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29 June 2004

Evidence of use must show connection with mark owner, court affirms

In Foot Locker Group Canada Inc v R Steinberg, the Federal Court of Canada has ordered the cancellation of the plaintiff's WOOLWORTH trademark in relation to retail store services. The court held that although the plaintiff had provided evidence of use of the mark, it had failed to demonstrate that this use was by the plaintiff or its predecessors in title during the relevant period.

22 June 2004

Supreme Court to hear Lego appeal

The Supreme Court of Canada has granted an application for leave to hear an appeal from the Federal Court of Appeal's decision in Lego Canada Inc v Ritvik Holdings Inc. The Supreme Court will consider whether a trademark that is primarily functional is nevertheless entitled to protection when secondary meaning and confusion are established.

27 May 2004

TWO GIRLS faced with partial cancellation

In House of Kwong Sang Hong International Ltd v Borden Ladner Gervais, the Federal Court of Canada has upheld, in part, a decision to cancel the plaintiff's registration of the mark TWO GIRLS and design. The court held that although all the elements of the mark featured on most of the related products' packaging, their arrangement had been altered leading to material differences between the mark as used and the mark as registered.

24 May 2004

Mark dominated by deceptive misdescription is unregistrable

The Federal Court of Canada has reversed a Trademarks Opposition Board decision to reject an opposition to the registration of BROOKS BROOKS SPRAY ENGINEERING as a word and design mark. The court held that the phrase 'spray engineering' (i) formed a significant part of the mark, and (ii) was deceptively misdescriptive of the applicant's services as it was neither a registered nor licensed professional engineering firm.

19 May 2004

VEUVE CLICQUOT decision marks setback for famous marks

In Veuve Clicquot Ponsardin v Les Boutiques Cliquot Ltée, the Federal Court of Appeal has upheld a trial judge's decision to dismiss the plaintiff's claim that the use of the CLIQUOT mark in relation to clothing infringes and dilutes its CLICQUOT marks for champagne. This decision is a notable setback in the battle to increase protection for famous marks.

21 April 2004

OH HENRY! bars registration to OH CANADA

The Canadian Trademarks Opposition Board has refused an application to register OH CANADA as a trademark for chocolate bars and candy on the grounds that it was confusingly similar to the mark OH HENRY! used for the same type of products.

19 April 2004

Mattel's opposition to BARBIE'S registration roasted by Federal Court

In Mattel Inc v 3894207 Canada Inc, the Federal Court of Canada has dismissed the plaintiff's opposition to the registration of BARBIE'S and design for restaurant services. It held that the proposed registration was unlikely to cause confusion with the plaintiff's famous BARBIE mark for toys because there was no connection between the goods covered by the plaintiff's mark and the services offered by the defendant.

07 April 2004

Federal Court finds no need to defer to Trademark Opposition Board

In Alticor Inc v Nutravite Pharmaceuticals Inc, the Federal Court of Canada has ruled that the defendant's use of its NUTRAVITE mark did not infringe the plaintiff's NUTRILITE mark for identical goods. The court gave little weight to the Trademark Opposition Board decision to refuse the NUTRAVITE registration on the basis that it was confusingly similar to the NUTRILITE mark.

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.