TM 2006 2c - instruct.uwo.ca

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Registered TrademarksRegistered Trademarks

Law 462A – Autumn 2006

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Date: 1999 - Court: F.C.T.D.

Cause of Action: An appeal by Mario

Valentino from a decision of the Registrar

refusing to register their TM MARIO

VALENTINO.

Facts: Both Mario Valentino and Valint founded by well-known Italian

designers and involved in designing and manufacturing of high end consumer

goods (footwear, accessories, etc.). In 1986, Mario Valentino applied to

register TM; Valint opposed arguing not registrable because a surname.

Trademarks: Registrability – Section 12(1)(a) (if not name or surname)

Valint Valint N.V. v. Mario Valentino S.P.A.N.V. v. Mario Valentino S.P.A.

HOLDING: Registrar did not err in refusing TM because Mario Valentino was an individual who died within the previous 30 years and just being a designer does not mean distinctive enough to overcome 12(1) (a).

Date: 2000 - Court: F.C.A.

Leave to appeal to S.C.C. dismissed [2001]

Registrar:No evidence to show Toyota’sLEXUS mark is famousEven if it was famous, there isno reasonable likelihood ofconfusion because the natureof the wares and the trade aredistinct and Toyota does notsell food or beverage products

Facts: Toyota owns the mark LEXUS for cars. Lexus

Foods applied to register the mark LEXUS for canned

fruits and vegetables and juices

FCTD:Reverses BoardToyota files new evidence including surveyshowing 6 out of 10 Canadians recognizethe term LEXUS as indicative of a carNew evidence shows Toyota’s mark isfamous

Lexus v. Lexus FoodsLexus v. Lexus Foods

Trademarks: Registrability – Section 12(1)(d) (if not confusing)

Date: 2001 - Court: F.C.A.

FCA: OVERRULES FCTD - Linden reiterates that Pink Panther is correct

approach and emphasizes difference in wares and the nature of the trades.

Famousness of a trade-mark is merely a factor that is weighed in connection

with all other factors in section 6(5) of the Act when the issue of confusion is

being decide.

Federal Court Trial Division: Distinguished the Pink Panther case because less

weight should be given to the differences in the nature of the wares because

here, “Lexus” is a coined word. Broader protection given to protect famous mark

enjoying rising reputation of quality

Lexus v. Lexus FoodsLexus v. Lexus FoodsTrademarks: Registrability – Section 12(1)(d) (if not confusing)

=

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subject to a TM is subject to a TM is registrable registrable if it is NOT:if it is NOT:

12(1)(a) – a person’s name …

12(1)(b) – clearly descriptive

or deceptively misdescriptive

12(2) can override the above

A trade-mark that is not registrable by reason ofparagraph (1)(a) or (b) is registrable if it hasbeen so used in Canada by the applicant orhis predecessor in title as to have becomedistinctive at the date of filing an applicationfor its registration.

12(1)(c) – other languages

12(1)(d) - confusing

12(1)(e) – s.9 and s.10 marks

s.12(1)(d) a TM is registrable if it isNOT CONFUSING

- s.2 definition “confusing”

refers to s.6

- s.6 – when a mark or nameis confusing, including, s.6(5)

-s.6(5) the tests for confusion

(a) inherent distinctiveness(b) time in use(c) nature of the wares(d) nature of the trade(e) degree of resemblance

1998 - Ont. Ct. Gen Div.

Importance:

The legal test for confusion (in case of TM infringement or passing off) is to askwhether the use of a TM causes confusion with another TM if the use of bothTMs in the same area would be likely to lead to the inference that the wares orservices associated with those TMs are manufactured, sold, leased, hired orperformed by the same person, whether or not the wares or services are thesame general class.

The trademarks inherently distinctive. Have been on the market since 1910. Theproducts in question are both chocolate bars, 400 grams in size. Theirappearance is confusingly similar.

Motion granted.

Trademarks: Registrability – Section 12(1)(d) (if not confusing)Kraft Jacobs v. Kraft Jacobs v. Hagemeyer Hagemeyer Canada Inc.Canada Inc.

Cause of Action: Motion for

summary judgment and an

injunction.

Facts: Kraft Jacobs – exclusive Cdn importer of Toblerone;

Hagemeyer, former Cdn distributor, produced new chocolate bar

(same ingredients, same size, similar packaging) – Kraft Jacobs

bring this action

2003 F.C.T.D.

Cause of Action: Appeal from

a decision of the Registrar rejecting

the opposition proceedings.

