DUKE applicant submits to US university

In Duke University v Royal Textile Mills Inc, the Opposition Board of the Canadian Intellectual Property Office has upheld an opposition held by North Carolina's Duke University (2007 WL 2288476 (TMOB), June 21 2007). In doing so, the board confirmed that marks held by universities are not subject to the same restrictions as other types of official mark.

Earlier this year, the Federal Court of Appeal of Canada indicated in Canada Post Corporation v The United States Postal Service that official mark protection under Section 9 of the Canadian Trademarks Act is not available to non-Canadian public authorities that are not under Canadian governmental control (see "Official marks open only to Canadian entities").

Official marks fall under Section 9(1)(n)(iii) of the Canadian Trademarks Act while Section 9 marks held by "any university" fall under Section 9(1)(n)(ii).

In the case at hand, Royal Textile Mills Inc filed an application for the mark DUKE on November 14 1996 on the basis of:

• use in Canada since January 1980 for, among other things, men's and boys' supporters, protective pads for knees and elastic bandages;
  
  
• proposed use for certain clothing items; and
  
  
• use and registration in the United States for non-clothing items.

Duke University relied upon its DUKE and DUKE UNIVERSITY official marks, trademarks and trade name to oppose the application. Evidence revealed that Duke University adopted its name in 1924 and had made sales in Canada of items bearing the DUKE mark.

Looking at the different factors for confusion, the Opposition Board found that most favoured Duke University, including the resemblance between the marks (the test under Section 9 is one of resemblance).

A preliminary issue was raised, namely whether Royal Textile Mills was applying for the mark DUKE or DLKE; The board conceded that it was possible that the application was for the mark DLKE as opposed to DUKE, however, it indicated that the burden was on Royal Textile Mills to demonstrate that its mark would not be perceived by the public as DUKE in a design format as opposed to DLKE.

The hearing officer furthermore said that:

"[there] is no reason to conclude that the ordinary consumer who has an imperfect recollection of the DUKE mark would not, as a matter of first impression, mistake the DUKE [and design] mark for the DUKE mark. The design features simply are insufficient to make this unlikely."

Accordingly, the board upheld Duke University's opposition.

Toni Polson Ashton, Sim & McBurney, Toronto