Canadian Trademark Blog

Maintained by Clark Wilson LLP

CIPO’s acceptable wares and services entries: added to TMClass, made Trilateral friendly

By In Legislation, Protection & Enforcement

CIPO has announced two interesting changes regarding its Wares and Services Manual.

TMClass

First, CIPO-approved entries have now been added to TMClass, a multi-jurisdictional database of acceptable goods and services claims maintained by  Europe’s Office for Harmonization in the Internal Market (OHIM).  TMClass now contains acceptable goods and services descriptions for nearly 40 different jurisdictions in 29 different languages, making it an increasingly useful resource for practitioners who are crafting IDs with an eye to minimizing or altogether avoiding local ID objections.

CIPO’s entries were added to the TMClass database on August 25, 2014, and are denoted in the database by a “CIPO – OPIC” tag.

Trilateral Partnership

Additionally, CIPO has now updated its own database to denote IDs  that are acceptable to local authorities in the US, Japan, Korea and under the OHIM regime.

By way of background, in 2009 CIPO signed a memorandum of co-operation with the “Trilateral Partners” – a loosely organized group of jurisdictions  who have worked to promote and effect harmonization in their IP registration systems over the last few decades.

The Memorandum saw CIPO join the Partners’ trademark identification project. The goal of the project was to create and maintain a list of IDs for goods and services that, if entered in an application for the registration of a trademark in any Partner country, would be accepted.

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Official Marks Up For Review

By In Legislation, Registration

A Private Members Bill was introduced in Canada’s federal parliament yesterday, which, if passed, will result in significant amendments to the official mark provisions in the Trade-marks Act.  Section 9(1)(n)(iii) of that Act currently sets out a very simple procedure whereby public authorities can attain official mark status for virtually any mark that they have adopted and used.  Once attained, official mark status prevents other parties from adopting, using or registering the same or a very similar mark in association with any wares (goods) or services, unless the public authority consents.  Under the current Act, official mark requests cannot be opposed, there is no specified term or renewal process for such status and there is no process for expunging an official mark if it is no longer in use, unless the public authority voluntarily abandons that status.

Bill C-611 would, if passed, add a definition of public authority to the Act and set out an opposition procedure for third parties to challenge official mark requests.  It would also provide for a 10 term for such status, with the ability to renew for further 10 year periods, each of which could also be opposed.

Time will tell if this Bill gains any traction.  The Member who introduced the Bill is with the minority Liberal party.  This Bill is unrelated to the wide ranging changes to the Act that are set out in Bill C-31.

Fumbling Towards Accession: Canadian government proposes massive trademark law overhaul

By In Legislation

This post is the first in a series discussing proposed changes to Canadian trademark law.

The Canadian Government dropped a bombshell on the trademark community on March 28, 2014, proposing massive changes to the Canadian Trade-marks Act (the Act), such changes being buried in a budget bill—namely, the Economic Action Plan 2014 Act, No. 1 (Bill C-31).  The immediate response from practitioners and other stakeholders in the trademark space was one of consternation: the changes are extensive, and are being introduced with virtually no notice to stakeholders about these changes prior to the introduction of the bill.

According to Federal Government sources,  the changes  are intended to prepare Canada for accession to the Madrid Protocol, the Nice Agreement and the Singapore Treaty—and Canada has telegraphed its planned accession to these agreements for several years.  However, many of the changes required for this purpose were already contained in Bill C-8, the Combating Counterfeit Products Act, which is expected to be enacted in the next few months.  Bill C-31 contains many other proposed revisions to the Act that go far beyond what is required for accession to the above Treaties, and appear to be directed more at cost cutting for the benefit of the Federal Government.

Rather than simply listing some or all of the proposed changes, we have decided to examine, in some detail, the likely impact of the changes in a series of posts.  In this first post, we examine some of the effects that the changes will have on the clearance of trademarks in Canada.  In future posts we will examine the anticipated effects of Bill C-31 on Applications for Registration of trademarks in Canada, on Opposition practice, and on post-registration matters.  We will attempt to do all of this from the perspective of prospective applicants, current applicants (where applications have been filed prior to Bill C-31 coming into force), existing registrants and other interested parties.

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Just in time for the Olympics – a Race to the Trademark Podium

By In Case Law, Famous Marks, Protection & Enforcement

As we approach the opening ceremonies of the 2014 Olympic Winter Games in Sochi, the Canadian Olympic Committee (COC) has launched a lawsuit against outdoor apparel maker The North Face in the British Columbia Supreme Court, over allegations that it is infringing on Olympic trademarks through ambush marketing techniques.

The COC is seeking an injunction against The North Face and unspecified damages.  Readers of this blog will recall that the 2010 Winter Olympic Games in Vancouver/Whistler featured many similar skirmishes and special legislation enacted to assist the COC in its ongoing battle against ambush marketing.

As reported in the Globe and Mail, the North Face is not a sponsor of the Olympic games, but introduced a new line of clothing in November 2013.  The clothing line, originally launched as the Villagewear Collection, was renamed as the International Collection in response to complaints by the COC. 

The clothing line, which includes jackets, toques and bags, is decorated with the colours and flags of various countries. This includes items bearing the Canadian flag which feature the colours red and white.  Some items featured a patch with the symbol “RU 14” which, according to the COC, is a reference to the Winter Olympic games in Sochi, Russia.  Other merchandise showed a world map with a red star where Sochi is located.  A t-shirt featured the date of the opening ceremonies for the Games.

