Archive for the ‘Case Law’ Category
« Older Entries | Newer Entries »Restaurant Trademarks: Worth their Salt?
Monday, January 24th, 2011
The Globe and Mail is reporting on a dispute that has arisen between Vancouver’s Salt Tasting Room, which opened in 2006, and Toronto’s Salt Wine Bar, which opened in the summer of 2010. The owner of the Vancouver Tasting Room apparently appealed to the Toronto Wine Bar owners to change their name, but without success.
This dispute highlights the need for businesses, restaurant and otherwise, to register their trademarks in Canada and to register them sooner rather than later, since once a registration issues, it grants the registered owner the exclusive right to use that mark or one that is confusingly similar, throughout Canada in association with the claimed goods and services, even if that owner has only used its mark in one city or region of Canada.
In this case, the Vancouver owner waited until May of 2009 to file applications to register its SALT TASTING ROOM and SALT marks, even though it claims in both applications to have used those marks since July of 2006. Because of the timing of the start up of the Toronto restaurant and the current status of those applications, the position of the parties is murkier than it might otherwise be. What further muddies the waters are several prior registrations for marks in Canada that include the word “Salt” that are registered to other entities.
As another recent article notes, the restaurant industry is no stranger to trademark issues, including the lawsuit recently launched by the Wild Wing restaurant chain in Aurora, Ontario against Buffalo Wild Wings, a United States franchise operator that is expanding into Canada.
The fact that the Salt story involves restaurants in Vancouver and Toronto is also of interest, given that we are waiting to hear how the Supreme Court of Canada will rule in Masterpiece Inc. v. Alavida Lifestyles Inc. where one of the issues is the likelihood of confusion between similar marks used in two geographically distinct areas; in that case, in the context of the ability of an earlier user’s ability to block a later user’s application for registration.
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Loss of Control of Trademark Constitutes Damages for Passing Off
Friday, October 29th, 2010
This blog previously reported on the Federal Court’s decision in Target Event Production Ltd. v. Paul Cheung and Lions Communications Inc. In that January 11, 2010 decision, the Court considered the trademark and copyright infringement claims of the Plaintiff, Target Event Production, which arose when the Defendants, Paul Cheung and his company Lions Communications, operated a Chinese night market beginning May 2008 in the location where Target had previously run a similar business until late 2007. Specifically, Target’s claims were based on Lions’ use of a name similar to the “RICHMOND NIGHT MARKET” trademark owned by Target, as well as Lions’ use of a nearly identical site plan and vendor registration form.
The Court found that although Target’s trademark was valid as of January 2007, it was not durable and lost its distinctiveness when Target failed to re-open open a market by 2009. However, the Court proceeded to find that Lions’ actions in 2008 were confusing to visitors (but not to vendors) of the market in breach of section 6(5) of the Trade-marks Act. The Court found that since Lions had lost money operating its market, there could be no accounting of profits but only an award of $15,000 in damages for copyright infringement and the tort of passing off. The Court held Paul Cheung jointly liable with Lions and issued an injunction preventing Paul Cheung and Lions from operating their market in a manner which was a “substantial reproduction” of Target’s site plan.
Paul Cheung and Lions appealed the Court’s decision and a 15 page judgement was issued by the Federal Court of Appeal on October 5, 2010. Paul Cheung and Lions contended that the Federal Court was mistaken in finding that Target had a valid enforceable trademark, and that Target suffered damage, both of which are necessary for a court to have jurisdiction to entertain a claim for passing off under the Trade-marks Act (the existence of goodwill and deception due to misrepresentation being the other requirements). Further, Paul Cheung and Lions argued that the Federal Court was mistaken in finding them jointly and severally liable and in enjoining them from operating their market. Target cross appealed claiming that the Federal Court was mistaken in finding that its trademark lost its distinctiveness by 2009 and in awarding inappropriate injunctive relief.
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Contempt of Court: Compounding a Trademark and Copyright Breach
Monday, September 27th, 2010
In 9038-3746 Quebec Inc. v. Microsoft Corporation the Federal Court of Appeal upheld a sentence for contempt, one of several court decisions and orders arising from trademark and copyright infringements dating back to the 1990′s.
In the 2006 decision, Microsoft Corporation v. 9038-3746 Quebec Inc., two corporate defendants and an individual found to be the controlling mind, Carmello Cerrelli, were ordered, jointly and severally, to pay statutory damages under the Copyright Act of $500,000 and punitive damages of $100,000 each. Permanent injunctions were also issued enjoining the defendants from directly or indirectly infringing Microsoft’s trademarks or selling, distributing or advertising counterfeit copies of the twenty-five computer programs that were at issue in the proceedings. Subsequently, Microsoft was also awarded costs of $1,410,000 plus the Canadian equivalent of $175,715.23 USD.
Notwithstanding these significant awards, the defendants violated the injunctions and continued to sell the software. Microsoft brought contempt of court proceedings and Cerrelli plead guilty to: (1) violating the Court Order by selling seven counterfeit copies bearing the trademark MICROSOFT and possessing for the purpose of selling 545 counterfeit units bearing the trademark MICROSOFT; and (2) possessing for the purposes of selling 88 counterfeit units that constituted a breach of copyright.
In oral reasons the Federal Court ordered Cerrelli to pay $50,000 for each offence within 120 days, failing which he would serve a 60 day term of imprisonment. Cerrelli appealed, but the Federal Court of Appeal found no reason to overturn the lower Court’s order, finding that there was no error in principle, failure to consider a relevant factor or overemphasis of the appropriate factors. Moreover, the sentence was not demonstrably unfit. The Court of Appeal referred back to the original judgment and the finding that Cerrelli “had little regard for the truth at discovery or trial” and “acted in bad faith”. It was also noted that Cerrelli had sought to transfer his residential property for $1.00 following the judgment. In upholding the sentence the Court of Appeal sought to “deter the offender from repeating his unlawful behaviour as well as other persons who would be tempted to commit the same offences”.
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