Evidentiary Omissions Lead to Trademark Appeal
February 9, 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 by Larry Munn | Filed Under Case Law, Registration, Trade-mark Oppositions | No Comments »
Olympic Flag Flap
February 6, 2010
With the clock ticking towards the start of the Vancouver Olympic Winter 2010 Games next Friday, some athletes have already arrived in the City and moved into the Olympic Athletes’ Village. Amongst these are members of the Australian Olympic Team, who have already found themselves in some in hot water with the International Olympic Committee (“IOC’). According to a recent story, team members have hung a 50-metre flag, depicting a boxing kangaroo, on the side of one of the housing complexes in the Olympic Village.
The IOC had apparently ordered the flag removed as the boxing kangaroo image is a registered trademark of the Australian Olympic Committee. The IOC Rules control display of registered trademarks.
The Australian Olympic Team had suggested that they may not take the flag down without a fight, as the boxing kangaroo is apparently known as the national personification of Australia.
The IOC has now apparently agreed to let the Australian Olympic Team continue to fly the flag. In the future, the Australian Olympic Committee will need to register the flag with the IOC if the flag is to be used at Olympics.
Posted by Karen Monteith | Filed Under Uncategorized | No Comments »
Proposed Practice Notices: Professional Designations and Abbreviations, Acronyms and Initials
February 5, 2010
The Canadian Intellectual Property Office has initiated two short consultations (January 29 to February 28, 2010) for proposed Practice Notices regarding section 12(1)(b) of the Trade-marks Act. Section 12(1)(b) provides that “a trademark is registrable if it is not, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”. The two proposed Practice Notices address the application of 12(1)(b) to professional designations and to abbreviations, acronyms and initials.
If research discloses that an applied for trademark consists of a professional designation, the examiner will apply a first impression test to determine whether a consumer would assume the goods and services are produced by a professional with a designation similar to the applied-for trademark and if so, the trademark will be unregistrable, being clearly descriptive of the persons employed in the production of the wares and services. The addition of an abbreviation, acronym or initial to the professional designation will not make the trademark registrable.
A trademark that consists of or contains an abbreviation, acronym or initial will be considered unregistrable if considered as a whole and if as a matter of first impression the abbreviation, acronym or initial is clearly descriptive or deceptively misdescriptive of the wares and services. Moreover, the addition of an abbreviation, acronym or initial to a clearly descriptive word or phrase will not render it registrable as a trademark.
The changes arise in light of a recent Federal Court decision, College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Nature Medicine College of Canada, that considered some 39 trademark applications and registrations containing abbreviations, acronyms and initials and allegedly confusing with certain professional designations.
Posted by Larry Munn | Filed Under Case Law, Protection & Enforcement, Registration | No Comments »