Cases Flashcards
Jonh Labatt Ltd. v. Carling Breweries Ltd. (1974) FC
It is not a proper approach to the determination of whether a mark is descriptive to carefully and critically analyse the words to ascertain if they have alternate implications when used in association with certain goods but rather to look at the words as they are used in association with certain goods and to ascertain what those words in the context in which they are used would represent to the public at large who will see those words and who will form an opinion as to what those words connote.
Miss Universe, Inc. v. Bohna (1994) FCA
To decide whether the use of a mark or of a trade name causes confusion with another mark or another trade name, one must ask whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.
Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982) FC
The onus is always upon an applicant for the registration of a mark to establish that , on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trademark.
United Artists Pictures Inc. v. Pink Panther
Beauty Corp. (1998) FCA
In determining whether there is a likelihood of
confusion between similar trademarks, the
Registrar or the Court must assess the likely
impression made by the marks on the public.
Mihaljevic v. British Columbia (1991) BCCA
A trademark registered to Her Majesty, her
agent or the government is not one whose adoption
is prohibited by Section 9, under which it might be
an identical official mark
Home Juice Company, Home Juice
Company Limited and Jay-Zee Food Products
Limited v. Orange Maison Limitée (1970) SCC
Under s. 12(1)(b), the meaning of words
in the French or English language, within a
trademark, is not limited to how the words are
currently used in Canada.
Dubiner and National Yo-Yo and Bo-Lo
Ltd. v. Heede Int’l Ltd. (1975) TMOB
An applicant in its trademark application must
clearly set forth goods or services as they are
customarily referred to in the trade.
Standard Oil Co. v.. Registrar of Trade
Marks (1968) (Ex Ct)
(1) For trademark purposes, there are at least
three classes of “words”, viz., dictionary words,
names, and invented words. They are all words, at
least for the purposes of the Act.
(2) The response of the general public to a surname needs to be considered.
Maple Leaf Foods Inc v. Consorzio del
Prosciutto di Parma (2012) TMOB
The test of confusion set out in Section 6 of the
Trade-marks Act applies to certification marks.
Metro Goldwyn Mayer Inc. v. Stargate
Connections Inc., (2004) FC
The date of filing of a statement of opposition
is the material date to assess an allegation on nondistinctiveness.
Canadian Jewish Congress v. Chosen
People Ministries, Inc. (2003) FCA
The fact that a body was incorporated as a
non-profit corporation with charitable
objects, has obtained tax exempt status,
has the ability to issue charitable receipts
to donors, and could be asked to provide
its accounts, financial and corporate
information to the Public Guardian and
Trustee of Ontario is not sufficient to
determine whether it is a public authority
Veuve Clicquot Ponsardin v. Boutiques
Cliquot Ltée, [2006] SCC
Goodwill is not defined in the Act. In ordinary commercial use, goodwill connotes the positive association that attracts customers towards the goods
or services of a trademark owner, rather than the G/S of its competitors.
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the applicant’s mark at a time when he or she has no more than an imperfect recollection of the opponent’s trade-mark, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
Canada Post Corp. v. United States
Postal Service, [2006] FC
S. 9(1)(n)(iii) of the Act requires that, in order to
be entitled to an official mark, the
institution claiming the mark must be a
public authority in Canada.
See You In – Canadian Athletes Fund
Corporation v. Canadian Olympic
Committee, 2007 FC 406
While an official mark is not used for commercial purpose or in the course of trade, ss. 3 and 4 assist in the interpretation of those words. A common feature of both “use” and “adoption” is that there is an element of public display […] If internal discussion, memoranda, etc. which preceded a request for publication constituted adoption and use, the phrase would be meaningless because, in that instance, no request could be sent in without the mark being deemed to be previously adopted and used; the very act of requesting or the internal correspondence on whether to request publication would, theoretically, constitute “adoption and use”.
Stadium Corporation of Ontario Ltd. v.
Wagon-Wheel Concessions Ltd. (1989) FC
Although Parliament could have included
a definition of “public authority” in the
Act, it chose not to. As a result, when an application under s. 9(1) is brought forward the Registrar has to take responsibility for satisfying himself that
the applicant is indeed a public authority.
Canada (Registrar of TMs) v. Harris Knitting Mills (1985) FCA
Evidence filed in response to a s. 45 proceeding does not have to be in the form of an affidavit signed by the RO (but must be filed by the RO)
The Bruce Trail Association v Andrew Camp (2001) TMOB
The Registrar will not accept for recordal on the register an assignment o fan Official Mark
Euro-Excellence Inc. v. Kraft Canada Inc. 2007 SCC
An exclusive licensee cannot assert a claim of secondary infringement of a work reproduced on product packaging, to prevent the importation of grey goods into Canada featuring the same copyrighted
work, if those goods were manufactured by the copyright owner. To be successful, the copyright work should not be “merely incidental” to the product being sold, and there should be a “legitimate economic interest” in the copyright apart from the product itself.
Burke-Robertson and Carhartt Canada Ltd. v. RTM (1994)
Cross-examination is not permitted for s. 45 proceedings
Argenti Inc v. Exode Importations Inc (1984), 8 C.P.R (3d) 174 (FC);
Windmere Corp v. Charlescraft Corp Ltd (1988), 23 C.P.R (3d) 60 (FC)
The transfer of free samples may constitute “use” for the purpose of s. 45, if it is part of the normal course of trade and to solicit future orders of the same product.
Aerosol Fillers Inc v. Plough (Canada) Ltd (1979), 45 C.P.R. (2d) 194 (FC); aff’d (1980), 53 C.P.R. (2d) 62 (FCA)
If an affidavit in a s. 45 proceeding is susceptible of >1 interpretation, the interpretation adverse to the interest of the party in whose favour the affidavit was made should be adopted.
