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31 January 2006

Federal Court delivers blow to foreign-owned official marks

In Canada Post Corporation v United States Postal Service, the Federal Court has overturned the trademark registrar's decision to offer official mark protection to a number of marks adopted and used in Canada by the United States Postal Service. The court stated that USPS is not a public authority in Canada and therefore cannot benefit from protection.

25 January 2006

Differences between goods does not preclude finding of confusion

In contrast to earlier decisions from the Federal Court of Appeal of Canada, which indicated that the use of identical marks for different goods was unlikely to cause confusion, the Federal Court has ordered the expungement of a VIBE (and design) mark registered for clothing on the grounds that it was likely to cause confusion with a VIBE (and design) trademark used in Canada (but not registered in its design form) in association with a popular culture magazine.

14 December 2005

Caramel is sweet, but not unique

In Saputo Groupe Boulangerie v National Importers Inc, the Federal Court of Canada has affirmed a Trademarks Opposition Board's decision, which held that the word 'caramel' is descriptive and, therefore, marks using this word as their most distinctive element are not themselves distinctive.

14 November 2005

CIPO seeks comments on streamlined opposition procedures

The Canadian Intellectual Property Office is seeking comments from the public on proposed amendments aimed at streamlining opposition procedures. The changes include (i) the possibility to conduct cross-examination by video conference, and (ii) the removal of compulsory consent to submit evidence by courier.

09 November 2005

Counsel may not argue on certain affidavits sworn by colleagues

In a case stemming from trademark expungement proceedings, the Federal Court of Canada has held that Rule 82 of the Federal Court Rules prevented a counsel from arguing on affidavits sworn by employees from the same firm because the affidavits addressed the substantive issues raised by the expungement application. The court found that allowing the counsel to argue on the affidavits would be inappropriate.

01 November 2005

Section 45 non-use proceedings have limited scope

In Omega SA v Ridout & Maybee, the Federal Court of Appeal has reiterated that proceedings under Section 45 of the Trademarks Act for non-use of a trademark have a limited scope, and that the validity of the registration is not to be considered. It confirmed that validity should be challenged by way of an expungement proceeding to the Federal Court.

03 October 2005

Use by subsidiary not sufficient to keep XTREME on register

The registrar of trademarks has ordered the expungement of the mark XTREME on the basis that use of the mark had not been evidenced in accordance with the requirements of Section 45 of the Canadian Trademarks Act. The decision hinged on whether use of the mark by a wholly-owned subsidiary of the registrant would be considered use in Canada by the registrant.

27 July 2005

Federal Court allows new evidence after appeal hearing

In Telus Corporation v Orange Personal Communication Services Limited, the Federal Court has allowed new evidence regarding changes to the state of the trademark register to be adduced after the appeal hearing. Since this evidence only came into existence after the appeal hearing, the decision may represent a departure from the material evidentiary dates previously considered relevant.

19 July 2005

DR. MARTENS mark owner boots out proposed use application

The Trademark Opposition Board has refused an application for the trademark DOC MARVEL'S on various grounds of opposition, including risk of confusion with the trademarks DR. MARTENS and DR. MAERTENS as well as non-compliance with Paragraph 30(e) of the Trademarks Act, which precludes a proposed use application if the applicant, at the time of filing the application, was already using its trademark in Canada.

30 June 2005

No use in marketplace ends Wrangler's registration hopes

The Federal Court of Canada has upheld an earlier decision and has refused to allow Wrangler Apparel Corp's application for the mark TIMBER CREEK BY WRANGLER for footwear. The court stated that the registrar had not erred in concluding that, in the face of confusing similarity with the earlier TIMBERLAND mark, Wrangler's failure to establish its trademark in the marketplace in relation to footwear was critical evidence.

24 June 2005

No ADVANTAGE given to car rental company in injunction action

In Advantage Car & Truck Rentals v 1611864 Ontario Inc, the Federal Court has refused the plaintiff's application for an interlocutory injunction enjoining the defendant from using its registered mark pending trial on the plaintiff's claim for cancellation of that registration. While holding that the use of a registered trademark can be enjoined where the validity of that registration is challenged, the court found that the plaintiff had failed to meet the appropriate test.

20 June 2005

BARBIE'S Case will be heard by Supreme Court

The Supreme Court of Canada has granted Mattel Inc leave to appeal the rejection of its opposition to a restaurant owner's application to register the trademark BARBIE'S (and design). The earlier rulings held that the applicant had established that there was no reasonable likelihood of confusion with Mattel's famous BARBIE mark.

07 June 2005

Registrar issues practice notice following Effigi decision

The Canadian Intellectual Property Office has issued a new practice notice following the decision of the Federal Court of Appeal last month in the Effigi Case. The decision put an end to Canada's 50-year practice of approving applications with the earliest date of first use. From now on, when pending marks are confusing, the applicant with the earlier filing date or priority date will be considered to be the person entitled to registration of the trademark.

02 June 2005

Federal Court of Appeal affirms new filing rule

The Federal Court of Appeal has affirmed the Federal Court decision in the Effigi Case, thus confirming the reversal of 50 years of practice of the registrar of trademarks. The Trademark Office can no longer refuse an application on the grounds that a third party has filed a later application that includes a claim to an earlier date of first use.

12 May 2005

Courts are required to show deference to decisions of registrar

In Foot Locker Canada Inc v R Steinberg, the Federal Court of Appeal has, in Section 45 of the Trademarks Act expungement proceedings, overturned an earlier decision and has allowed the appellant's WOOLWORTH trademark to remain on the register. While the judgment confirms the obligation of a court ruling on an appeal from a decision of the registrar of trademarks to show proper deference, it also had the effect of reversing the registrar's decision.