World Trademark Review publishers launch TM blog
April 19, 2010
Our friends over at the World Trademark Review have recently launched what they’re calling the first blog by specialized IP journalists. The group – which already offers the widely respected World Trademark Review magazine, several periodic update services, and a variety of directories, special reports and the like – anticipates that the launch of the blog will provide them with another means to report on how developments in trademark law will affect the wider business community, in addition to providing discussions of legal updates and case reports.
We welcome the WTR to the blogoshpere, and look forward to their continued, valuable contributions.
Posted by Jeffrey Vicq | Filed Under Uncategorized | No Comments »
Stripes Applied to Toothpaste: A Registrable Trademark
April 16, 2010
In Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc. the Federal Court agreed with the Opposition Board that none of the six grounds advanced by Procter & Gamble, the opponent, could succeed against Colgate-Palmolive’s application to register its Striped Toothpaste Design – Green/White/Blue Stripes (the “Design”).
Three of the grounds advanced are of interest:
(1) that the Design was not registrable as of the filing date of the application (1994) because the Design was being applied to the wares for the purpose of decoration only and not for the purpose of distinguishing the applicant’s wares;
(2) that the Design was not registrable as of the filing date because the Design was primarily functional and registration would give Colgate-Palmolive a monopoly on functional elements or characteristics (i.e. stripes) of toothpaste; and
Posted by Larry Munn | Filed Under Case Law | No Comments »
No Summary Expungement of Trademark if Sublicensing Properly Documented
April 10, 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 by Larry Munn | Filed Under Case Law, Registration | No Comments »