Lewis Thomson & Sons Ltd v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (FC)
In a s. 45 proceeding, an affidavit which fails to attach an invoice is not presumptively useless.
Philip Morris Inc. v. Imperial tobacco Ltd (No 2) (1987), 17 C.P.R. (3d) 237 (FCA)
Sale to anyone in Canada along the chain of distribution constitutes “use” for the purpose of s. 45.
The purpose and scope of s. 45 is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register. Evidence of a single sale, whether wholesale or retail, in the normal course of trade may well suffice so long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived
to protect the registration of the trademark. There is no need or justification for evidentiary overkill.
Brouillette Kosie Prince v. Great Harvest Franchising Inc (2009), 77 C.P.R. (4th) 247 (FC)
Advertising a service and being ready, willing and able to provide the service constitutes “use” for the purpose of s. 45.
Talaini S.R.L. v. Segura Viudas, S.A. (2005), 50 C.P.R (4th) 158 (TMOB)
The sale of one product cannot support maintaining more other goods in a registration.
Harris Knitting Mills Ltd. (1985) FCA
Scott Paper Limited v. Smart & Biggar, 2008 FCA 129
3 criteria that the Registrar must consider in assessing whether evidence in s. 45 proceedings demonstrates special circumstances are:
1) the length of time during which the mark has not been used;
2) whether the RO’s reason for non-use was due to circumstances beyond its control; and
3) whether there is a serious intention to shortly resume use.
Remington Rand Corp. v. Philip Electronics N.V. (1995) FCA
If a distinguishing guise is wholly or primarily functional then it is not registrable and the public is not constrained from using the distinguishing guise in it entirety
Mattel Inc. v. 3894207 Canada, Inc. (2006) SCC
A mark that is famous can transcend differences between wares and services in an analysis of the likelihood of confusion. However, fame will not trump all other factors in an analysis as to whether two marks are confusing.
Trademarks are something of an anomaly in IP law because the owner of a trademark is not required to provide the public with some novel benefit in exchange for a monopoly. However, trademarks serve an important public interest in assuring consumers that they are buying from the source from whom they think they are buying and receiving the quality which they associate with that particular trademark. Trademarks thus operate as a kind of shortcut to get consumers to where they want to go and in that way perform a key function in a market economy.
Roadrunner Trailer Manufacturing Limited v. Roadrunner Trailer Co. (1984) FC
A trademark may appear within a corporate name provided that in use, the trademark is visually distinguishable from the balance of the wording constituting the corporate name.
Fiesta Barbeques Limited v. General Housewares Corp. (2003) FC
The material date for deciding a ground of opposition based on S. 12(1)(b) is the date of the trademark application.
Ontario Association of Architects v. Association of Architectural Technologist of Ontario (2002) FCA
In order to determine that an applicant is a public authority within the meaning of S. 9 one must establish that a significant degree of control is to be exercised by the appropriate government over the activities of the body and the activities of the body must benefit the public.
Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980) FCA
In s. 45 proceedings, the affidavit or statutory declaration filed in support of the registration, must not merely state, but show use of the trademark within the meaning of the definition of the trademark in S. 2 and of use in S. 4.
Novopharm Limited v. AstraZeneca AB (2002) FCA
In determining the sufficiency of a SoO after evidence is filed, regard must be had to both the evidence and the pleadings in the SoO in order to make a proper determination as to whether the applicant knows the case it has to meet.
A deficiency in a pleading can sometimes be cured by the evidence.
GWG Ltd. v. Registrar of Trademarks (1981) FC
In order to be clearly descriptive, a mark must be more than merely suggestive of the character or quality of the G/S in association with which it is used. The descriptive character must go a material composition or intrinsic quality of the G/S and a test is one of immediate impression.
Clairol International Corp. v. Thomas Supply Equipment Co. (1968) FC
The appearance of a mark on a chart which is not affixed to the wares and which simply compares the wares of various competitors does not constitute use of the trademark in association with wares.
Promafil Canada Limitée v. Munsingwear Inc. (1992) FCA
Cautious variations may be made to a trademark as it is used over the years, as long as the same dominant features are maintained.
Canadian Jewish Review Ltd. V. The Registrar of Trademarks (1961) (Ex Ct);
Ingle v. Registrar of Trade Marks (1973) FC;
John Labatt Ltd. v. Registrar of Trademarks (1984) FC.
Mere embellishment of letters comprising a clearly descriptive mark does not render it registrable.
A word mark that is clearly descriptive in block letter form cannot become registrable simply because the letters are written in a fanciful script. This is because a mere embellishment of the letters comprising the words cannot be dissociated from the words themselves.
Mitel Corporation v. Registrar of Trademarks (1984) FC
A mark is not to be considered in isolation but rather in relation to the wares or services to which it is associated.
Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004) FC
A composite mark, when sounded, is not registrable pursuant to S. 12(1)(b) if it contains word elements that are clearly descriptive or deceptively misdescriptive and that are dominant.
General Motors Corp. v. Bellows (1949) SCC
The purpose of a S. 12(1)(b) objection to registrability of a clearly descriptive word is that no one person should be able to appropriate such a word and place legitimate competitors at an undue disadvantage in relation to language that is common to all
Porter v. Don the Beachcomber (1966) Ex Ct
Advertising a trademark in Canada in association with a service only available outside of Canada does not constitute use.
Scott Paper Ltd v Smart & Biggar, 2008 FCA 129
Special circumstances wrt non-use need to be “unusual, uncommon or exceptional” circumstances. The reasons must directly account for the absence of use. A serious intention to soon resume use is not sufficient to constitute “special circumstances”.
