Recent Decisions April 2000
I.FEDERAL COURT DECISIONS
(a) Patents
1. Apotex v. Merck and Merck Frosst Canada, December 14, 1999, FCA (Stone J.A., Linden J.A., Rothstein J.A.) Res Judicata
Appeal from a judgment dismissing the appellant's motion in the action for relief against the operation of paragraph 3 of the judgment at trial. By that judgment, a permanent injunction was granted to the respondents. The judgment was varied on appeal but paragraph 3 was left in tact. Applications by both sides for leave to appeal to the Supreme Court of Canada were dismissed.
Held: Appeal dismissed. The appellant is attempting to clear the way for it to contest in this or another action the validity of Claim 1 of the patent. Res judicata applies not only to points upon which the Court was actually required to pronounce a judgment but also to every point which properly belonged to the subject of the litigation and which the parties, exercising reasonable diligence, might have brought forward at the time. The validity of Claim 1 was a point that properly belonged to the subject of the litigation and therefore ought to have been raised at trial. The fact that the compounds that the appellant now wishes to sell were not developed before the judgment at trial is not a special circumstance that justifies an exemption from the general rule. The appellant chose at trial to rely on s. 56 as a defence even though it was not an answer to the broad plea contained in the Statement of Claim and it cannot now attempt to defend the broader plea.
2. Visx v. Nidek et al., December 16, 1999, FCTD (Dubé J.) Infringement/Validity/ Professional Skill Defence
Action for infringement of three patents directed to an apparatus used in performing surgical operations upon the cornea of the eye. Defendants' counterclaim challenges the validity of the patents.
Held: Patents are valid but not infringed.
Infringement: Reference to the "anterior surface of the cornea" in the patent is properly construed as referring to the epithelium. If, as argued by the plaintiff, "anterior surface" were to be given a broader meaning embracing any surface, then the term would be ambiguous and the patent invalid. "Means for shaping, focusing and directing the beam toward the cornea" must mean narrowing and concentrating the entirety of an originally rectangular beam to its smallest practical spot on the cornea. The defendants' apparatus does not have a cylindrical lens in its optical path that would cause the beam to converge; the defendants' apparatus is more of an "imaging System", whereas the patent calls for a "focusing system". The Myopia Patent and Astigmatism Patent are therefore not infringed. The Topography Patent is not infringed as no corneal topography data is inputted into the defendants' apparatus.
Validity: The patents, when construed purposively, are not invalid because of ambiguity. The invention is not just an idea expressed - the patents teach a combination of several elements working together to achieve the results defined in the claims. The various steps taken in experimenting and testing an invention need not be described by the inventor before a patent is issued. No adverse interest should be drawn from the failure of the plaintiff to call the inventor to testify; the defendants could have called the inventor if they had wished to do so. "Insufficiency" has not been specifically pleaded by the defendants. Prior broadly worded method claims do not support the argument that the invention was previously known as such claims did not claim means for shaping, focusing and directing and other aspects of the patents at issue. A South African patent issued before the priority date of the Astigmatism Patent does not invalidate the patent because astigmatism correction is accomplished in that invention in a fundamentally different way. In addition, a foreign patent cannot be said to be issued until it becomes enforceable and a South African patent cannot be enforced by the patentee as a right until nine months after grant, which would have been after the priority date of the plaintiff's patent. The Professional Skill Defence is not available to attack the validity of the patents as these patents do not teach professional skills to surgeons but rather deal with an apparatus. Moreover, astigmatism and the like are not diseases; they are human conditions.
3. Connaught Laboratories v. Medeva Pharma et al., December 17, 1999, FCTD (Sharlow J.) Estoppel/Foreign Judgment
In an action for a declaration that the defendant's patent is void and that the plaintiff's vaccine does not infringe the defendant's patent, the plaintiff sought to rely on findings of fact made abroad with respect to related patent filings. A prothonotary struck the paragraphs of the Statement of Claim that rely on the foreign findings on the basis that there is no estoppel in the present circumstances. The plaintiff appeals the prothonotary's decision.
Held: Appeal allowed. The arguments based on res judicata and issue estoppel could succeed and so the prothonotary erred in ordering that they be struck.
Although a plea of issue estoppel can be based on a foreign judgment, inevitable difficulties arise in establishing the conditions for its application. The plaintiff's position is that once a matter relating to a patent having common ancestry has been fully litigated in one jurisdiction, it ought not to be litigated in another. The validity of a patent granted by the laws in Canada cannot be determined by the legal regime in another country; but inconsistencies in findings of fact made by different tribunals should not be tolerated if they can be avoided without offending the substantive law or procedural norms. The plaintiff is simply arguing that the defendant ought not to be permitted to take inconsistent positions on specific questions of fact that are in issue in this case and that have already been litigated elsewhere.
The defendant's argument that the paragraphs in question will make the trial more complex as the defendant will be obliged to adduce additional expert evidence about the differences between Canadian and foreign laws is not justification for striking the paragraphs. Patent litigation as a whole would be simplified by principles that permit or require, in appropriate cases, the adoption of findings of fact in foreign proceedings, and that will never happen if the courts do not undertake an examination of the arguments that would open the door to such a principle.
4. Merck and Merck Frosst Canada v. Nu-Pharm et al., January 21, 2000, FCTD (Muldoon J.) Interlocutory Injunction/Irreparable Harm
Motion for an interlocutory injunction restraining Nu-Pharm from infringing a patent.
Held: Motion dismissed. Without resolving the multitude of conflicts appearing in the evidence and the intricate legal questions, it is clear that the claims in question stand a chance of being both valid and infringed. The action is therefore neither frivolous or vexatious and the applicant need not demonstrate more in order to satisfy the "serious issue" test. The applicant submitted that irreparable harm would result because the respondent would breach a permanent injunction granted against another party and, because a breach of an injunction is not a cause of action, such breach cannot lead to damages and therefore is not quantifiable in monetary terms. The Court responded that such a breach is quantifiable as exemplary damages when argued together with some other activity giving rise to a cause of action and therefore is not prima facie irreparable harm. The applicant also argued that it would suffer irreparable harm because, if an award is granted, the respondent will be unable to pay it. However, there is evidence that the respondent has the means to pay some damages and no clear evidence that any award eventually made will rise above this amount. In addition, the market for the product at issue is relatively static and so damages arising from the sales of the respondent's product are quantifiable in a reasonably precise manner. A mere difficulty in assessing damages is insufficient to find irreparable harm. The balance of convenience favours the respondent because the disruption that it would suffer from an injunction far outweighs the inconvenience that the applicant would experience if the respondent's product is allowed to remain on the market until final disposition of the action. As it is unclear whether the respondent will be able to satisfy an order exceeding $1.98 million, the respondent is required to submit to the Court 10% of its sales on a monthly basis.
5. Calgon Carbon v. Trojan Technologies, February 2, 2000, FCA (Rothstein J.A., Robertson J.A., Sharlow J.A.) Summary Judgment/Prior Art/Validity
Appeal of a decision that granted the respondent summary judgment on limited terms in an action for infringement of the respondent's patent. The Motions Judge found that three of the patent's claims were valid and had been infringed. The appellant argues that the Judge erred because there was conflicting evidence relating to infringement and because she made a finding contrary to the evidence with respect to validity.
Held: Appeal allowed in respect of the invalidity finding only. The appellant is trying to rely on a conflict in the evidence of its own witnesses; there was no error in the Judge relying on evidence of some of the appellant's witnesses, which was consistent with the respondent's witnesses on infringement. Regarding invalidity, the Judge erred in finding that none of the prior patents dealt with modularity in the face of uncontested.
(b) Trade Marks
1. Canadian Olympic Association v. Logo-Motifs and Reg. TM, December 2, 1999, FCTD (Reed J.) Opposition Appeal/Official Marks/Section 9 Test
Appeal of decision that rejected the appellant's opposition to Logo-Motifs' registration of a design mark consisting of three human stick figures embracing each other. The Registrar rejected the "first impression and imperfect recollection" test and instead applied the test of whether the applicant's mark is identical to, or almost the same as, the opponent's official marks.