Facts: Manjel sells nuts and related snack

foods. Toys “R” Us sells toy items and other

products. In 1987, Majel filed application toregister TM NUTS “R” US. Toys “R” Usopposed alleging NUTS “R” US confusing withtheir “R” US TMs.

Inherent distinctiveness. Neither TM inherently distinctive. Weak because suggestive, even descriptive,of respective wares and services. Toys “R” Us not know with snack foods.

Length of time TMs in use. Toys “R” Us since 1984. Nuts ”R” Us since 1987.

Nature of the Wares. Wares not similar

Nature of the trade. Would never be sold in the same stores: (Toys “R” us sells some candies and snacks;but the amount is too small).

Degree of resemblance. TOYS “R” US and NUTS “R” US somewhat similar in appearance and sound butideas suggested by them differ: NUTS 'R' US suggests nuts; Toys “R" Us suggests toys. "R US" notenough for confusion: TMs have to be considered in their entirety.

All the surrounding circumstances. No evidence of a single instance of actual confusion.

Trademarks: Registrability – Section 12(1)(d) (if not confusing)

Toys Toys ““RR”” Us (Canada) Ltd. v. Us (Canada) Ltd. v. Manjel Manjel Inc.Inc.

APPEAL DISMISSED: OPPOSITION REJECTED

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2006 SCC

Cause of Action: Confusion Facts: Fame v Food

Can Mattel stop the Barbie’s restaurant?

Trademarks: Confusion

Mattel Inc v 3894207Mattel Inc v 3894207

APPEAL DISMISSED: OPPOSITION REJECTED

Regard to all the surrounding circumstances, includingThe casual consumer shomewhat in a hurry

(a) inherent distinctiveness of the mark … and extent to which they have become known

WEAK STRONG

(b) time in use

SHORT LONG

(c ) nature of the wares

(d) nature of the trade

(e) degree of resemblance

CLOSE RESEMBLANCEDIFFERENCES

DISSIMILAR SIMILAR

NARROW WIDE

Mattel Inc v 3894207 Mattel Inc v 3894207 SCC SCC

Trademarks: Confusion

Others?Others?

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2006 SCC

Cause of Action: Expunge for

Confusion

Facts: Fame v Fashion

Can the old Champers prevail?

Trademarks: Confusion

Veuve Clicquot PonsardinVeuve Clicquot Ponsardin…… v Boutiques v Boutiques CliquotCliquot

CLIQUOT "UN MONDE a PART”

v

Distinguishing GuiseDistinguishing GuiseSection 2 definition:

"distinguishing guise" means

(a) a shaping of wares or their containers, or

(b) a mode of wrapping or packaging wares

the appearance of which is used by a person for thepurpose of distinguishing or so as to distinguishwares or services manufactured, sold, leased,hired or performed by him from thosemanufactured, sold, leased, hired or performed byothers

Distinguishing Guise- Registrability

Section 13: additional requirements and limitationslimitation – registrable only if:

• Has been used in Canada as to have becomedistinctive at the date of filing an application for itsregistration;

• not likely unreasonably to limit the development of anyart or industry

• may be expunged if the Federal Court decides that theregistration has become likely unreasonably to limit thedevelopment of any art or industry.

Under Section 31(2), registration is restricted to thedefined territorial area in Canada in which the trade-mark is shown to have become distinctive.

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DistinguishingDistinguishing Guise GuiseDG Registrable under s. 12

but subject to FURTHERlimitations of s. 13:

DG is registrable only if:

• used in Canada as to have becomedistinctive at the date of application

• exclusive use is not likelyunreasonably to limit thedevelopment of any art or industry.

No registration of a DG interferes withthe use of any utilitarian featureembodied in the DG

Registration may be expunged if FCdecides that the registration hasbecome likely unreasonably to limitthe development of any art orindustry.

No proposedmarks for

distinguishingguise

Mark mustalready be in

use

Note strong policyagainst

interference withdevelopment of

utility

- def’n s.2

Distinguishing GuiseDistinguishing GuiseNote strong

policy againstinterference withdevelopment of

utility

Here are two examples of where a TM indistinguishing guise was found to interfere with

the development of utility

Date: 1961Court:

Dominion Lock Co. v. Dominion Lock Co. v. Schlage Schlage Lock Co.Lock Co.