Canadian Government Tables 5 IP Treaties in the House of Commons

By In Foreign Protection, Legislation

The Canadian Government tabled 5 intellectual law Treaties in the House of Commons on January 27, 2014.   The purpose of this action is for Canada to harmonize its trademark, patent and industrial design laws with those of many other countries.

The Treaties tabled are as follows:

The first three Treaties in particular will have significant impacts on the procedures for trademark applications and registrations in Canada.   The tabling of these Treaties is the first procedural step towards their ratification and implementation by the Government of Canada.  Implementation will require amendments to Canada’s existing IP legislation, which could take a long time to be approved.  The Canadian Intellectual Property Office published a paper in January of 2012 on the changes required to the Trade-marks Act in order for Canada to adhere to the Madrid Protocol.  Until such amendments are approved by the Canadian Parliament, none of these Treaties will be binding in Canada. 

 

.CA Domain Names Held To Be Personal Property

By In Case Law, Domain Name Disputes, Domain Names

A recent Ontario Superior Court of Justice decision (Court File No. CV-13-480391) has held that .CA domain names are personal property and as such are subject to the rules that govern any other type of personal property, including those against wrongful conversion.  Perhaps more importantly, the case appears to stand for the proposition that title in .CA domain names exists independently of the registration of those domain names.

17 .CA domain names were in issue,  including mold.ca and mould.ca.  All were registered by Mr. Sullivan in his own name for the benefit of a company that he co-founded with Mr. Dalrymple, called Mold.Ca Inc.  (Mold.Ca Inc.)  The business of Mold.Ca Inc., not surprisingly, involves  mold inspection and removal services in the Greater Toronto area.  Sullivan purchased the domain names using the company’s credit card but listed himself as the Registrant of all of the domain names, rather than Mold.Ca Inc., unbeknownst to Dalrymple. 

Sullivan parted ways with Dalrymple and Mold.Ca Inc. a year later, while Mold.Ca Inc. continued to carry on its business, as before.  Unbeknownst to Dalrymple, Sullivan retained the domain name registrations and the passwords for the domain name registrations and then subsequently transferred the domain name registrations to a third party (Romelus).   Once Dalrymple found out about the above events, he commenced a Canadian Internet Registration Authority (CIRA) Dispute Resolution Proceeding (CDRP) against Romelus.  The CDRP proceeding were unsuccessful because there was no evidence that the domain names had been registered by Romelus in bad faith (they hadn’t been), nor was there evidence that they were being used for other than legitimate purposes by Romelus.

Following the failed CDRP proceeding, Romelus transferred the domain names back to Sullivan and Sullivan began using them in a competing business to that of Mold.Ca Inc.  Undaunted by its loss in the CDRP, this turn of events led to Mold.Ca Inc. to commence proceedings in the Ontario Superior Court of Justice.  Finding in favour of Mold.Ca Inc., the Court held that “the issue is a simple matter of property law”, whereby title to the domain names belongs to the company, which had been wrongly converted by Sullivan.  The Court therefore ordered that all of the domain names, including all administrative information and passwords, be transferred to Mold.Ca Inc.

Cigars and Alcohol: Confusing Trademarks

By In Trademark Oppositions

Tequila Cuervo, S.A.(“Cuervo“) filed an application in the Canadian Intellectual Property Office for the registration of the trademark LAZARO COHIBA based on proposed use in Canada with alcoholic beverages. Empresa Cubano Del Tabaco (“Empresa“), a distributor of tobacco related products that predominately distributes cigars and holds the COHIBA trademark, opposed the application on several grounds, including the likelihood of confusion.

The Trade-marks Opposition Board, in a decision rendered September 30, 2008, rejected all of the grounds of opposition and in doing so placed considerable weight on the fact that Empresa had not established an extensive reputation for its mark.  Also relevant was the differences between the wares of the parties, as well as the channels and trades of the parties. Empresa appealed the Board’s decision to the Federal Court of Canada, submitting new evidence with respect to the above two issues.

On the reputation issue, Empresa submitted expert evidence of Cohiba cigar’s iconic brand status, noting that this brand was featured in television shows, movies and other media forms. This evidence was corroborated by other affidavit evidence establishing that the Cohiba cigar brand had been featured in magazines and other media content that had been circulated throughout Canada. On the distinctiveness issue, expert evidence was tendered to establish that users of tobacco and alcohol often consume both products, and that the use of one involves the use of the other. On this latter issue, new evidence was submitted by Empresa showing that many stores sold both hard alcohol and cigars.

In its October 4, 2013 decision, the Federal Court, in light of this new evidence, reversed the Board’s decision and held that the test for confusion had been met. The Court first noted that Empresa’s cigar sales in Canada were not insignificant and accepted the evidence establishing that the COHIBA cigar brand had an iconic status. On this latter point, the Court noted that “personal ownership or use of the product is not essential to the awareness or knowledge of a trade-mark.”

With respect to the distinctiveness issue, the Court held that the sale of cigars and spirits in many stores across Canada was not particularly persuasive on its own. However, the Court noted that,

[t]he reason why the proximity of cigars and alcohol is important for the analysis only becomes apparent upon examination of the relationship between smoking and alcohol. This is where the [expert evidence] is very helpful.

The Court accorded significant weight to the fact that a smoker subjectively relates alcohol to cigars, and therefore, a “predisposition for confusion” exists. Moving forward, it remains to be seen how far this reasoning can be taken. Does such a predisposition exist with wine and cheese, particularly in those parts of Canada where they are available in the same store?

Thus, the iconic status of COHIBA, coupled with the close relationship between sales of alcohol and tobacco led the Court to conclude that there was confusion.