Held: Appeal dismissed. The Registrar clearly applied the wrong test in assessing resemblance for s. 9 purposes. The Federal Court of Appeal in Canadian Olympic Association v. Techniquip (A-226-98, November 10, 1999) held that the appropriate test is the "first impression and imperfect recollection" test. Applying this test, the Court could not conclude that the respondent's mark so nearly resembles the official marks as to be likely to be mistaken for them. This is because 1) the stance of the human figures found in the two parties' marks is quite different; 2) the respondent's stick figures, unlike those in the official marks, have heads that are attached to their bodies, with no separation at the waist; and 3) the arrangement of the respondent's figures gives its mark a three dimensional quality that is quite different from the official marks.
2. Brain Tumor Foundation v. Starlight Foundation, December 7, 1999, FCTD (MacKay J.) Opposition Appeal/Section 56/Additional Evidence
Appeal of a prothonotary's decision that struck out the applicant's affidavit and dismissed the applicant's appeal from the Opposition Board's decision refusing its trade mark application. The applicant did not file any evidence before the Board but did file affidavit evidence in support of its appeal. The applicant argues that its affidavit ought not to have been struck as it is "additional evidence" allowable pursuant to s. 56(5), in that it is evidence additional to that filed before the Board by the respondent.
Held: Appeal dismissed with respect to striking the affidavit but allowed with respect to dismissing the appeal.
The Prothonotary did not err in law in striking the affidavit. When an applicant chooses to not provide any evidence for consideration by the Registrar in an opposition, it runs the risk of an unfavourable decision. That decision may be contested on appeal, but not by relying on evidence that was available and could have been submitted to the Registrar. Additional evidence pursuant to s. 56(5) must be evidence in addition to the evidence adduced before the Registrar by the same party.
The Prothonotary had authority to strike the appeal under his general authority to deal with all motions except those expressly excluded by r. 50(1). However, the Prothonotary erred in law in dismissing the appeal because such appeal is not dependent upon further evidence being adduced at the appeal stage; the applicant's appeal sets forth a number of grounds referring to alleged errors in law, which can be argued independently of further evidence.
3. Cheung Kong v. Living Realty, December 15, 1999, FCTD (Evans J.) Opposition Appeal/Section 30(b)/Expungement of Prior Registration/Confusion/Surrounding Circumstances/Average Consumer/Foreign Language Marks
Appeal of Registrar's decision rejecting an opposition to an application for CHINESE CHARACTERS & Design. The grounds of opposition were: the application did not comply with s. 30(b); the mark was confusing with the opponent's mark CHEUNG KONG which has the same meaning as the applied-for mark and is registered for the same services. The Registrar rejected the s. 30 ground because the opponent did not meet its evidential burden and rejected the s. 12 (1)(d) ground because of the dissimilarity between the marks, based on the conclusion that the average Canadian cannot read Chinese characters.
Held: Appeal allowed. Opposition succeeds on both s. 30(b) and s. 12(1)(d) grounds.
The introduction into evidence of the expungement file with respect to the respondent's earlier registration for the identical mark discharges the opponent's evidential burden with respect to its s. 30(b) ground of opposition, because it supports the inference that use of the mark has not continued without significant interruption since the claimed date of first use. The respondent has failed to meet its evidential burden to show that the mark has been in continuous use.
Whether a mark is likely to cause confusion should be asked, not in the abstract, but in respect of the particular market in which the wares/services are offered. If it can be inferred from the evidence that a significant proportion of the likely consumers of the services are familiar with Chinese characters, then this should be taken into consideration as part of the surrounding circumstances under s. 6(5). The Registrar erred in law in failing to have regard to the number of the applicant's clients who understand Chinese characters and their transliteration. It is possible to infer, from the indirect evidence about the number of Chinese speakers among the applicant's clients, that a significant number might reasonably be expected to associate the two parties' marks, given their equivalent meaning.
4. Mario Valentino v. Valint, December 30, 1999, FCTD (Campbell J.) Opposition Appeal/Section 12(1)(a)/Coexistence Agreement/High End Wares/Designer Trade Marks
Appeal of three opposition decisions wherein the registration of the mark MARIO VALENTINO was refused because it is primarily merely the name of an individual who has died within the preceding thirty years, and it is confusing with the opponent's VALENTINO mark.
Held: Appeals dismissed.
The Registrar did not err in rejecting the notion that the fact that other clothing designers have registered their name creates any assumption that designer's names are somehow registrable as trade marks in and of themselves.
The opponent's main argument with respect to confusion was that the Registrar erred in considering the mind of the average purchaser, rather than the average wealthy person, in view of the high cost of the parties' fashion goods. The argument was that such wares are more likely to be carefully scrutinized by prospective purchasers than would be the case with less expensive goods. The Court found the notion of considering the "class " of the purchaser as an indicator of the care likely to be taken to be repugnant in today's social context and unsupportable by what happens in the real world. Individuals with limited income take great care in deciding upon the purchases that they make and the high degree of competition in supermarkets is proof that people care very much about the price and quality of what they buy at the "low end". The obiter comments in General Motors v. Bellows [1949] S.C.R. 678 and Ciba-Geigy Canada v. Apotex [1992] 3 S.C.R. should not be relied upon as precedent for the argument that "high end" goods are more likely to be carefully scrutinized than less expensive goods.
The fact that the parties entered into an agreement, wherein they agreed not to oppose each other's marks, is not relevant in these proceedings, as the Trade-marks Office is not the forum in which to compel the enforcement of such terms.
5. Proctor & Gamble and Richardson-Vicks v. John Doe et al., January 6, 2000, FCTD (Teitelbaum J.) Anton Piller Order Review
The plaintiffs obtained an ex parte Anton Piller Order in an action for trade mark infringement that alleged that the defendants were manufacturing and selling counterfeit products under the plaintiffs' trade marks. This is the review of the Anton Piller Order with respect to one of the defendants. This same defendant (Usher) has filed a cross-motion arguing that the Anton Piller Order was improperly obtained by intimidating witnesses and using heavy handed and oppressive tactics.
Held: Grant and execution of Anton Piller Order upheld. Cross-motion dismissed. The defendant has not produced any evidence to show that the allegations of fact before the judge who granted the Order were misleading or that full disclosure was not made by counsel. The defendant's argument is based on the assertion by a third party who says that he was threatened by an investigator working on behalf of the plaintiffs but the investigator denies making any such threat. This was an appropriate case for an Anton Piller Order and the Order was properly executed, both sides having solicitors in attendance during its execution. There is no merit to the defendant's Charter argument.
6. Business Depot v. Canadian Office Depot et al., January 7, 2000, FCTD (Dubé J.) Interlocutory Injunction/Delay/Change of Circumstances
Motion by defendants to dissolve an interlocutory injunction based on delay and change of circumstances. The injunction, which issued in 1993, prevents the defendants from using the name "Office Depot" in Ontario.
Held: Motion denied.
Delay: Both parties have, at different times and for their own reasons, not been particularly interested in advancing this case to trial. Where both parties are satisfied over a significant period of time to conduct their businesses within the confines of an existing interlocutory injunction, it does not sit well for one of the parties to suddenly blame the other's procrastination when the injunction no longer suits its purposes. Moreover, the defendants have not been prejudiced by the passage of time because it now pleads that since March 1999 the marks OFFICE DEPOT and BUSINESS DEPOT are no longer confusing.
Change of Circumstances: The burden of proof to dissolve an interlocutory injunction is very heavy and has not been met by the defendants. Since the injunction issued, the defendants claim that the word DEPOT has fallen into common use, the plaintiff has changed its mark throughout most of the country, and the defendant has acquired a reputation with respect to the name OFFICE DEPOT. On the other hand, the plaintiff claims that actual confusion now exists. Survey evidence from both sides is best dealt with in a trial.
