Archive for the ‘Case Law’ Category
« Older Entries | Newer Entries »Trademark Summary Expungement Proceedings: Evidentiary Issues
Thursday, February 10th, 2011
In 1459243 Ontario Ltd. v. Eva Gabor International, Ltd., the Federal Court set aside the Registrar’s decision expunging a trademark under section 45 of the Trade-marks Act. The parties agreed that the standard of review was one of correctness, unless new evidence would have materially affected the decision of the Registrar. At issue was whether the new affidavit filed by the Applicant was hearsay and, if admissible, whether the evidence would have affected the Registrar’s decision.
The Applicant’s new affidavit sought to introduce evidence that employees of the company had included promotional flyers bearing the trademark at issue when shipping other goods to customers. On cross-examination the deponent acknowledged he was not personally involved with the flyers. The Federal Court concluded that this evidence met the criteria of reliability and necessity required by the Supreme Court of Canada decision, R. v. Smith, particularly in the context of section 45 proceedings which are intended to be expeditious and straightforward. The Court noted that other cases had accepted the reliability of evidence given by individuals who operate businesses. The evidence was also necessary since requiring evidence from several employees would not be consistent with the summary procedure intended for section 45 proceedings.
Posted in Case Law, Registration | No Comments »
Off-colour Trademark Decision Leaves Glaxo Purple With Frustration
Thursday, February 3rd, 2011
In reasons issued late last year, the Federal Court of Appeal has upheld a decision to expunge a trademark registration obtained by Glaxo Group Limited (“Glaxo”) for two-tones of the colour purple as applied to the visible surface of an asthma inhaler. The decision raises interesting questions both about primary and secondary marks, and about the amount of evidence necessary to support a finding that a mark is distinctive.
By way of background, Glaxo registered its mark (depicted right, below) in May of 2007. A collection of generic drug manufacturers brought a Federal Court application to expunge the mark about 6 months later, alleging that the mark was not distinctive.
In its decision, the Federal Court concluded that for the mark to be distinctive the constituency of consumers for the inhaler (including physicians, pharmacists and patients) must relate the trade-mark to a single source, and thereby use the mark to make their prescribing, dispensing
and purchasing choices. In market sectors where purchasing decisions are made by or on the advice of professionals, commercial distinctiveness of such marks will be inherently more difficult to establish: such persons will make purchasing or prescription decisions based on the specific properties of the product, and not on the packaging or marks associated with those products.
Posted in Case Law, Protection & Enforcement, Registration | No Comments »
Ontario Teachers Get A Lesson In Trademarks
Friday, January 28th, 2011
The Federal Court of Canada has upheld a decision of the Registrar of Trademarks to refuse registration of the mark TEACHERS’ in association with services described as “administration of a pension plan, management and investment of a pension for teachers in Ontario”. The application to register this mark was filed by the Ontario Teachers’ Pension Plan Board.
The Registrar had refused registration of this mark on the basis that it was clearly descriptive of the character of the claimed services, contrary to S. 12(1)(b) of the Trade-marks Act. On appeal, the Federal Court agreed, finding that the word TEACHERS’ in its plural and possessive form, is a distinguishing feature, and therefore the character, of this pension plan because it is a pension plan for teachers. It clearly describes a prominent characteristic of the wares or services provided. According to the Court, providing the applicant with a monopoly on the use of this word would prevent other pension or financial services targeted to or belonging to teachers within Ontario or in other provinces and territories from using the term.
Posted in Case Law, Registration | No Comments »