Archive for the ‘Protection & Enforcement’ 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 »
Counterfeit Goods: Significant Statutory and Punitive Damages
Wednesday, October 5th, 2011
We have been following the line of cases dealing with counterfeit goods and the resulting damage awards, and note the most recent case from the Federal Court makes clear that a tougher approach to trademark and copyright infringement can now be expected in Canada. In Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., the Court awarded significant damage awards as well as punitive damages against the three defendant companies and their principals.
The Plaintiffs, Louis Vuitton and Burberry, hired a number of investigators to attend the stores and warehouses of the defendants Singga Enterprises Canada, Altec Productions and Guo (doing business as Carnation Fashion Company), as well as purchase items from their websites. While in attendance at the stores and warehouses, the investigators were shown and purchased a number of counterfeit items including handbags, sunglasses and jewellery, all of which contained unauthorized productions of the Louis Vuitton and Burberry trade-marks. The Plaintiffs were successful in showing that the defendants’ activities of manufacturing, importing, distributing, offering for sale and actual sale of bulk quantities of counterfeit and/or infringing items had been ongoing and, in the case of one of the defendants, had continued after the commencement of the proceeding and the motion for summary trial brought by the Plaintiffs.
The Court noted that none of the defendants, with the exception of the defendant Guo, had filed any materials in response to the motion or attempted to cross-examine any of the Plaintiffs’ affiants on their affidavits. Additionally, none of the defendants, again with the exception of Guo, had attended the hearing of the matter.
Following cases such as Louis Vuitton Malletier S.A. v. Lin Pi-Chu Yang and Louis Vuitton Malletier S.A. et al v. 486353 B.C. Ltd., the Court took a tough stance toward the defendants. Noting the defendants’ knowing and wilful behaviours, the Court awarded damages for trade-mark infringement of $30,000 for each instance of infringement against the Singga defendants and defendant Guo. Resultantly, the Singga defendants were found liable for a total of $300,000 to the Louis Vuitton Plaintiffs and $180,000 to the Burberry Plaintiffs, and the Guo defendant was required to pay $180,000 to the Louis Vuitton Plaintiffs and $120,000 to the Burberry Plaintiffs.
With regard to the Altec defendants, the evidence showed a high level of importation and inventory turn-over and was held to warrant an award of damages on a turn-over basis rather than simply a per instance basis of infringement. The Altec defendants were required to pay $480,000 in damages to the Louis Vuitton Plaintiffs, and $480,000 to the Burberry Plaintiffs. Additionally, the Singga and Altec defendants were found jointly and severally liable for the activities of the Altec defendants, for which the Singga defendants received a commission, and were required to pay $60,000 to the Louis Vuitton Plaintiffs and $60,000 to the Burberry Plaintiffs.
In addition to the damages awarded for the defendants’ infringement of the Trade-marks Act, Louis Vuitton was found to be entitled to recovery of damages and profits, pursuant to the Copyright Act, in relation to infringement by each of the groups of defendants. Statutory damages for copyright infringement were awarded at the high end of the scale due to the defendants’ bad faith conduct, which was found to be dismissive of law and order, and demonstrating a necessity for deterring future infringements. The Court awarded a total of $40,000 per group of defendants.
Additionally, the Court found that the Plaintiffs were entitled to punitive and exemplary damages as against each of the defendants. Following the earlier cases referenced above, which held that punitive and exemplary damages may be awarded where a defendant’s conduct is “outrageous” or “highly reprehensible” and with little regard for the legal process, the Court awarded punitive and exemplary damages against each of the defendants. The Louis Vuitton Plaintiffs were awarded $200,000 against the Singga defendants, $250,000 against the Altec defendants, and $50,000 payable by the defendant Guo.
Finally, citing the Louis Vuitton cases mentioned above, the Court awarded solicitor and client costs due to the defendants “disrespectful disregard” for the process of the Court, and the higher legal fees and disbursements incurred by the Plaintiffs as a result.
An appeal has now been filed by the Singga defendants, which means that there may eventually be a Federal Court of Appeal decision regarding the awards. We will continue to follow this story.
Posted in Famous Marks, Protection & Enforcement | No Comments »
Sunrise For .xxx Domains Is Now Open
Wednesday, September 7th, 2011
As reported in our recent Knowledge Bytes publication, today marks the beginning of the Sunrise period for the new .xxx domain. Owners of registered trademarks who are not part of the adult entertainment industry may and should apply to block their registered marks from becoming part of a domain name with the new .xxx generic top level domain. This Sunrise period is in effect until October 28, 2011. Different Registrars are charging different amounts for this service, so shop around.
Posted in Domain Names, Protection & Enforcement | No Comments »