7. Thomas & Betts v. Panduit, January 7, 2000, FCA (Décary J.A., Létourneau J.A., Noël J.A.) Appeal/Summary Judgment/Infringement of Unregistered Trade-mark/Trade-mark Rights Regarding Elements Disclosed in an Expired Patent/Functionality/Distinguishing Guise
Appeal of motion granting the respondent summary judgment in an action for infringement of the appellant's unregistered trade-mark consisting of a distinctive oval shape for the head of a cable tie. The appellant was the owner of an expired patent for a novel self-clinching mechanism for a cable tie. The claims of that patent did not claim an oval-shaped head of a cable tie as an innovative feature but there was one written reference in the specification to an oval-shaped head. Summary judgment was granted to the respondent dismissing the trade-mark action because the Motions Judge was of the view that the duty of disclosure imposed by the Patent Act requires the inventor to teach the public how to make the invention; so the patentee could not, after the expiration of the patent, assert any trade-mark rights to prevent the public from making the very same preferred embodiment as that described and depicted in the patent.
Held: Appeal allowed. Action ordered to proceed to trial. The Motions Judge erred in attempting to reconcile the Patent Act and the Trade-marks Act without referring to the Trade-marks Act. There is no authority for the proposition that any element described or depicted in the preferred embodiment, regardless of whether it is claimed or of its importance to the claimed invention, is automatically as a matter of law and without further inquiry disqualified from trade-mark protection. The patentee never had a monopoly over the oval-shaped head and it would therefore be unfair to later prevent it, as a matter of law, from asserting a trade-mark right with respect to the oval-shaped head. The courts use the doctrine of functionality to ensure that the Trade-marks Act is not used to perpetuate an expired patent monopoly. The Motions Judge erred in focussing on the invention under the Patent Act rather than on the wares under the Trade-marks Act. The correct issue was whether the oval-shaped head was a distinguishing guise. When addressed, this issue might lead to the conclusion that the description of the oval-shaped head as a preferred embodiment of the invention was evidence of functionality but any such conclusion would be premature at the summary judgment stage.
8. Vogue Brassiere v. Sim & McBurney and Reg. TM, January 11, 2000, FCTD (Cullen J.) Appeal/Section 45 Proceedings/Sufficiency of Evidence/Use by Whom/Distinctiveness/CA Number
Appeal of Registrar's decision to expunge the appellant's registration for VOGUE DESSOUS for undergarments pursuant to s. 45. The registration was expunged because the wares introduced as evidence bore hang tags referring to Vogue Dessous International Inc. The Registrar concluded that the public would perceive this company as the source of the wares rather than the registered owner. New evidence filed on appeal.
Held: Appeal allowed. Vogue Dessous International Inc. is the wholly owned U.S. subsidiary of the registered trade-mark owner who sells the wares in the U.S. only. The appellant at certain points of time found it more efficient to keep a single inventory of wares bearing the information necessary for both Canadian and U.S. sales. In the new affidavit, some garments were introduced that bore the trade-mark without reference to the U.S. company. This was sufficient evidence that the mark was in use in Canada during the relevant period. Distinctiveness is not an issue in s. 45 proceedings and evidence of a single sale in the normal course of trade is sufficient.
The respondent argued that the CA identification number (which appears on the label in accordance with Canadian law) does not identify the registrant to the consumer of the goods at the time of the transfer of the property or possession of the goods. However, the Court's position was that, "Contrary to the respondent's submission, the CA number on the labels adequately provides the manufacturer's identity." The fact that the name of the registered owner does not appear on the wares is irrelevant.
Half-slips were maintained in the registration (despite the fact that sales of such stopped before the s. 45 notice issued) because there was evidence of such sales during the three year period.
9. Top Star Distribution Group et al. v. Sigma et al., January 13, 2000, FCTD (Lutfy A.C.J.) Anton Piller Order/Failure to Disclose Material Facts
Motions by plaintiffs and defendants for the review and setting aside respectively of an Anton Piller order.
Held: Anton Piller order set aside. The plaintiffs have not met the three-pronged test for the issuance of an Anton Piller order. There is no strong evidence that the plaintiffs own the trade-marks that are the basis of this action. In addition, there is no evidence that the defendants are the type of "fly-by-night" operation suggested by the plaintiffs. The plaintiffs therefore did not satisfy the three-prong test. If they had, the Court would have nevertheless exercised its discretion to set aside the order because the plaintiffs failed to disclose at least five material facts.
10. Imax v. Showmax et al., January 18, 2000, FCTD (Teitelbaum J.) Interlocutory Injunction/Trade-mark Infringement/Survey Evidence
Motion by plaintiff for an interlocutory injunction to prevent the defendants from using SHOWMAX as the name of a large-format motion picture theatre.
Held: Interlocutory injunction granted. There is a serious issue to be tried. The plaintiff is the owner of a family of IMAX trade-marks and has the exclusive right to use these throughout Canada in association with motion picture theatre services. The plaintiff's expert concluded, on the basis of a survey conducted, that confusion was likely between IMAX and SHOWMAX. The defendants' expert disagreed with the method of the plaintiff's survey, the questions asked and the method of choosing participants. However, the defendants' expert did not say whether the results would have been different if the method that he believes should have been adopted to conduct the survey had been followed. The Court was therefore not prepared to set aside the plaintiff's survey evidence. The evidence of confusion is clear and sufficient to support an inference of loss of "name" goodwill and reputation (e.g. the defendants are exhibiting an image of an IMAX theatre in their promotional materials). The Court accepted expert evidence on the issue of irreparable harm, namely that the plaintiff would suffer serious damage to its goodwill if the defendants use SHOWMAX and such damage will be impossible to remedy. (The defendants did not file any evidence to contradict that expert evidence.) The balance of convenience favours the plaintiff as the defendants have not yet begun doing business.
11. Canadian Tire v. Foxco and Reg. TM, January 19, 2000, FCTD (McGillis J.) Opposition Appeal/Subsection 56(5)/Additional Evidence
Motion to strike Foxco's affidavit evidence in the applicant's appeal of its unsuccessful opposition to Foxco's trade-mark application. Foxco filed no evidence before the Trade-marks Opposition Board but both parties filed evidence on appeal.
Held: Motion dismissed. The Federal Court of Appeal considered the meaning of the expression "additional evidence" in ss. 56(5) in Austin Nichols v. Cinnabon (1998), 82 C.P.R. (3d) 513 and concluded that one is entitled to file evidence on appeal regardless of whether one filed any evidence before the Registrar in either s. 45 or opposition proceedings.
12. Canadian Memorial Services v. Personal Alternative Funeral Services et al., January 28, 2000, FCTD (Pelletier J.) Summary Judgment/ Confusion/Estoppel by Acquiescence
Summary judgment application by the defendants in an action where the plaintiff alleges that the defendants' registered mark PERSONAL ALTERNATIVE infringes its SIMPLE ALTERNATIVE marks.
Held: Plaintiff's claims dismissed. Confusion not likely. The word "alternative" is descriptive of funeral services and the marks of both parties are weak marks. It is therefore likely that consumers will distinguish between the marks on the basis of small differences, namely the differences between the initial words. Obiter: If confusion was likely, then the defence of acquiescence would succeed because the plaintiff had knowledge of the alleged infringement and encouraged the defendants in their use of the mark which is now alleged to be infringing.
13. Van Melle Nederland v. Maple Leaf Meats, February 10, 2000, FCTD (Pelletier J.) Opposition Appeal/Confusion/ Deference to Board's Decision
Appeal from decision rejecting the appellant's opposition to an application to register FRUIT-ELLY for puddings, parfaits and gelatin desserts. The opposition was based on s. 12(1)(d) due to confusion with the mark FRUITTELLA registered for confectionery.
Held: Appeal allowed. The decision of the Opposition Board is entitled to some deference to the point where, in the absence of significant new evidence, it ought not to be disturbed unless it is unreasonable or clearly wrong. For example, the appellant argued that the Board erred in finding that FRUIT-ELLY was suggestive of gelatin desserts or jelly since there was no evidence to that effect but, to the extent that this finding reflects the Board's assessment of the effect of the mark upon the public, the Court was not inclined to interfere with it in the absence of evidence showing that it is wrong (e.g. survey evidence). The Board did err in parsing the marks too finely. It found that the resemblance between the marks was due to the word fruit as the first component whereas the resemblance arises because of the word fruit and the syllable 'ell' which follows it. When the marks are taken as a whole, the degree of resemblance is such as to be misleading; but even if the Board erred on this point, it did not come to a conclusion that is clearly wrong. The weight to be given to each s. 6(5) factor is not the same and the weight of a particular factor is a matter within the Board's expertise. The Board based its decision on the differences between the wares and the inherent weakness of both marks. However, the Board erred with respect to the issue of the degree of protection to be given to the opponent's mark because it concluded that the use of the word fruit is entitled to limited protection whereas it should have considered that the applicant's mark incorporates further elements of the opponent's mark and uses a weak distinguishing feature. This is not a matter of weight to be given to a factor but rather of the correct application of a principle.