• Dominion opposes Schlage’sapplication for DG TM for keyson grounds that registrationlikely to unreasonablydevelopment of, and practicesin, key industry.

• Opponents claim “key bow”configuration is utilitarian feature

• Opposition also based on non-distinctiveness since similarconfigurations of keys werealready in widespread use

• Applicant argued the subjectconfiguration was very distinctfrom other keys already ingeneral use

Board accepts bothgrounds for oppositionand finds configurationnon-registrable

Distinguishing Guise

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Date: 1995Court: F.C.A.

Remington Rand Corp. v. Phillips Electronics N.V.Remington Rand Corp. v. Phillips Electronics N.V.

• Phillips designed a triple-headed rotary shaver in 60’s

• in 1970s, Phillips obtains TM registrations depicting theconfiguration of the shaver. (as their image)

• Remington wants to market similar shaver -- seeks toexpunge TM on the grounds they were visual representationsof a functional apparatus, and Phillips was using TM toprotect the best possible configuration for the triple-headedrotary shaver.

FCA reverses: Phillip's TM registrations expunged -- TM’s were functional.

• determinative issue is the kind of functionality in question

• if functionality was merely peripheral, with no essential connection with the wares,then it did not act as a bar to registration.

• but mark was an intrinsic reference to the shaver’s principal functional feature

FCTD dismisses expungement application -- marks were mere depictions of theobjects which inspired them and they contained no functional elements or components.

Distinguishing Guise

Distinguishing GuiseDistinguishing Guise

shapes of containers

I. Section 9 Marks (prohibited marks)

II. Certification Marks

III. Trademarks: Registrability

IV. Proposed Marks

V. Distinguishing Guise

VI. Opposing the Mark

VII. Ownership, Duration, and Assignment

VIII.Enforcement

Chapter 5: RegisteredChapter 5: RegisteredTrademarksTrademarks

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OPPOSITION PROCEEDINGSOPPOSITION PROCEEDINGS

Application process set out in the statute – sees. 30 A formal process

S. 38 – any person can oppose

compare with section 60 Patent Act requires “anyinterested person”

S. 37 – the Registrar can refuse

S. 56 – Both ss. 37 and 38 decisions can beappealed to the Federal Court

Opposing the Mark

Date: 1969 - Ex. Ct.

Cause of Action: Application for

expungement of “THERMOS”, held byCanadian Thermos (by Aladdin Industries)

(see s.58 operationalizings.57 expungement)

Importance:

Even though the word “thermos” is used generically, it survives the attempt tohave its registration expunged (on the grounds of s.18(1) (b) - not distinctive atthe time of the proceedings) as a TM in Canada because a substantial portion ofthe Canadian public still recognizes it as denoting Canadian Thermos as thesource.

Duration – Becoming GenericAladdin Industries v.Aladdin Industries v.Canadian ThermosCanadian Thermos

Date: 1995 - F.C.T.D.

Cause of Action: Appeal from

decision of TMOB giving Llumar a TM for“YOS” - in direct competition with Canada

Games’ “YO-YO”

-see s.56 for appeal from decisions ofRegistrar - see para. 3 of the judgment

Importance:

Yo-Yo not expunged in this proceeding - but found to be WEAK.

Therefore, the public would not be confused as to the source of the goods ifYOS was trademarked to this competitor.

Llumar gets its own mark - YOS (TMOB affirmed)

Duration - Becoming GenericCanada Games v. Canada Games v. LlumarLlumarStar KitesStar Kites

Should Canada Gamesbe wary of an

expungement proceedingunder s. 57 ?

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Period of protection Period of protection –– 15 years 15 yearswith renewals available indefinitely provided that usewith renewals available indefinitely provided that use

continuescontinuesif fail to use it, no renewal will be availableif fail to use it, no renewal will be available

Section 46:

(1) The registration of a trade-mark that is on the register by virtueof this Act is subject to renewal within a period of fifteen yearsfrom the day of the registration or last renewal.

Notice to renew

(2) If the registration of a trade-mark has been on the registerwithout renewal for the period specified in subsection (1), theRegistrar shall send a notice to the registered owner and to theregistered owner's representative for service, if any, stating thatif within six months after the date of the notice the prescribedrenewal fee is not paid, the registration will be expunged.

Failure to renew

(3) If within the period of six months specified in the notice,which period shall not be extended, the prescribed renewal feeis not paid, the Registrar shall expunge the registration.

