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09 February 2009

US fraud doctrine rejected by Federal Court

In Parfums de Coeur Ltd v Asta, the Federal Court has dismissed Parfums de Coeur Ltd's application to cancel the trademark BOD. Among other things, the court held that the misstatement which had led to an overly broad declaration of use was clearly wrong, but not fraudulent. The court thereby rejected the application of the US doctrine of fraud, according to which real fraud is not required.

06 February 2009

Canadian distiller wins right to use GLEN BRETON mark

In Glenora Distillers International Ltd v Scotch Whisky Association, the Federal Court of Appeal has rejected the Scotch Whisky Association’s opposition against the registration of the trademark GLEN BRETON for whisky. Among other things, the court found that although the word 'glen' formed part of numerous registered trademarks, it was not a prohibited word in respect of whisky.

21 January 2009

US practitioners call for more experienced PTO director

The Section of Intellectual Property Law of the American Bar Association has written to the newly inaugurated President Obama, calling for a more experienced director of the US Patent and Trademark Office.

13 January 2009

Entitlement to file trademark application examined in CORONA Case

In Cerveceria Modelo SA de CV v Marcon, Cerveceria Modelo SA de CV, the manufacturer of Corona beer, successfully opposed an application to register the trademark CORONA for use in association with certain beverages and beverage bottling. The case raises issues relating to the entitlement to file a trademark application.

13 January 2009

Strict compliance with rules on service of notices of opposition required

In Schott AG v Scott, the TTAB has granted L’Wren Scott's motion to dismiss two oppositions filed by Schott AG on the grounds that each opposition had been filed without the “proof of service on the applicant, or her attorney or domestic representative of record at the correspondence address of record”, as required under Trademark Rule 2(101)(a).

10 December 2008

Trademarks Opposition Board considers changes to opposition practice

The Trademarks Opposition Board has announced that it is planning to amend its practice to simplify and clarify the registrar’s benchmarks for granting extensions of time, including a cooling-off period. These amendments are intended to provide guidance regarding the granting of extensions of time in exceptional circumstances and to introduce a new practice for scheduling hearings.

03 December 2008

High praise for USPTO in independent annual report

The Trademark Public Advisory Committee has delivered its annual report into the management of the trademark operations of the USPTO. The report found that "the quality of the work of the Trademark Organization is high and rising".

01 December 2008

Hearsay evidence rejected in expungement proceedings

Two decisions of the Trademarks Opposition Board on two related trademarks have illustrated the danger of relying on hearsay evidence in expungement proceedings on the grounds of non-use. Mövenpick’s trademarks MARCHÉ and RESTAURANT MÖVENPICK MARCHÉ were expunged with regard to most of the services for which they were registered.

21 November 2008

Application for leave to amend opposition referred back to TMOB

In Parmalat Canada Inc v Sysco Corporation, the Federal Court has ordered that Parmalat Canada Inc's application for leave to amend its statement of opposition be referred back to the Trademark Opposition Board for reconsideration. Among other things, the court found that the board had ignored relevant jurisprudence as to the scope of the grounds of opposition under the Trademarks Act.

11 November 2008

No likelihood of confusion between PARIS BLUES and PARIS

The Trademark Opposition Board has rejected an opposition filed by Paris Glove of Canada Ltd, the owner of the figurative trademark PARIS for gloves, against the registration of the trademark PARIS BLUES for a wide range of clothing items. Among other things, the board held that the presence of the word 'blues' distinguished PARIS BLUES from the PARIS mark.

03 November 2008

KARL JURAK is primarily a surname, says Federal Court

In Matol Biotech Laboratories Ltd v Jurak Holdings Ltd, the Federal Court has approved a decision of the Opposition Board in which the latter had upheld Jurak Holdings Ltd’s opposition against the registration of the trademark KARL JURAK. Among other things, the court held that the average consumer would view the mark as being primarily a surname.

27 October 2008

JAVACAFE held to be clearly descriptive of coffee products

In Shell Canada Limited v PT Sari Incofood Corporation, the Federal Court of Appeal has upheld Shell Canada Limited's opposition against the registration of the trademark JAVACAFE for coffee products. Among other things, the court held that the trademark JAVACAFE was clearly descriptive of the goods at issue.

20 October 2008

HYUNDAI expungement case clears final legal hurdle

In Cross-Canada Auto Body Supply (Windsor) Limited v Hyundai Auto Canada, the Supreme Court has decided not to hear an appeal from the Federal Court of Appeal's ruling in a case concerning a number of HYUNDAI trademarks. The court agreed with the lower court's finding that while there was a significant delay in registering the assignment of the marks, this delay did not cause public confusion.

29 September 2008

Section 45 proceedings require solid and reliable evidence, says court

In Grapha-Holding AG v Illinois Tool Works Inc, the Federal Court has ordered that the registration for the trademark MULLER be expunged from the register. Among other things, the court held that the registrar did not have sufficient evidence before her to conclude that the mark had been used during the relevant period within the meaning of Section 4 of the Trademarks Act.

11 September 2008

Fairmont Resort held not to be 'person interested' in FAIRMONT Case

In a somewhat surprising decision, the Federal Court of Canada has held that Fairmont Resort Properties Ltd was not a 'person interested' under Subsection 57(1) of the Trademarks Act and thus dismissed its application for the cancellation of Fairmont Hotel Management LP's three FAIRMONT marks.