14. Disney v. Fantasyland Holdings and Reg. TM, February 10, 2000, FCA (Létourneau J.A., Noël J.A., Malone J.A.) Opposition Appeal/Issue Estoppel
Appeal from Trial Division's order dismissing an opposition appeal. The issue before the Trial Division was whether a finding of confusion made by the Court of Queen's Bench of Alberta bound the Opposition Board.
Held: Appeal dismissed. Assuming, without deciding, that res judicata and issue estoppel may apply in an opposition hearing where the basis of the opposition is confusion, the Trial Judge made no error when he concluded that the principle of issue estoppel did not apply in the circumstances of this case. The goods and services in the passing-off action before the Alberta court (amusement park services) were sufficiently different from those at issue in the opposition proceedings (hotel services) so as not to give rise to a determination of the "same question".
(c) Copyright
1. J.L. De Ball Canada v. 421254 Ontario and La Capinera, December 30, 1999, FCTD (Sharlow J.) Copyright Infringement/Author/Nunc Pro Tunc Assignment/Section 34.1(2)(b)(ii)/Insurance Proceeds
Motion by plaintiff for summary judgment seeking, inter alia, a declaration that the defendants have infringed the plaintiff's copyright in a design, which is applied to velvet fabric. Motion by defendants for summary dismissal of the action.
Held: Plaintiff's claim dismissed. Defendants' claim granted. There is no presumption as to the identity of the author and the affidavit of the plaintiff's sales manager stating that the design was an original work created by a named individual does not prove that such person is the author of the work given that the affiant has no personal knowledge of the facts. (No explanation was provided as to why there was not an affidavit from the author herself.) If the identity of the author had been proved, there is still no evidence of assignment of the copyright to the plaintiff. A nunc pro tunc assignment was filed that bears a signature purporting to be that of the author but the Court could not conclude that the assignment was authentic as there is no evidence that this is in fact the signature of the author. In any event, a copyright assignment document can only be the basis of an action for infringement if the infringement occurred after the date of the signing of the document. The presumption in s. 34.1(2)(b)(ii) is not intended to be used to prove ownership by someone who does not have a valid assignment from the author.
Insurance proceeds received by an infringing party for infringing goods that have been stolen should be taken into account in determining the quantum of an accounting, but only to the extent the insurance proceeds exceed the cost of the stolen goods to the infringing party.
2. Milliken v. Interface Flooring Systems (Canada), January 26, 2000, FCA (Rothstein J.A., McDonald J.A., Isaac J.A.) Copyright Infringement/Section 64(1)/Industrial Designs/Adverse Inference/Presumption of Copyright
Appeal of dismissal of copyright infringement claims. The claims were dismissed by the Trial Judge because the work in question was not protected by copyright by reason of s. 64(1) of the Copyright Act. The subject matter in which copyright was claimed was artwork purchased by the appellant at a textiles exhibition and subsequently copied and used by the respondent for a carpet tile product. The appellant ultimately registered the work under the Industrial Design Act.
Held: Appeal dismissed. It was proper for the Trial Judge to have drawn an adverse inference concerning when the design was created based on the fact that the designer did not testify. The presumption that copyright exists in any action for copyright infringement is displaced in these circumstances. The Trial Judge was correct in finding that the artwork was capable of registration under the Industrial Design Act and used as a pattern to be multiplied by an industrial process (the designer displayed her works with the intention of selling them to purchasers who produce textiles, such as carpets by industrial processes). The work was therefore not subject to copyright protection by operation of former s. 64(1) of the Copyright Act that applies to industrial designs created before June 8, 1988. The appellant unsuccessfully argued that the artwork was not a design as of June 8, 1988 because it was not applied to a useful article until 1989. Only the former s. 64(1) is relevant for works created prior to June 8, 1988. Even under the current s. 64, the definition of "design" does not mean that a work only becomes a design once it has been applied to a useful article.
(d) Practice
1. Salton Appliances (1985) Corp. et al. v. Jascor Home Products, January 11, 2000, FCTD (Lemieux, J.) Leave to File Affidavit Evidence after Cross-examinations Have Begun
Motion pursuant to Rule 84(2) for leave to file additional affidavit evidence after opposing party's affiant had been examined on his affidavit in opposition to a request for an interim and interlocutory injunction.
Held: Leave granted because the moving party was faced with a new matter arising during cross examination, which could not have been foreseen with reasonable diligence. Rule 84(2) replaces former Rule 332.1(6). Rule 332.1(6) provided that the Court may grant leave to file an affidavit in a motion after cross-examination where the Court is satisfied the party should be allowed to respond to a matter raised in the cross-examination. Although Rule 84(2) does not contain similar wording, when read against the history of the former Rule, it is designed to deal with matters that arise during cross examination and which must be addressed by further affidavit evidence. Relevancy of the proposed affidavit, absence of prejudice to the opposing party, assistance to the Court and overall interest of justice are other factors to be taken into account in deciding whether leave should be granted. The material in the proposed affidavit must not have been available prior to cross-examination. A further affidavit is not designed to repair answers that cross-examining counsel wishes he did not get.
2. The Registered Public Accountants Association of Alberta v. The Society of Professional Accountants of Canada and the Society of Professional Accountants of Alberta, January 14, 2000, FCTD (MacKay, J.) Extending Time for Service of Statement of Claim
Plaintiff sought order extending time for service of statement of claim, issued on July 2, 1998, upon the Society of Professional Accountants of Canada ("SPAC"). In the alternative, the plaintiff requested an order that service on SPAC be deemed to have been effected in July, 1998.
Held: Leave denied. On a motion for leave to extend time for service, the applicant must demonstrate (i) a continuing intention to pursue the claim; (ii) an arguable case; and (iii) that there is no prejudice to the proposed defendant by granting the extension. Although the applicant made submissions that SPAC induced it to try to resolve matters without further litigation, there was no affidavit evidence of such. The applicant did not demonstrate a continuing intent to pursue the claim, or an arguable case.
The Court also rejected the applicant's argument that service on certain officers of the Society of Professional Accountants of Alberta ("SPAA") in July, 1998 should be deemed to be valid service on SPAC, merely because the officers were also members of SPAC at the time, and because one of the directors of SPAA was also a director of SPAC. The request for an order validating service was denied.
II. OTHER COURT DECISIONS
1. Desmarais v. Éditions Fides, June 8, 1999, CQ (Durand J.) Copyright/Moral Rights/Punitive Damages/Section 10(2) Copyright Act
The plaintiff is the sole heir of Gabrielle Desmarais, renowned artist photographer known by the name Gaby. The plaintiff claimed to be the sole heir of Gaby's copyright in her photographs. The defendant edited a book entitled "Jean-Louis Lévesque". The front cover of the book was a photograph of Jean Louis Lévesque taken by Gaby in February 1961 without credit to Gaby and without the plaintiff's authorization. The book was released on two separate occasions. The first release did not credit Gaby whereas the second release did. The defendant argued that it was unknown to everyone where or who took the photograph prior to the second release.
Held: Action dismissed. Punitive damages not granted due to the good faith of the defendant.
The mere fact that the defendant had ordered and paid for the photograph did not reverse the presumption created by s. 10(2) of the Copyright Act that the owner of the initial negative or plate at the time when that negative or plate was made was the author of the photograph. The order affirms the copyright interest belongs to Gaby. The defendant argued that Mrs. Lévesque had given the photograph to Mr. Jean-Louis Lévesque from the personal collection of his father's photographs. If the s. 10 presumption is not reversed, the photographer remains owner of copyright in the photograph. The plaintiff admits that the photograph of Mr. Lévesque was ordered by Mr. Lévesque himself, thereby owning the negative of the said photograph. The plaintiff also indicated that following several proof shots, Mr. Levésque chose the one he preferred, which was a portrait photograph. He ordered it and paid for it. However, the plaintiff could not establish the price paid or any contract or document establishing a retention of rights for the registration of the copyright.
