Supreme Court Has Spoken On Confusion
May 26, 2011
Following up on a couple of earlier posts on this topic, the Supreme Court of Canada has this morning handed down its decision in the Masterpiece Inc. v. Alavida Lifestyles, Inc. case. This decision has been long awaited as it appears to put to rest a critical issue in relation to the assessment of confusion in the context of who is entitled to registration of a mark in Canada.
First, a recap of the basic facts. Alavida obtained a registration of the mark MASTERPIECE LIVING in Canada in 2007 for use in association with various real estate related services. Its application was filed in December of 2005, based on proposed use of the mark in Canada. Alavida commenced use of the mark in January of 2006. Masterpiece Inc. didn’t oppose Alavida’s application, but instead sought to expunge Alavida’s registration, after it issued, on the basis, among other things, that Masterpiece Inc. had used the same or a similar mark in Canada in association with the same or similar services, prior to Alavida’s application being filed and prior to Alavida’s use of the mark in Canada.
At the Trial Division and in the Federal Court of Appeal, Alavida won and its registration was maintained, on the basis of the argument that Masterpiece Inc.’s prior use of the same mark for the same services, even if proven, was limited in time and space and was in a different part of Canada (Alberta) than where Alavida used its mark (Ontario) and that the geographic location of any alleged prior use was a factor to be looked at in determining likelihood of confusion – in essence importing into the analysis, a common law passing off test.
Posted by Neil Melliship | Filed Under Case Law, Registration | No Comments »
CIPO Wares and Services Manual Contracts Again
May 6, 2011
In an update to this story, this morning CIPO announced its discovery that a number of the entries it added to the Wares and Services Manual as a result of Canada’s participation in the trademark identification harmonization project conducted by the Trilateral Partners do not comply with Canadian trademark requirements.
As such, the over 12,000 Trilateral-approved entries that were added to the Wares and Services Manual yesterday are being removed today. CIPO has provided no official word on possible solutions, or a timetable for the (re)implementation of Trilateral-approved identification entries.
Posted by Jeffrey Vicq | Filed Under Legislation, Registration | No Comments »
Bigger! Better! Wares and Services Manual Expands
May 5, 2011
After a long wait, Canadian practitioners were delighted to learn this morning that CIPO has finally approved and activated more than 12,000 new entries in the Wares and Services Manual.
By way of background, in 2009 CIPO signed a memorandum of co-operation with the United States Patent and Trademarks Office, the Japan Patent Office and the Office for the Harmonization of the Internal Market (responsible for overseeing the CTM system). These entities – known as the Trilateral Partners – have worked in a loose association over the last few decades to promote and effect harmonization in their IP registration systems.
The Memorandum saw CIPO join the Trilateral Partners’ trademark identification project: the Partners maintain a list of identifications of goods and services that, if entered in an application for the registration of a trademark in any Partner country, will be accepted in that country.
As a condition of its accession to the Memorandum, Canada was permitted to assess the Trilateral list, and to reject a small percentage of identifications that it did not believe reflected Canadian requirements. With today’s announcement, that process is now complete, and the acceptable terms have been added to the Wares and Services Manual.
Posted by Jeffrey Vicq | Filed Under Legislation, Registration | No Comments »