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24 March 2004

A sound examination should not include design elements

In Best Canadian Motor Inns Ltd v Best Western International Inc, the Federal Court of Canada has refused registration of the trademark BEST CANADIAN MOTOR INNS and design. Contrary to a previous decision, the court held that design elements that are combined with textual components should be disregarded in deciding whether a trademark is descriptive as sounded.

18 March 2004

Spillover advertising does not constitute use, confirms court

In Clark O'Neill Inc v PharmaCommunications Group Inc, the Federal Court of Canada has confirmed a decision to expunge the plaintiff's SINGLE SOURCE SAMPLING mark on the grounds of non-use. The court held that use of the mark only stemmed from spillover advertising from the United States and there were no special circumstances justifying non-use of the trademark in Canada.

02 March 2004

Union ordered to stop use of parody TV commercials

In TELUS Corporation v Telecommunication Workers Union, the British Columbia Supreme Court has granted an interlocutory injunction restraining the defendant - a body representing the plaintiff's employees - from broadcasting television commercials criticizing the plaintiff, which were parodies of the plaintiff's own commercials. The decision follows case law that has established that free speech rights cannot be used in a way that infringes IP rights.

23 February 2004

Concept of use in relation to intangible goods further extended

In In Re Acer America Corporation, the Canadian Trademarks Opposition Board has continued the trend towards expanding the level of trademark protection available to intangible goods and specifically computer software. Following this decision, the concept of use has been further extended to allow greater trademark protection for intangible goods that are not distributed through traditional means.

17 February 2004

Ontario's new limitations act will affect trademarks

The Ontario Limitations Act 2002, which limits the period in which an action may be brought to court to two years from the date a claim is discovered, has come into force. This will affect trademark litigation as the Canadian Trademarks Act does not prescribe a limitation period that would supersede that of the new Ontario act.

13 February 2004

Contempt of court order issued for infringement outside Canada

In LifeGear Inc v Urus Industrial Corporation, the Federal Court of Canada has held the defendant in contempt of court for continuing to offer for sale counterfeit products over the Internet following an earlier court order prohibiting such sale. The court came to this conclusion, in spite of the fact that the website appeared to be operated outside of Canada by a third party.

15 January 2004

Anheuser-Busch awarded GOLDEN registration

In Molson Canada v Anheuser-Busch Inc, the Federal Court of Canada has dismissed the plaintiff's opposition to the registration of MICHELOB GOLDEN DRAFT. It held that although the plaintiff's series of marks featuring the word 'golden' are strong and well known in Canada, when analyzed as a whole, the two parties' marks were not of similar appearance.

12 January 2004

Potential confusion over milk packaging warrants interim injunction

In Agropur Coopérative v Saputo Inc, the Quebec Superior Court has granted a motion for an interim injunction ordering the defendant to stop marketing, selling and distributing milk products using a packaging similar to the registered get-up for Agropur's ULTRALAIT products.

03 December 2003

Sign not used as trademark may amount to passing off, rules court

In Tommy Hilfiger Licensing Inc v International Clothiers Inc, the Federal Court has ruled that the defendant's use of a trademarked design that was confusingly similar to that of the plaintiff amounted to passing off, even though it was not used as a trademark.

13 November 2003

Public agency allowed to use trademark identical to official mark

The Federal Court has dismissed the plaintiff university's action for summary judgment in relation to its claim that the defendant, a government agency, had infringed its official mark in contravention of Section 9 of the Canadian Trademarks Act. The court held that the defendant began using the mark before the notice of the plaintiff's adoption of its official mark had been issued.

06 October 2003

Lego block's look cannot function as a trademark

In Lego Canada Inc v Ritvik Holdings Inc, the Federal Court of Appeal has followed the lead of courts in other jurisdictions, finding that Lego has no valid trademark in the look of its toy blocks because the look is a primarily functional feature of the toy.

22 September 2003

Bacardi's opposition to 'Havana Club' fails

The Federal Court of Canada has upheld the trademark registrar's decision to dismiss Bacardi's opposition to the registration of 'Havana Club' as a word mark and design. It found that as the applicant is also the owner - albeit disputedly - of the prior registered mark HAVANA CLUB, the claim of confusing similarity that was the basis of the opposition could not prevail.

15 September 2003

Canadian generic use of European wine and spirit names to end

The European Commission has approved a bilateral agreement under which Canada and the European Union will commit to protect each other's geographical indications for wines and spirits. Under the agreement, names such as Chablis, Marsala or Port will only be used in Canada to label European wines.

08 September 2003

CIPO set to favour online procedures with preferential fees

In order to promote its streamlined online procedures, the Canadian Intellectual Property Office (CIPO) has announced that as of January 1 2004, it will offer reduced fees to those filing trademark applications and renewing registrations online.

28 July 2003

Injunction on the menu in restaurant corporate name dispute

In Quebec Inc v Quebec Inc, the Quebec Superior Court has granted a motion for a permanent injunction prohibiting the defendant from using the corporate names 'Restaurant L'Ancestral' and 'Restaurant La Maison L'Ancestral II' for its restaurant. The court held that both names were confusingly similar to the 'Restaurant L'Ancestral' name used by the plaintiff.