The defendant argued that according to common law, the photograph belonged to the successors of Mr. Jean-Louis Lévesque. The Court recognized that the photograph is a work as defined in the Copyright Act. An extensive analysis of moral and paternity rights was conducted to conclude that the owner of the copyright owns the economic rights.
The defendant did not deny the fact that the photographer had moral rights in the work. However, the present action was based on the accreditation of the photograph taken by Gaby which was corrected by the second release of the book.
The Court recognized that moral damages concerning the paternity rights are governed by common law. Here, paternity rights in the work belonged to the plaintiff and the copyright interest belonged to the successors of Mr. Lévesque or his Foundation. The photograph of Mr. Lévesque was ordered and chosen by himself and his daughter, who represented the Foundation and subsidized the bibliography of Mr. Lévesque. The restrictions of s. 14.1 on moral rights apply. As soon as the defendant was aware of the paternity right in the photograph, the defendant immediately credited Gaby in the second release of the book. The Court believed the defendant were in good faith and did not act unreasonably. Therefore it was held that Mr. Levesque and his successors were owners of the copyright interest in the photograph and the questions raised concerning moral rights were not answered.
2. Productions Avanti Video v. Favreau et al., August 4, 1999, QCA (Rothman and Gendreau, J.J.) Copyright Infringement/Parody/Fair Use/Substantial Part
Appeal of the judgment of the Superior Court of the District of Montréal that dismissed an action for permanent injunction.
Held: Appeal granted. The respondent has infringed the appellant's copyright. It is an undisputed fact that the television series "La Petit Vie" was a highly original and very well-known situation comedy of Québec television. It is also undisputed that the respondent Daniel Favreau in "La Petit Vite" substantially copied the most original and important elements of "La Petit Vie": the principal characters, their costumes and appearances, and the decor. There was no attempt to disguise the appropriation. The characters and the mise-en-scene would be instantly recognizable to the Québec viewing public. The respondent does not deny his use of these elements or that he intended to copy the characters and situations created by the appellant. The respondent's only defence was that of fair use of the elements for the purpose of parody. The Court of Appeal found that the purpose was not to parody "La Petit Vie" but simply to exploit the popularity of a television series by appropriating its characters, costumes and decor as a mise-en-scene for the respondent's video film. An important fine line is drawn between a parody and appropriation of a dramatic work: parody normally involves the humorous imitation of the work of another writer, often exaggerated for purposes of criticism or comment, but appropriation of the work to exploit its popular success is no more than commercial opportunism. Here, the respondent's appropriation did not constitute parody but was an infringement of the appellant's copyright motivated by commercial opportunism.
What constitutes a substantial part of an infringed work is a question of fact. Quantity matters less than quality. The relative importance and value of the plagiarized elements to the whole work must be taken into account. The qualitative criterion in the notion of substantial part has long been affirmed by courts, more specifically in regards to compilations where it appears that the compiler can claim no copyright unless he or she had a right to use the materials constituting his compilation. Originality of the work is a question of fact and of degree of work, labour and skill involved. The tele-series "La Petit Vie" characterizes daily suburban family situations in absurd humoristic sketches and is the product of several years of intellectual creativity. Favreau did not intend to ridicule the work of Avanti, but to integrate key elements of "La Petite Vie" into his own film and reap off of the commercial success of "La Petite Vie". Therefore, the respondent infringed the rights of the appellant.
3. Association des Journalistes Indépendants du Québec v. CEDROM–SNI et al., October 7, 1999, QSC (Hesler J.) Copyright Infringement/Class Action/Freelance Journalists/Non-disclosure of Names
The applicant had filed a motion seeking authorization to proceed by class action against the respondents for copyright infringement, and seeking a permanent injunction and damages. They now sought a preliminary exception to keep the names of members of the Association of Independent Journalists of Québec (the "Association") confidential until judgment allowing the action to proceed by class action. The respondents argued that the exception would violate the public nature of the justice system. It was the only question the Court was asked to answer.
The applicant claimed that journalists for hire receive compensation for electronic distributions of their work whereas freelance journalists do not. Freelance journalists find their articles reproduced on the Internet via CEDROM-SNI without their authorization and are left without copyright interest in the reproductions. Members of the Association wished to remain anonymous in fear of economic pressure by the respondents to refuse to hire freelance journalists who contest the electronic reproduction.
The respondents argued that if the motion were granted, it would contravene the public character of the justice system. They claimed a right to know their adversaries, and that they could not give a complete defence without such knowledge. According to their interpretation of the Code of Civil Procedure, they had the right to question the members on the merits of their individual personal claims as well as the merits of the collective claim.
Held: Motion for preliminary exception granted. Applicant need not comply with Rule 58(c) of the Rules of Practice of the Superior Court in Civil Matters until such other order. The Superior Court has an inherent jurisdiction to set aside rules of practice when they would render a claim illusory. Such rules of practice are rules of procedure and not of substantive law. A motion seeking authorization to proceed by class action is a mechanism of verifying and filtering frivolous claims. Even if the said motion is granted, the applicant has three months to commence a class action. Until such time, art.1019 of the Code of Civil Procedure prohibits members to be subject to preliminary discoveries and art. 1021 prohibits all discoveries on the facts and the articles.
Once a prima facie membership to a group or to the representative has been demonstrated, according to recent case law, its capacity to properly handle the action and the existence of a sincere and legitimate action are the preponderant criteria for the choice of the representative.
The respondent CEDROM-SNI was in a different position than the other respondents, since it did not use the services of hired or freelance journalists and was ready to agree to a confidentiality agreement of non-disclosure of the names of the members of the Association. However, the Court did not find the disclosure necessary for CEDROM-SNI to contest the motion for authorization to proceed by class action.
4. Polansky Electronics v. AGT et al., November 2, 1999, ACQB (Lefsrud J.) Patents/Infringement/Obviousness/Prior Art/Punitive Damages
Action for infringement of a patent for FACSIMILE MOBILE INTERFACE DEVICE (FMID). One of the major defences raised by the defendants is that the patent should never have been granted because the invention represents a manifestation of prior art.
Held: Judgment against the defendants in the amount of $375,400 ($275,400 for loss profits and $100,000 punitive damages). Injunction issued restraining the Defendants from further infringement activities.
Although the functional components of the FMID were well-known and available at the time of the invention, the invention is the unique combination and application of generic components.
If the combination was obvious, as the defendants argued, then why did the defendants fail to exploit the situation when an obvious need presented itself. The defendants' expert witnesses clearly focused on prior art, rather than giving consideration to its state at the relevant time, with the result that their opinions have been of little or no assistance.
The defendants' product satisfies the claims of the invention except for minor differences and infringes the FMID patent.
The territorial effects of the infringement are, for the most part, restricted to Alberta and did not impact on dealings that the plaintiff had with foreign companies.
As of August 1987, the Defendants had notice of the patent but, despite two cease and desist notices, continued to manufacture and
market offending devices. In order to further bring home to the defendants the message that their infringement activities were, and have been, inexcusable, and to set an example in order to deter others, a suitable punitive damages award is $100,000.
5. W & H Ventures v. Manitoba Lotteries, December 7, 1999, MCQB (MacInnes J.) Trade Marks/Passing Off/Injunction/Crown Immunity/Official Marks
Application for an interlocutory injunction to restrain the defendant from carrying on business under the name Michele's Restaurant. In 1991, the plaintiff was granted the right to use the registered trade mark MICHEL'S BAKERY CAFÉ by the registered owner and the plaintiff subsequently registered the name under The Business Names Registration Act of Manitoba. Since then the plaintiff has operated a restaurant in a mall in Winnipeg under the name. In 1999, the defendant began to carry on a restaurant business under the name Michele's Restaurant in a casino and entertainment complex that it owned and operated in Winnipeg. The defendant says that in some instances it registers the names it uses under The Business Names Registration Act, but in the vast majority of instances chooses not to do so, but instead registers under s. 9 of the Trade-marks Act.