Duration – Statutory Renewal Requirements

What is a What is a ““UseUse””

Section 2. . .

"use", in relation to atrade-mark, means anyuse that by section 4 isdeemed to be a use inassociation with waresor services;

definition refersto section 4 –distinguishbetween waresand services

4. (1) A trade-mark is deemed to be usedin association with wares if, at the time ofthe transfer of the property in orpossession of the wares, in the normalcourse of trade, it is marked on thewares themselves or on the packages inwhich they are distributed or it is in anyother manner so associated with the waresthat notice of the association is then givento the person to whom the property orpossession is transferred.

(2) A trade-mark is deemed to be used inassociation with services if it is used ordisplayed in the performance oradvertising of those services.

Duration - Use

Section 18 AttacksSection 18 Attacks

A registration can be attacked under s.18:

S.18(a) -- the trademark was not registerable when registered

S.18(b) -- the trademark is not distinctive when attacked

S.18(c) -- the trademark is abandoned

S.18 -- or the person who registered was not entitled to.

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Challenging the ExistenceChallenging the Existenceof the TM Itselfof the TM Itself

challenging the existence of the trade-mark itself is analmost automatic defence to an infringement action –

s. 53 sets out the enforcement mechanisms of theAct, including s.53.2 for injunctions and damages

That is why one would claim both :(1) an infringement in the registered mark and

(2) passing off in the same mark in the same action

in case the registration is stricken from the register inthe action - common law rights in a reputation built up inthe “mark” may still be asserted … and might besuccessful.

Date: 2001 - Court: F.C.A

Leave to appeal to SCC granted – settled.

.Cause of Action: Registrar

institutes section 45 expungementproceedings and does expunge TM

FCTD upholds expungement order.UGG appeals to FCA. Issue iswhether TM was in use duringpreceding 3-year period.

Facts: UGG publishes “COUNTRY

GUIDE” magazine with a regularfeature called “COUNTRY LIVING”(listed in table of contents for each

edition). Agent for Hearst wants asimilar TM for use in magazines sorequests expungement proceedings.

FCA reverses:

No dispute that “Country Living” was marked on magazines. But registrarerred by going further to find that the use did not go to distinguish themagazine.

Role of examiner in s. 45 proceedings is very limited. It is a simple andexpeditious procedure.

If respondent wants to stop use of mark because of potential conflict, itshould file a section 57 action

United Grain Growers v.United Grain Growers v.Lang MichenerLang Michener

Duration - Use

Date: 1997 - Court: F.C.T.D.

Cause of Action: Infringement

of copyright (©) and Trade Mark (™).

Facts: Labour unrest. The CAW

union picketing the N.S. Michelin plantuses Michelin’s own Bibendum

character on posters - in posturescritical of the company.

Importance:

you must have “use” within the context of the TM Act to establish TM infringement

so NO, there was no TM infringement here, although there was copyrightinfringement

Michelin v. C.A.W.Michelin v. C.A.W.

Charter values were held notto be relevant in a property context

N.B. Notice of Appeal was filed -but labour context seems to havemeant the action went no furtherin the end.

\ Michelin: Civil Enforcement of Trademarks

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Date: 2001 - Court: Ont. C.A.

Facts:

• Cdn Pro-C registers WINGEN for software which it sells through website• US Computer City sells WINGEN computers in US through stores and advertises them on its site•Cdn Pro-C sues in Ontario for TM infringement claiming its website overwhelmed by business for US company

Pro-C v. Computer CityPro-C v. Computer City

Civil Enforcement

AT TRIAL- Court finds infringement saying Computer City’s website is part of its

commercial activity to target Canadian consumers.- Determination of trade-mark use in the context of the Internet requires a

“holistic approach”- $1.2M in general and punitive damages

ONTARIO COURT OF APPEAL – reverses trial courtTrial court improperly expanded scope of TM protection “use” an essential prerequisite for infringement: Computer City has not“used” WINGEN mark in Canada since it has not sold WINGEN computers inCanadaRESULT: The Internet has not changed the fundamental principles of TM law

Can’t stop “Nuts R Us”

DESIGN MARK

Older local “Chapters” bookstores continue despite Reg ’dTM

NON-DISTINCTIVE MARKS – the terms have meaning

DISTINCTIVE MARKS – these are not words

DISTINGUISHINGGUISE (RegisteredTM) or GET UP(in passing off)

TRADE NAME: ABC Ltd. - only in passing off