association with various real estate related services. Its application was filed in December of 2005, based on proposed use of the mark in Canada. Alavida commenced use of the mark in January of 2006. Masterpiece Inc. didn’t oppose Alavida’s application, but instead sought to expunge Alavida’s registration, after it issued, on the basis, among other things, that Masterpiece Inc. had used the same or a similar mark in Canada in association with the same or similar services, prior to Alavida’s application being filed and prior to Alavida’s use of the mark in Canada.
At the Trial Division and in the Federal Court of Appeal, Alavida won and its registration was maintained, on the basis of the argument that Masterpiece Inc.’s prior use of the same mark for the same services, even if proven, was limited in time and space and was in a different part of Canada (Alberta) than where Alavida used its mark (Ontario) and that the geographic location of any alleged prior use was a factor to be looked at in determining likelihood of confusion – in essence importing into the analysis, a common law passing off test.
Posted in Case Law, Registration | No Comments »
PETA’s Use Of Canadian Club Trademark Gets Whacked
Thursday, March 31st, 2011
People for the Ethical Treatment of Animals (PETA) is in the news again for its cheeky ad campaigns, which sometimes use well known trademarks of other parties to garner exposure for its views on Canada’s seal hunt. We previously blogged about the use by PETA of an ad featuring the 2010 Winter Olympic and Paralympic Games mascots.
A recent Globe & Mail article reports that PETA had been distributing postcards in a number of bars in Toronto, with plans to roll out the campaign across the country. The postcards pictured on one side, a cartoon featuring a seal sitting at a bar and asking the bartender for “Anything but a Canadian Club”. The other side of the postcard featured a photograph of a hunter about to club a seal.
The North American distributor of Canadian Club Whisky didn’t see the humour in PETA’s cartoon and sent a cease and desist letter, claiming that the publication had caused degradation of Canadian Club’s corporate image and damage to its brand and trademark.
In response to the demand letter PETA agreed not to send out more postcards and to remove the cartoon from its website. Notwithstanding its compliance with the demand, a spokesperson for PETA argued that it had the doctrine of fair use on its side, to permit the use of trademarks for parody or satire. Unfortunately for PETA, fair use is a U.S. doctrine that doesn’t apply in Canada in the context of either copyright or trademarks.
Posted in Case Law, Protection & Enforcement | No Comments »
Keyword Advertising Appeal Discounts Trademark Analogies
Thursday, February 17th, 2011
Canada continues to await its first Court decision on the use of trademarks in keyword advertising. The British Columbia Court of Appeal issued its decision this week in the case of Private Career Training Institutions Agency (the Agency) v. Vancouver Career College (Burnaby) Inc. (VCC). While the Trial Judge’s decision, that the use of keyword advertising in this case was not misleading in the context of the applicable Bylaw, was upheld, the reasoning of the Trial Judge, to the extent it relied on an analysis of confusion under trademark law, was overruled.
At issue was whether the use of keyword advertising by VCC, which is the operator of a private college, was offside the provisions of a Bylaw of the Agency, which is a regulatory body created by the Private Career Training Institutions Act of British Columbia. The Bylaw in question states that an institution such as VCC “must not engage in advertising … that is false, deceptive or misleading. Deceptive advertising includes but is not limited to an oral, written, internet, visual, descriptive or other representation that has the capability, tendency or effect of deceiving or misleading a consumer“. The Agency went further and issued a guideline for interpretation of this Bylaw which specifically stated that keyword advertising and other similar practices would constitute false, deceptive or misleading activity.
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