Held: Application dismissed but parties ordered to bear their own costs. The defendant, a Crown agency, is immune from injunction but the application can be dismissed on the basis that the plaintiff has failed to establish a prima facie case. It has not proved the existence of good will or reputation attached to the goods or services of the plaintiff in the mind of the purchasing public by association with the identifying name. Further, the plaintiff's evidence is that, to date at least, no damage has occurred, and the Court was not satisfied that such damage is likely to occur. This is not a case of passing off as the defendant is not in any way attempting to pass off its restaurant or the goods or services provided therein as though it were the restaurant or goods and services provided by or in the plaintiff's restaurant. At most, a member of the public might be confused if she were not attentive to the full name of the plaintiff's restaurant as distinct from that of the defendant, but it would be clear and obvious to anyone who made such a mistake, upon attending the defendant's restaurant, that this was not the restaurant of the plaintiff, nor the goods and services of the plaintiff, or close to them.
Should this case proceed to trial, the plaintiff will then be required to prove the tort of passing off and the question of confusion and the issue of damages will be further canvassed. In anticipation of that perhaps occurring, the Court ordered that the defendant, so long as it continues to operate Michele's Restaurant and until trial or other final disposition of this action, will be required to maintain records, specifically, of all revenue and expenses of the defendant's restaurant, including the names of those people who have been customers at the restaurant and who have paid for the goods and services provided by credit card. This will increase the evidence available at trial to determine whether there has been confusion in the minds of customers.
Obiter: As a matter of law, it appears that the defendant can exercise its rights under s. 9 of the Trade marks Act and upon unilaterally appropriating the mark which includes a business name, can thereafter proceed to use that name despite the registration of what might be described as a similar name under the Business Names Registration Act. While the Court would not describe the defendant's conduct in so doing as immoral, it did say that it found it "passing strange in all of the circumstances". The defendant is an agent of the Provincial Crown and one would think it would be anxious to comply and be seen to comply with its (the Province's) own Business Names Registration Act. In choosing the name Michele's Restaurant, the defendant had no knowledge whatsoever of the existence of Michel's Bakery Café, but it does not seem unreasonable to suggest and expect that when the defendant is about to embark upon a business over which it does not have a monopoly, but rather is incidental and one which any member of the public could undertake, it ought at the very least to comply with its own provincial legislation and submit the name for registration in order to be able to use it.
The Court purposely did not comment upon the question of whether or not the name Michele's Restaurant would be confusing to the public when compared with the name Michel's Bakery Café. The Court stated that it was not necessary to embark upon such a discussion in order to dispose of this application, and it may be that the defendant will hereafter choose to seek registration under the Business Names Registration Act. Should it do so, the Court did not want its views to encumber the decision of the Registrar.
6. Neudorf v. Nettwerk Productions et al., December 10, 1999, BCSC (Cohen J.) Copyright/Joint Authorship/Musical Works/Arrangements
Action for a declaration of co-ownership of copyright in four of the musical works which appear on a Sarah McLachlan album. The plaintiff claims that he co-authored the songs and seeks remedies for breach of copyright arising out of the defendants' use of the songs.
Held: Action dismissed. The test for joint authorship is: (i) Did the plaintiff contribute significant original expression to the songs? If yes, (ii) did each of the plaintiff and McLachlan intend that their contributions be merged into a unitary whole? If yes, (iii) did each of the plaintiff and McLachlan intend the other to be a joint author of the songs? The plaintiff has proven that he made a contribution of original expression to the verse vocal melody in the song "Steaming". However, he has failed to satisfy the test for joint authorship because he did not prove a mutual intent to co-author this song with McLachlan.
The test is not whether the plaintiff came up with the ideas for the songs, but whether he gave the ideas original expression. Even though the contribution of one joint author need not be equal to that of the other, the contribution of each joint author must nevertheless be significant or substantial. A contribution of significant original expression to parts of a musical work, other than just the lyrics, melody or chords, can give rise to a claim of co-ownership of copyright in a musical work.
Both the plaintiff and McLachlan clearly intended that the plaintiff's contribution to the verse vocal melody would be merged into the song. However, there is no evidence to support a conclusion that the plaintiff and McLachlan formed the intent to regard each other as joint authors of "Steaming". It is plain that the plaintiff was not introduced into the project with any intention that the plaintiff would co-author the songs with McLachlan, nor did McLachlan consider herself to be co-writing the songs with the plaintiff. The plaintiff's evidence establishes that he did not regard his role in the project as that of co author of the songs. Moreover, there was no evidence of any conversations between McLachlan and the plaintiff about splitting songwriting credits for the songs. The absence of any such discussion, while not determinative in itself, is, a significant factor tending to show that the plaintiff and McLachlan did not regard each other as joint authors. Accordingly, the plaintiff has not proven on a balance of probabilities, that he and McLachlan shared an intent to co-author the song "Steaming". Therefore, his claim for a declaration of co-ownership of copyright in this song is dismissed.
The issue regarding the remaining songs is whether the type of arrangement contributions described by the parties meets the test for joint authorship. Arrangement of a musical work can attract copyright protection. In one sense, arrangement refers to a new musical work which results from the re arrangement of an existing musical work. In this situation, there can be copyright in the re-arrangement, independent of the existing musical work. In another sense, arrangement refers to a contribution of original expression to a musical work before it is completed, such as the composition of an instrumental accompaniment, or an instrumental passage that links verse and chorus. The plaintiff's contributions to the arrangements of the songs do not fall into either category. None of his arrangement contributions were of musical composition. Rather, they were contributions of suggestions or ideas concerning the length of each part, or its placement within a song and therefore do not meet the test for joint authorship.
7. Lions Gate Enterprises v. Ohana Sushi Japanese Restaurant, December 22, 1999, BCSC (Dillon J.) Passing Off/Injunction/Trade Name
Application for a declaration that the plaintiff has passed off both at common law and as prohibited by section 7(b) of the Trade-marks Act and for a permanent injunction to prevent the defendant from using the name Hana Sushi, Ohana Sushi or any variation thereof. The plaintiff has been using Hana Sushi as the name of its Japanese restaurant. The defendant subsequently opened a Japanese restaurant under the name Hana Sushi and changed its name to Ohana Sushi when the plaintiff complained.
Held: Application granted. The names of the restaurants are strikingly similar and mean the same thing in Japanese. The use of the name Ohana Sushi is confusingly similar to the names used by the plaintiff, Hana Sushi and Hana's Sushi. The two restaurants are located within about 13 blocks of each other and the public confusion caused by the defendant's use of the name has been shown.
8. Apotex v. Novopharm et al., January 18, 2000, MCQB (Monnin J.) Springboard Injunction/Varying Order/Breach of Injunction
Apotex seeks to have a time-limited injunction varied to become a permanent injunction or extended to a later date. In 1993, Apotex obtained an Anton Piller order and a 10-day interim injunction. During the Anton Piller search, a number of key documents were seized from the defendants showing that Novopharm had in its possession documents belonging to Apotex relating to research done by Apotex in the field of a drug known as Lovastatin. The interim injunction prohibited Novopharm from performing any research or other activities relating to the production of the drugs Lovastatin, Cyclosporin A or any drugs derived therefrom. Novopharm was subsequently fined for breaching the injunction. Novopharm's counsel has now advised that that there might have been further irregularities in complying with the terms of the judgment, namely non-disclosure of certain documents.
Held: Injunction extended. Novopharm argued that this non-disclosure was not due to a voluntary concealment, but simply due to inadvertence. The Court was unwilling to accept this as, through its past actions, Novopharm has exhausted all of its credibility and goodwill. Apotex could not have ascertained the facts upon which it now seeks to rely to justify extending the injunction. The injunction granted in this matter was a springboard injunction, and there is no more justification to making that injunction permanent now than there was when it was originally granted. Apotex is entitled to regain and maintain the research advantage that it has again potentially lost because of the actions of Novopharm but it ought not to be provided with an added advantage. A further 12-month extension is appropriate.
III. OPPOSITION BOARD DECISIONS
1. American Optical v. Alcon Pharmaceuticals, January 11, 2000 (Partington) Confusion
Proposed-use application for AZOPT for prescription ophthalmic pharmaceutical products for the treatment of glaucoma. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark AOSEPT registered for cleaning/disinfection solution for contact lenses and kits containing cleaning/disinfection solution, a vial, catalyst and lens holder.
