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23 June 2008

Mark must be in use in country of origin as of Canadian filing date

For the first time, in Allergan Inc v Lancôme Parfums and Beauté & Cie, the Trademarks Opposition Board has refused an application pursuant to Sections 37(1)(a) and 30(d) of the Trademarks Act on the grounds that the applicant had not established that the mark was in use in the applicant's country of origin at the time the Canadian application was filed.

02 June 2008

A party may not appeal against an order made in its favour

In See You In - Canadian Athletes Fund Corporation v Canadian Olympic Committee, the Federal Court of Appeal has dismissed an appeal by See You In - Canadian Athletes Fund Corporation from an order of the Federal Court made in its favour. The court decided not to intervene as See You In had successfully prevented the Canadian Olympic Committee from publishing certain official marks.

28 May 2008

Appellate court sets higher bar for defending registrations after non-use

In Scott Paper Ltd v Smart & Biggar, the Federal Court of Appeal has ruled that plans to reintroduce a trademark cannot be used to protect against expungement procedures under Section 45 of the Trademarks Act, even if those plans are concrete and ultimately executed. This decision sets a higher bar for defending trademark registrations after a period of non-use.

30 April 2008

'Glen' means 'scotch' in Canada, says Federal Court

In Scotch Whisky Association v Glenora Distillers International Ltd, the Federal Court has held that the word 'glen' had become recognized in Canada as designating scotch whisky only. Therefore, the court found that Glenora Distillers International Ltd could not register the trademark GLEN BRETON for whisky produced in Canada.

22 April 2008

CANADA DRUGS not clearly descriptive or deceptively misdescriptive

In Thorkelson v Pharmawest Pharmacy Ltd, the Federal Court of Appeal has allowed an appeal from a decision granting an application for an order to expunge the marks CANADADRUGS.COM and CANADA DRUGS. Among other things, the court held that there was no evidence capable of establishing that, as of the date of the registration, the marks were clearly descriptive or deceptively misdescriptive.

14 April 2008

Applicable standard for motion to strike reviewed

In Mövenpick-Holding v Inter Management Services Limited, the Federal Court has reviewed the applicable standard for a motion to strike out parts of a counterparty's pleadings. The court dismissed the plaintiff's appeal against a decision of the prothonotary in which the latter denied the plaintiff's motion against the defendants.

08 April 2008

New Practice Notice on stays and service requirements

The registrar of trademarks has issued a Practice Notice which clarifies some of the issues involved in serving documents on the registrar. The notice also emphasizes the importance of obtaining a stay of proceedings of the registrar from the Federal Court pending the outcome of an appeal to the Federal Court of Appeal.

06 March 2008

Non-distinctiveness of CHEAP TICKETS confirmed on appeal

The Federal Court of Appeal has dismissed an appeal against a decision ordering the expungement of the trademarks CHEAP TICKETS and CHEAP TICKETS AND TRAVEL. Among other things, the court held that Cheaptickets and Travel Inc had filed no evidence reasonably capable of supporting a submission that the trademarks had acquired distinctiveness as of the filing date of the applications for registration.

04 March 2008

Decision highlights importance of determining who intends to use mark

In Alltemp Products Co Ltd v Bit Holder Inc, the Trademarks Opposition Board has upheld an opposition against the application to register the trademark ROTOMOTION on the grounds that the formal requirements of Section 30(e) of the Trademarks Act had not been met. Among other things, the board held that the applicant had failed to state accurately who was intending to use the mark.

22 February 2008

CIRA orders transfer of ''

A Canadian Internet Registration Authority panel has ordered the transfer of the domain name '' to the owner of the FORMICA mark. Among other things, the panel found that the registrant had no legitimate interest in the '' domain name.

01 February 2008

Federal Court judges wine by its label

In Sociedad Agricola Santa Teresa Ltda v Vina Leyda Limitada, the Federal Court has considered what constitutes a place of origin for wine such that the name of this place cannot be registered as a trademark. The court found that Leyda was a place of origin for wine and thus denied registration of the trademark LEYDA.

29 January 2008

Federal Court reviews burden of proof in Section 45 proceeding

In Brouillette Kosie Prince v Orange Cove-Sanger Citrus Association, the Federal Court has dismissed an appeal against the registrar of trademarks' decision to maintain the registration of the trademark POM-POM pursuant to Section 45 of the Trademarks Act. Among other things, the court found that the submitted evidence supported the determination that the mark was used during the relevant period.

21 January 2008

New court decision on 'use it or lose it' provision

In Bereskin & Parr v Fairweather Ltd, the Federal Court of Appeal has upheld a lower court decision that rejected an attempt to cancel the mark TARGET APPAREL for clothing, even though the mark was not in use at the date on which the cancellation proceedings were commenced. The trial judge had found that Fairweather Ltd had established a serious intention to resume use of the mark.

16 January 2008

Survey shows association between NORDIQUES and defunct hockey team

In Accessoires d'Autos Nordiques Inc v Canadian Tire Corp, the Federal Court of Appeal has dismissed an appeal against a Federal Court decision which held that there was no likelihood of confusion between the marks NORDIC and NORDIQUES. The court relied on survey evidence establishing that the trademark NORDIQUES evoked images of a hockey team and not of the opponent's trademark.

14 January 2008

Gamble on evidence of use of MONTE CARLO leads to expungement

In 88766 Canada Inc v Monte Carlo Restaurant Limited, the Federal Court has found that the registrar of trademarks acted unreasonably in maintaining a registration in proceedings to expunge the mark MONTE CARLO. The court concluded that the affidavit provided by the registered owner did not clearly establish use of the mark during the relevant period. The mark was thus struck off the register.