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10 November 2006

Approach to affidavit evidence of use clarified

The Federal Court of Canada has confirmed that, in expungement proceedings, affidavit evidence of use of the mark at issue should not be open to more than one interpretation; "if it is, then the interpretation adverse to the interest of the party in whose interest the document was made should be adopted".

07 November 2006

Fairweather achieves aim in TARGET APPAREL appeal

The Federal Court of Canada has allowed an appeal against the trademark registrar's decision to cancel the mark TARGET APPAREL for clothing, even though the mark was not in use at the date that the cancellation proceedings were commenced. The court held that Fairweather Ltd had established a serious intention to resume use of the mark.

31 October 2006

KIMBO mark expunged for the second time

In Café Do Brasil SpA v Walong Marketing Inc, the Federal Court of Canada has allowed the plaintiff's claim for expungement of the mark KIMBO. The dispute was complicated by the fact that the plaintiff had itself previously owned the KIMBO mark, only to have it expunged, apparently without its knowledge, by the current owner's predecessor in title.

18 October 2006

No protection for a HERO

The Canadian Trademarks Opposition Board has decided that the use of the word 'HERO' as a small element of a much larger design mark does not constitute use of the mark HERO, despite nearly a century of use of the design mark in Canada. The decision shows that the mere fact that a word is used over a long period of time as part of a larger mark does not entitle it to be separately registered if it does not function independently as a trademark.

04 October 2006

Appeal with fresh evidence bears fruit for juice maker

In Industries Lassonde Inc v Sun Pac Foods Ltd, the Federal Court of Canada has overturned an Opposition Board decision in which the board allowed an opposition against the registration of the mark FRUITÉ. Having considered fresh evidence, the court held, among other things, that the mark had acquired sufficient distinctiveness to allow registration.

28 July 2006

Court puts the brakes on HARLEYWOOD application

In H-D Michigan Inc v MPH Group Inc, the Federal Court has overturned a decision of the Trademark Office's Opposition Board, thereby maintaining the opposition by the owner of the HARLEY-DAVIDSON mark against an application to register the mark HARLEYWOOD for restaurant services and clothing. The court found that the applicant did not have any inherent reason for including the element 'HARLEY' in its mark.

07 July 2006

Evidence of use outside Canada filtered out by Federal Court

The Federal Court of Canada has clarified the test to be applied when determining if an opponent's mark, which has not been used in Canada, has been made known in Canada to the extent of denying the distinctiveness of an applicant's mark. The court stated that any use outside of Canada must have been "substantial, significant or sufficient" to make the mark well known in Canada.

15 June 2006

Affidavit evidence order upheld by Federal Court of Appeal

The Federal Court of Appeal has upheld an earlier order, granted during a trademark expungement proceeding, which required Cross-Canada Auto Body Supply (Windsor) Ltd to engage another firm to represent it at the hearing of the case. The order arose because all of Cross-Canada's evidence consisted exclusively of substantive opinion evidence in the form of affidavits sworn by law students and other employees of the firm representing Cross-Canada.

07 June 2006

Ambit of protection for famous marks increased despite defeat for mark owners

The Supreme Court of Canada has released the much anticipated decisions in the BARBIE and VEUVE CLICQUOT trademark appeals. Although neither owner of these famous marks was ultimately successful at having the Supreme Court overturn the lower courts' decisions that there was no likelihood of confusion, the Supreme Court did make it clear that famous marks are generally entitled to a broader scope of protection from would-be interlopers. In doing so, the court clarified the test for determining a likelihood of confusion.

28 April 2006

LENDING TREE judicial review application refused

In LendingTree LLC v Attorney General of Canada, the Federal Court of Canada has refused an application for judicial review - brought by the opponent to the registration of the trademark LENDING TREE - against a Trademark Opposition Board notice allowing the trademark applicant to amend the name set out in the application. The court ruled that the opponent would be able to raise this issue during the opposition itself.

26 April 2006

Unregistered mark may be subject to a security interest

In McCurdy Enterprises Limited v Shamrock Springs Water Inc, the Newfoundland and Labrador Superior Court had to determine whether a common law trademark is an asset that may be subject to a security interest that covers all of a debtor's property. The case highlights the importance of conducting proper searches for security or other encumbrances on the title of assets, particularly in the context of unregistered marks.

09 March 2006

Ambit of protection for famous marks squeezed further

In Maison Cousin (1980) Inc v Cousins Submarines, the Federal Court of Canada has ruled that although the marks MAISON COUSIN and COUSINS were confusingly similar in relation to sandwiches, this was not the case for beverages, restaurant services and food products. Despite noting the fame of the MAISON COUSIN mark, the court based its decision on the differences in the nature of the goods and the channels of trade.

06 March 2006

Mark transfer need not be in writing

In Wing Wah Food Manufactory Products Inc v China Brands Food Products Inc, the Federal Court of Canada has reiterated that the transfer of a registered or unregistered trademark does not need to be in writing in order for it to be valid. However, the decision also illustrates why it is preferable to confirm such transfers in writing.

01 March 2006

JAGUAR decision confirms ambit of protection for famous marks

The Federal Court of Canada has expunged the mark JAGUAR for tote bags, luggage, handbags and school bags on the basis that it was confusingly similar to the famous mark JAGUAR for automobiles and depreciated the value of the goodwill of the famous mark. The decision provides a comprehensive discussion of the ambit of protection afforded to famous marks.

06 February 2006

'Infringing' use wipes registered mark off of the register

In Suzanne's Inc v Auld Phillips Ltd, the Federal Court of Appeal has confirmed that a registered trademark must remain distinctive of a single source throughout the country in order for the mark to remain valid and enforceable. It held that a single infringer's use of a confusing mark can cause a registered mark to lose its distinctiveness, and thus render it invalid.