PETA’s Use Of Canadian Club Trademark Gets Whacked
March 31, 2011
People for the Ethical Treatment of Animals (PETA) is in the news again for its cheeky ad campaigns, which sometimes use well known trademarks of other parties to garner exposure for its views on Canada’s seal hunt. We previously blogged about the use by PETA of an ad featuring the 2010 Winter Olympic and Paralympic Games mascots.
A recent Globe & Mail article reports that PETA had been distributing postcards in a number of bars in Toronto, with plans to roll out the campaign across the country. The postcards pictured on one side, a cartoon featuring a seal sitting at a bar and asking the bartender for “Anything but a Canadian Club”. The other side of the postcard featured a photograph of a hunter about to club a seal.
The North American distributor of Canadian Club Whisky didn’t see the humour in PETA’s cartoon and sent a cease and desist letter, claiming that the publication had caused degradation of Canadian Club’s corporate image and damage to its brand and trademark.
In response to the demand letter PETA agreed not to send out more postcards and to remove the cartoon from its website. Notwithstanding its compliance with the demand, a spokesperson for PETA argued that it had the doctrine of fair use on its side, to permit the use of trademarks for parody or satire. Unfortunately for PETA, fair use is a U.S. doctrine that doesn’t apply in Canada in the context of either copyright or trademarks.
Posted by Neil Melliship | Filed Under Case Law, Protection & Enforcement | No Comments »
Keyword Advertising Appeal Discounts Trademark Analogies
February 17, 2011
Canada continues to await its first Court decision on the use of trademarks in keyword advertising. The British Columbia Court of Appeal issued its decision this week in the case of Private Career Training Institutions Agency (the Agency) v. Vancouver Career College (Burnaby) Inc. (VCC). While the Trial Judge’s decision, that the use of keyword advertising in this case was not misleading in the context of the applicable Bylaw, was upheld, the reasoning of the Trial Judge, to the extent it relied on an analysis of confusion under trademark law, was overruled.
At issue was whether the use of keyword advertising by VCC, which is the operator of a private college, was offside the provisions of a Bylaw of the Agency, which is a regulatory body created by the Private Career Training Institutions Act of British Columbia. The Bylaw in question states that an institution such as VCC “must not engage in advertising … that is false, deceptive or misleading. Deceptive advertising includes but is not limited to an oral, written, internet, visual, descriptive or other representation that has the capability, tendency or effect of deceiving or misleading a consumer“. The Agency went further and issued a guideline for interpretation of this Bylaw which specifically stated that keyword advertising and other similar practices would constitute false, deceptive or misleading activity.
Posted by Neil Melliship | Filed Under Case Law | No Comments »
Trademark Summary Expungement Proceedings: Evidentiary Issues
February 10, 2011
In 1459243 Ontario Ltd. v. Eva Gabor International, Ltd., the Federal Court set aside the Registrar’s decision expunging a trademark under section 45 of the Trade-marks Act. The parties agreed that the standard of review was one of correctness, unless new evidence would have materially affected the decision of the Registrar. At issue was whether the new affidavit filed by the Applicant was hearsay and, if admissible, whether the evidence would have affected the Registrar’s decision.
The Applicant’s new affidavit sought to introduce evidence that employees of the company had included promotional flyers bearing the trademark at issue when shipping other goods to customers. On cross-examination the deponent acknowledged he was not personally involved with the flyers. The Federal Court concluded that this evidence met the criteria of reliability and necessity required by the Supreme Court of Canada decision, R. v. Smith, particularly in the context of section 45 proceedings which are intended to be expeditious and straightforward. The Court noted that other cases had accepted the reliability of evidence given by individuals who operate businesses. The evidence was also necessary since requiring evidence from several employees would not be consistent with the summary procedure intended for section 45 proceedings.
Posted by Larry Munn | Filed Under Case Law, Registration | No Comments »