Archive for the ‘Registration’ Category
« Older Entries | Newer Entries »When Prior Use is not Prior Use
Friday, April 30th, 2010
In an update to an earlier post, the Supreme Court of Canada has recently granted leave to appeal in the case of Masterpiece Inc. v. Alavida Lifestyles Inc. Both the Federal Court Trial Division and the Federal Court of Appeal held that, in a proceeding to expunge a Registration, the relevant date for determining whether there was confusion with a mark previously used in Canada is the date that the application was filed, and that likelihood of confusion at a point in the future is not a relevant consideration.
In addition, both of the earlier decisions stated that in order for prior use of a mark in Canada to be grounds for successfully expunging a registration, such prior use must have occurred in the same geographic area where the applicant used its mark; otherwise there could have been no likelihood of confusion at the time the application was filed. In coming to the latter conclusion, both Courts appear, at least with respect to an action for expungement of a registration, to have imported into the test for likelihood of confusion, the test for common law passing off. Given this, the decision of the Supreme Court of Canada on this issue will be eagerly awaited by practitioners.
Posted in Case Law, Legislation, Registration | No Comments »
No Summary Expungement of Trademark if Sublicensing Properly Documented
Saturday, April 10th, 2010
In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP, a section 45 summary expungement action, the Registrar was satisfied that Tucumcari Aero, Inc., the owner of the trademark MOTO MIRROR & Design, had established use of the mark in association with truck and commercial vehicle mirrors. However, the Registrar also concluded that the evidence regarding the licences in place and Tucumcari’s control over the character and quality of the wares was ambiguous.
On appeal to the Federal Court the central issue was whether Tucumcari had filed sufficient additional evidence regarding its licensing arrangements, which involved a licensee and sublicensee, so as to establish that it had control over the character and quality of the wares. The Respondent agreed that sublicensing was permitted under section 50(1) of the Trade-marks Act, but argued that the indirect control contemplated by the Act required an express condition in the sublicensing agreement requiring the registrant to determine whether the character and quality of the wares are maintained. The Court disagreed, holding that the registrant’s control of its contractual rights through the intermediary was sufficient and express language was not required.
The Court was also satisfied that an express provision authorizing sublicensing was not required and, even if Tucumcari had not specifically agreed to the sublicensing, there was evidence it had acquiesced. Moreover, a provision that allowed the sublicensee to ultimately buy the trade-mark did not mean Tucumcari was not using the mark in the interim, since it retained ownership and had an interest in preserving the goodwill until such time as it ultimately assigned its interests.
Posted in Case Law, Registration | No Comments »
Evidentiary Omissions Lead to Trademark Appeal
Tuesday, February 9th, 2010
The recent Federal Court case of Sanders v. Smart & Biggar Intellectual Property and Technology Law is a good example of the difference that well prepared evidence can make. The Trademarks Opposition Board expunged the applicant’s trade-mark, “UGGLY BOOTS” pursuant to section 45 of the Trade-marks Act because the applicant had not demonstrated use of the trademark in Canada. The Board found that the applicant’s evidence was “rampant with ambiguities” and omissions.
The applicant appealed to the Federal Court pursuant to section 56 of the Act. The applicant was allowed to present new evidence and the appeal was treated as a new hearing. The applicant’s new evidence consisted of the affidavits of five clients, which all showed the transfer of wares with the trademark. The affidavits also attached invoices proving the transfers took place. The Court found that this new evidence went beyond mere allegations of use, noting that the applicant was only required to produce “evidence of a single sale, whether wholesale or retail, in the normal course of trade” so long as the sale was not deliberately manufactured or contrived to protect the registration of the trademark. In applying the principle of use “in the normal course of trade”, the Court also noted that good faith is presumed when there is no evidence challenging the affiant’s credibility. Thus, the Court found in the applicant’s favour, something the Board might have done if better evidence had been presented at first instance.
Posted in Case Law, Registration, Trade-mark Oppositions | No Comments »