Archive for the ‘Protection & Enforcement’ 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.
Posted in Branding, Case Law, Protection & Enforcement | Comments Off
You Know The Olympics Are Over When…
Thursday, December 16th, 2010
The Canadian Intellectual Property Office (CIPO) sent out a reminder today, advising that pursuant to the Olympic and Paralympic Marks Act (OPMA), marks and expressions listed on Schedules 2 and 3 of that Act will expire on December 31, 2010. As a result, commencing on January 1, 2011, CIPO will no longer raise an objection pursuant to Section 12(1)(i) of the Trade-marks Act on the basis that an applied for mark consists of or so nearly resembles as to be mistaken for a mark or expresssion found in either of those Schedules.
As regular readers of this blog will recall, the Canadian government enacted this legislation well in advance of the 2010 Vancouver Olympic Winter Games (Vancouver Games), to provide the organizers of the Vancouver Games (VANOC) with another very useful tool in their fight against unauthorized use of numerous trademarks and symbols that are associated with the Olympics generally and more specifically those associated with the Vancouver Games. Schedule 1 to the OPMA, which sets out various Olympic marks that are not specific to any particular Olympic Games, will remain in force. Schedules 2 and 3 set out various marks and expressions that are specific to the Vancouver Games and as those games are now part of history, the need to protect those marks and expressions is no longer justifiable.
It was Schedule 3 in particular that raised the ire of some pundits, since it specified that a combination of words from Part 1 with words from Part 2 of that Schedule – including seemingly innocuous combinations of words such as “21st” or “Tenth”, with words such as “Winter” or “Whistler” – could be used as evidence in support of a finding that a person was promoting their business, goods or services in a manner likely to mislead the public into believing that there was an approval, authorization or endorsement by, or a business association with, the Canadian Olympic Committee (COC) or the Canadian Paralympic Committee (CPC). This, coupled with the ability of VANOC or the COC/CPC to obtain an interlocutory injunction without having to prove that they would suffer irreparable harm, made the effect of these provisions very far reaching.
Posted in Famous Marks, Legislation, Protection & Enforcement | Comments Off
Bonhomme, Maclean’s “meilleurs amis”
Monday, November 8th, 2010
In an update to a story we shared with you a few weeks ago, a report today that the organizers of the Quebec Winter Carnival and Maclean’s magazine have reached a settlement regarding Maclean’s use of the image of Bonhomme – mascot of the Carnival – as part of a cover image promoting an article on corruption in Quebec. While Carnival organizers confirmed the settlement and advised that they were “pleased”, specific terms of the settlement were not disclosed.
Posted in Famous Marks, Protection & Enforcement | Comments Off