Held: Opposition rejected. Confusion not likely because: the opponent's mark is not inherently strong; the state of the register evidence shows more than 20 relevant trade mark registrations including the element SEPT; the wares differ; and given that the applicant's wares are prescription products, the only overlap in the channels of trade would be limited to ophthalmologists prescribing the applicant's product and distributing the opponent's product.
2. Pharmacia & Upjohn Animal Health v. Fidia, January 11, 2000 (Martin) Confusion/Statement of Wares
Proposed-use application for HYALART for pharmaceutical products, namely hyaluronic acid based formulations for treating osteoarthritis or ostheoarthrosis and inflammatory or traumatic joint diseases. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark HYLARTIL registered for pharmaceutical preparations, namely hyaluronic acid sodium salt.
Held: Application refused because of the resemblance between the wares, trades and marks. Although the opponent's product is used for horses and the applicant's product is used for people, neither statement of wares has any restriction as to the intended patient, and hyaluronic acid sodium salt is frequently used in the treatment of human joint disorders. Similarly, although the parties' actual trades differ, there is no restriction to any specific trade in the statements of wares and the opponent's registration is for all probable trades encompassed by the wares.
3. Andrés Wines v. Compania Cervecerias Unidas, January 31, 2000 (Folz) Confusion/Channels of Trade
Proposed-use application for ANDES for beer, non-alcoholic beverages namely mineral water, fruit juices and soft drinks. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark ANDRÉS Design registered for wines.
Held: Application refused with respect to beer only. The applicant has failed to satisfy its onus given the visual resemblance between the marks and the similarity between the wares and trades of the parties in relation to alcoholic beverages. There would be some overlap in the parties' channels of trade with respect to alcoholic beverages because beer and wine are products of one industry.
4. Edelweiss Food v. World's Finest Chocolate Canada, January 31, 2000 (Folz) Confusion/Independence of Commissioner of Oaths
Proposed-use application for EDELWEISS for chocolates, chocolate candy, and chocolate covered cookies. Opposition based, inter alia, on s. 16 due to confusion with the opponent's mark EDELWEISS previously used for processed meats.
Held: Opposition rejected. Although both parties' wares are food products and there is an overlap in the trades since both could be sold through grocery stores, the wares are intrinsically different and as such would be sold in different sections of a grocery store. In addition, EDELWEISS has been adopted in Canada as an element of a number of corporate/business names, which are involved in trade channels related to the parties' wares. (The opponent argued that the applicant's evidence should be disregarded because the commissioner of oaths with respect to one of the affidavits was himself the affiant with respect to the second affidavit; this does not disqualify the evidence.)
5. Vineland Estates Wine v. Cask Brewing Systems, January 31, 2000 (Partington) Confusion
Proposed-use application for VINELAND for grape juice concentrate for wine. Opposition based, inter alia, on s. 16(3)(b) due to confusion with the opponent's marks VINELAND & Design, VINELAND ESTATES, VINELAND ESTATE WINES and VINELAND ESTATES WINERY previously used for wines, grape juice for wine, and other wares and services.
Held: Opposition rejected because the evidence showed use of VINELAND ESTATES LIMITED and VINELAND ESTATES LIMITED & Design, rather than the pleaded marks.
6. Kessler Marketing Group v. Les Entreprises Mario Ciarla, January 31, 2000 (Partington) Confusion/Channels of Trade
Use-based application for MOTHER GOOSE for draperies, bed linen and table linen. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark MOTHER GOOSE registered for infants' and children's wear.
Held: Application refused with respect to bed linen only. While infants'/children's wear and bed linen differ, the channels of trade associated with each might well overlap in that these wares could be sold in close proximity in stores or in those areas of department stores specializing in the sale of clothing and accessories for infants and young children.
7. Soapberry Shop v. Spenco Medical, January 31, 2000 (Partington) Confusion
Application for Tulip Design for hot and cold therapy devices, bandages, athlete's foot medicine, socks, therapeutic padding and cushions, reusable incontinent drawsheets, skin care pads... Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's design mark registered for skin, hair, body and bath preparations, cosmetics, toiletries and accessories.
Held: Opposition rejected. Although the wares of the parties appear to be somewhat related and the channels of trade could potentially overlap, there is little, if any, similarity between the marks.
8. Loblaws v. Premium Label Foods, January 31, 2000 (Partington) Confusion/Section 50
Proposed-use application for TREASURES OF BOLOGNA for sauces. Opposition based, inter alia, on s. 12(1)(d) and 16 due to confusion with the opponent's mark MEMORIES OF registered and used for, inter alia, sauces and s. 16 due to confusion with various MEMORIES OF marks, such as MEMORIES OF BANGKOK, used for sauces.
Held: Opposition rejected. Confusion between TREASURES OF BOLOGNA and MEMORIES OF is unlikely given that there is little resemblance between the marks.
There is no evidence of use of the mark MEMORIES OF per se as those words are always used with a geographical name in the same size and script.
The opponent's packaging, which reads "prepared for Sunfresh Limited", would lead consumers to assume that the source of the goods is Sunfresh. Although the opponent's affiant asserts that Sunfresh has been licensed by Loblaws and that under the license Loblaws has at least indirect control of the character and quality of the wares sold by Sunfresh in association with the MEMORIES OF ... mark, such assertions are insufficient in view of the clear message conveyed by the product packaging. Rather than merely restating the wording of s. 50(1), the opponent ought to have evidenced facts from which the Registrar could determine the nature and the extent of the direct or indirect control that Loblaws has over the character and quality of the wares provided pursuant to the licence.
There is no mention of there being a licence with respect to MEMORIES OF BANGKOK or any of the other MEMORIES OF marks, and so the use of such marks by Sunfresh does not enure to the benefit of the opponent.
9. Unisys v. Leitch Technology, January 31, 2000 (Partington) Confusion/Pleadings
Proposed-use application for PANEL MAPPER for programmable routing switcher control panels and programmable control panel software editors. PANEL disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the opponent's mark MAPPER registered and used for computers and computer programs.
Held: Opposition rejected. The opponent did not properly plead a s. 12(1)(d) ground and failed to establish prior use of its mark.
10. 607280 Ontario v. Labatt Brewing, January 31, 2000 (Partington) Confusion/Section 50
Proposed-use application for NORTH 49 for alcoholic brewery beverages, handbags and cooler bags, playing card, pens, signs, ornamental pins, sunglasses, umbrellas Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark NORTH 44o registered for clothing, fragrances and soaps.
Held: Opposition rejected. The opponent's submission that the applicant's handbags, ornamental pins, umbrellas and sunglasses are related to the opponent's wares was rejected. There does not appear to be any overlap in the parties' respective channels of trade. Twenty relevant trade mark registrations including the word NORTH support a conclusion that some of these were in use as of the material dates.
11. Au Petit Goret (1979) v. Courtex Courtier en Alimentation, January 31, 2000 (Herzig) Confusion/Bilingual Person
Proposed-use application for P'TIT GOURMET for pâtés. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark PETIT GORET & Design registered for smoked ham.
Held: Opposition rejected. To the average bilingual person, the opponent's mark is highly suggestive, if not descriptive, of the opponent's wares because "goret" is the French word for "piglet". The applicant's mark also only possesses a fairly low degree of inherent distinctiveness as it suggests that the applicant's products are suitable for those with refined tastes. The different ideas suggested by the marks to the bilingual person, as well as the aural and visual differences between the marks, do not permit any conclusion but that the marks are not confusing.
12. Now Communications v. South Western Ontario Broadcasting, January 31, 2000 (Partington) Confusion/Section 4(1)
Proposed-use application for NEWS NOW for videotape recordings, cassettes and films of television programs, educational and entertainment services. NEWS disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark NOW registered for newspapers, periodical publications, magazines and publication of newspapers...
Held: Opposition rejected. While the wares and services of both parties are directed to the dissemination of news and information, the media through which the information is transmitted by the parties to their respective clientele are quite distinct. Thus the channels of trade are quite different even though the opponent's magazine includes news articles and the applicant advertises its services in printed publications. The fact that the opponent distributes its NOW publication for free does not prohibit it from being trade mark use within the scope of s. 4(1).
13. Premiere Vision v. Haggar Clothing, February 2, 2000 (Martin) Confusion
Application based on use and registration abroad for EZ'S BY HAGGAR for clothing. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark E.Z. SPIRIT registered for sportswear.
Held: Opposition rejected. Confusion not likely because: there is not a high degree of resemblance between the marks; state of the register evidence revealed more than two dozen clothing marks which incorporate EZ or EASY; there is no evidence of actual confusion despite fairly extensive contemporaneous use of the two marks.
14. Ralston Purina v. Effem Foods, February 24, 2000 (Herzig) Ordinary Commercial Terms/Descriptiveness
Proposed-use application for PERFECT BALANCE for pet food and advertising, marketing and promotional services relating to the pet food of the applicant. Opposition based, inter alia, on s. 30(a) because the services are not stated in ordinary commercial terms and s. 12(1)(b).
Held: Application refused. The s. 30(a) ground succeeded because the applicant's services are entirely self-serving. The s. 12(1)(b) ground succeeded because, on a balance of probabilities, purchasers of pet food would understand the term PERFECT BALANCE as a laudatory phrase descriptive of the wares' over-all nutritional content.
15. Spacemaker v. Newell Operating, February 25, 2000 (Martin) Confusion
Applications based on use and use and registration abroad for SPACE MAKER for school boxes, namely lunch boxes and boxes to contain school supplies, and plastic boxes, namely boxes to contain office and business supplies. Oppositions based, inter alia, on s. 12(1)(d) due to confusion with the mark SPACEMAKER registered for pre-fabricated sheds and shelving.
Held: Oppositions rejected. Confusion not likely because of the inherent weakness of the marks, the differences between the wares and trades of the parties, the evidence of third party uses of the same mark, and the absence of any evidence of actual confusion.
16. Fashion Box v. Alan Maleh, February 29, 2000 (Folz) Confusion
Proposed-use application for WEEPLAY KIDS for clothing, footwear and headwear. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark REPLAY registered for clothing and accessories.
Held: Application refused. Even though the legal burden is on the applicant, it chose to take no active steps beyond the filing of its counter statement. As a result, and having regard to the resemblance of the marks as applied to similar wares travelling through similar channels of trade, the applicant failed to meet its legal burden.
17. Austin Nichols v. Cinnabon, February 29, 2000 (Folz) Amendment of Mark/Section 30(h)
Application based on use and registration abroad for PEAK SEASON FRUIT FRESHLY SQUEEZED VAREVA JUICE & Design for fruit drinks and juices. Opposition based, inter alia, on s. 30(h) because the drawings provided by the applicant in support of its application were different from the mark as originally filed.
Held: Opposition rejected. The applicant successfully requested an amendment of its mark during prosecution and new drawings were submitted at that time. The amendment changed the words in the top left corner of the mark but the new wording was placed in the same type, style and location as the original wording and the predominant portion of the mark remained the same. The Board Member was therefore satisfied that the drawings provided by the applicant are accurate and adequate representations of the mark applied for.
18. Anheuser-Busch v. Molson Breweries, February 29, 2000 (Folz) Descriptiveness/Re examination
Proposed-use application for GRAVITY BEER for beer. Opposition based, inter alia, on s. 12(1)(b).
Held: Opposition rejected. Although the adjective "gravity", when applied to the word "beer", may suggest that the quality of the beer is somehow determined by its density or alcoholic strength, the term GRAVITY BEER is not clearly descriptive of an intrinsic character or quality of beer. The ordinary dealer or user of beer in Canada would not, as a matter of first impression, conclude that GRAVITY BEER describes a beer of a certain standard or quality. (This might not have been the case if a word such as "low" preceded GRAVITY BEER.)
At cross-examinations, the only questions acceptable on re-direct are those in the nature of reply or clarification.
IV. SECTION 45 DECISIONS
1. MacRae & Co. v. Rossan Laboratories, January 6, 2000 (Savard) Normal Course of Trade/Sufficiency of Evidence/Sales into Canada from U.S.
THERA PREP registered for amphoteric antiseptic preparation for skin and scalp.
Held: Registration maintained. The registrant sells the THERA PREP product in the U.S. It does not advertise the product in Canada but Canadians are exposed to its advertising when they travel in the U.S. and some Canadians place orders by phone from Canada, with such orders being filled by shipment through the mail. An invoice for one representative sale to Canada was provided. The requesting party argued that a single sale is not sufficient to establish use of the mark in the normal course of trade but the Hearing Officer held otherwise, because the registrant's normal course of trade is to sell wares to Canadian customers who first purchased such wares in the U.S. and then placed subsequent telephone orders from Canada. The showing of use in Canada can be satisfied by a usage that falls short of marketing in a serious commercial manner provided the use is in the normal course of trade. It would have been preferable for more than one invoice to have been provided but the single invoice, combined with the information provided in the affidavit, is sufficient to show use, albeit barely.
2. Blaney, McMurtry v. Spectra Computer, January 25, 2000 (Savard) Deviation From Registered Mark
PROPERTY MASTER & Design registered for software package for property management.
Held: Registration maintained. Although the mark as used does not contain the design features of the registered mark, the design features are not dominant elements of the registered mark. (The mark was registered in bold script with a line above each word, but used in plain script without lines.) The fact that the registrant's name does not appear on the label is irrelevant and does not mean that the registrant has failed to show use by the registrant (the registrant is the entity listed as granting the right to use the software in the license agreements).
3. Schweizerische Eidgenossenschaft Ptt-Betriebe v. Peter F. McGaw, January 31, 2000 (Savard) Use of Composite Mark/Use of Mark on Computer Screen
CAP registered for computer programmes and instructional matter.
Held: Registration expunged. The mark CAP is typically displayed beside the company's trade name NETRON, as follows: NETRON CAP or NETRON/CAP. This is use of a composite mark, not use of CAP per se. The fact that NETRON is the main component in the name of the registrant's licensee, or that it is also a registered trade mark, does not assist the registrant - the public is likely to view NETRON/CAP or NETRON CAP as one mark. The fact that CAP per se may appear on the computer screen when accessing the registrant's program does not mean that customers would have been aware of the mark at the time of transfer of the wares as there is no evidence that the program was demonstrated to customers prior to them purchasing the product.
4. Unilever Canada v. Gamble Foods, January 31, 2000 (Savard) Section 4(3)/Commercial Transaction/Normal Course of Trade
SUNTEA registered for hot and cold tea mixes, tea flavored candies, chocolate bars and chewing gum.
Held: Registration expunged. The registrant did not claim to be using the mark for anything other than hot and cold tea mixes. Although the registrant's affiant clearly stated that it was selling and exporting such goods in packaging bearing the mark, such statements were not substantiated by the exhibits. The one invoice of a sale in Canada was for an amount less than the delivery charges, raising the question of whether the document represents a sale in the normal course of trade. The document filed to support the claim of export of the trade marked goods related to the warehousing of the wares in the U.S. by an affiliate of the registrant. Such document is not evidence that the wares were exported during the relevant period and the notation "recurring storage" on the document raises the question of when the wares were actually exported. Furthermore, it is unclear whether such wares were exported in a commercial manner.
5. Mitchell Gattuso v. Olivieri Foods, February 10, 2000 (Savard) Sufficiency of Evidence
PASTA BELLA registered for a variety of Italian-style food products and the operation of a store dealing in food products and in instruction of others in the operation of stores selling food products.
Held: Registration restricted. The registrant purchased the mark just over a year before the s. 45 notice issued. At the date of the notice, the registrant had decided to launch the mark in connection with certain pasta products and orders had been received for same. However the labels were not produced until after the date of the s. 45 notice and all invoices post-dated the notice. The registrant's predecessor used the mark for the operation of a store dealing in food products and with various food products (including those presently sold by the registrant) up until the date of the sale of the mark, which falls within the three year relevant period. Registration maintained for the wares and services with which the prior owner had used the mark. (Issue as to whether current owner's activities justified maintaining the registration did not have to be addressed.) The fact that the prior owner may have franchised the mark for use in association with the operation of a store dealing in food products does not mean that it was using the mark for "instruction of others in the operation of a store selling food products". Those services were deleted.
