Recent Decisions August 2001
I. FEDERAL COURT DECISIONS
(a) Patents
1. Warner-Lambert v. The Minister of Health, May 24, 2001 FCTD (Pinard J.) Judicial Review/Patent Register/Patented Medicines (Notice of Compliance) Regulations
Application for judicial review in respect of a decision of the Minister of Health. Warner-Lambert submitted a patent list along with a supplemental new drug submission for quinapril hydrochloride, a medicine used in the treatment of hypertension. The Minister refused to add the patent list to the patent register maintained under the NOC Regulations, and decided to remove previously listed patents from the register.
Held: Application dismissed. It was correct for the Minister to conclude that the Warner-Lambert patents were ineligible for inclusion on the register. The language of s. 4 of the NOC Regulations is clear: for a patent set out on a patent list to be eligible for inclusion on the register, it must be relevant to a drug for which a submission for an NOC has been filed. The patented pharmaceutical compositions had never been the subject of an NOC. Furthermore, the drug products for which the Minister had issued NOCs did not contain certain ingredients found in the patented pharmaceutical compositions. Therefore the patents in question were not relevant to those drug products.
2. AB Hassle et al. v. Apotex and The Minister of Health, May 25, 2001 FCTD (Blais J.) Appeal from Decision of Prothonotary/ Motion to Dismiss Application for Prohibition as Abuse of Process /Patented Medicines (Notice of Compliance) Regulations
Motion to set aside an order of the Prothonotary. AB Hassle commenced an application to prohibit the Minister from issuing an NOC to Apotex in respect of omeprazole tablets. The Prothonotary dismissed AB Hassle’s motion for re-attendance of two Apotex affiants, and granted Apotex’ motion to dismiss AB Hassle’s application as frivolous, vexatious and an abuse of process.
Held: Motion granted. A proceeding should not be summarily dismissed unless it is without doubt or obvious that the application is so clearly futile that there is not the slightest chance of succeeding. As well, construction of a patent is always engaged by an assertion of non-infringement in any proceeding. The Prothonotary erred in construing the patents in the absence of expert evidence. The question as to the proper construction of the patents, and whether the Apotex tablets will avoid infringement of the patents, should be left to the trial judge hearing the case on the merits. The decision of the Prothonotary dismissing the application was set aside, one Apotex affiant was ordered to re-attend to answer questions, and an extension of time was granted to AB Hassle to bring a motion for production.
3. Merck v. The Minister of Health and Alcon Canada, June 6, 2001 FCA (Stone J.A., Rothstein J.A., Sexton J.A.) Appeal/ Prohibition/Admissibility of Additional Evidence/ Patented Medicines (Notice of Compliance) Regulations
Appeal by Merck of an order dismissing an application to prohibit the Minister of Health from issuing an NOC to Alcon for timolol maleate ophthalmic solution. Merck argued that the notice of allegation was insufficient, and that the motions judge erred in allowing Alcon to rely on new evidence not in the detailed statement of facts. Alcon had submitted an expert affidavit and argued that its composition did not infringe the Merck patent because it contained xanthum gum, a substance known in the prior art.
Held: Appeal dismissed. The motions judge did not err in upholding the sufficiency of the notice of allegation. Further, while Alcon could not rely on facts exceeding those laid out in its detailed statement, it could rely on additional, detailed evidence to support its broad allegation of non-infringement. It was permissible for Alcon to submit expert evidence concerning an admission made by Merck in the description of a corresponding foreign patent application - that xanthum gum was not suitable for use in Merck’s solutions. The expert evidence merely supported the broad allegations in Alcon’s detailed statement of facts.
4. Highline Manufacturing v. Convey-All Industries et al., June 14, 2001, FCTD (Pelletier J.) Summary Judgment/Patent Infringement/Expert Evidence
Cross-motions for summary judgment.
Held: Motions dismissed. The plaintiff asked the Court to rely upon the conclusion expressed in an affidavit by an expert, but the conclusion is insufficient since the expert did not provide the foundation for his conclusion. The defendant asked the Court to draw conclusions solely from drawings of the two devices. While the Court agreed that expert evidence is not necessarily required to draw conclusions from the drawings, expert evidence is required to tie the drawings to the device and the device to the claims.
5. Visx v. Nidek et al., June 28, 2001, FCA (Linden J.A., Isaac J.A., Noël J.A.) Appeal/Patent Infringement/Construction of Claims
Appeal and cross-appeal of a decision that held that the appellant's patents were valid but had not been infringed by the respondents.
Held: Appeal and cross-appeal dismissed. The trial judge properly concluded that the patents were valid and did not err in the construction and application of the claims. To construe the claims as suggested by the appellant would not be consistent with the wording of the claims as a whole. A fair reading of the trial judge's reasons as a whole indicates that the judge did not interpret certain phrases in the way objected to by the appellant.
(b) Trade Marks
1. Société des Loteries du Québec v. Club Lotto International C.L.I., January 25, 2001, FCTD (Blais J.) Permanent Injunction/Official Marks/Section 9/Section 7/ Copyright Infringement
Action for a permanent injunction to restrain the defendant from using the plaintiff's official marks LOTTO 6/49, 6/49 and 6-49 and from infringing its copyright in its LOTTO 6/49 lottery tickets and its documentary material. The defendant buys the plaintiff's lottery tickets and holds them in trust for the members of its groups. In its ads, the defendant reproduces a substantial portion of a LOTTO 6/49 ticket, which it refers to as Canadian 6/49 in order to distinguish it from 6/49 lotteries elsewhere in the world. The defendant also reproduces a substantial portion of the content of the plaintiff's group agreements.
Held: Injunction granted. The defendant has infringed the plaintiff's copyright. In addition, the defendant has used the plaintiff's official marks as trade marks in connection with its business and therefore has adopted them contrary to s. 9. However, the defendant's activities do not constitute unfair competition contrary to s. 7 and it would be going too far to say that the defendant made misleading representations when it suggested to customers that they had a better chance of winning by following the defendant's statistical analysis.
2. Anheuser-Busch v. Moosehead Breweries, May 15, 2001, FCTD (Nadon J.) Opposition Appeal/Standard of Review/ Reasonableness
Appeal from Registrar's decision that dismissed the applicant's opposition to an application to register the trade mark A & Moosehead Design.
Held: Appeal dismissed because the appellant has not established that the Registrar's decision was unreasonable. The Registrar applied the proper test regarding the issue of confusion and the weight that he attributed to each factor was not unreasonable. The additional evidence filed before the Court was insufficient to raise the standard of review to correctness (the evidence being merely repetitive of evidence that was before the Registrar).
3. ARXX Building Products v. Polyform Cellular Plastics et al., May 17, 2001, FCTD (Pelletier J.) Interim Injunction/Irreparable Harm/Costs
Motion for an interim injunction to enjoin the respondents from infringing the applicant's trade marks. This motion arises after the settlement of a prior application for the same relief involving essentially the same parties save for two additional parties. The settlement provided that the respondents would cease certain infringing use and that the courts of Ontario would have jurisdiction over the agreement. Subsequent to the agreement, further unauthorized use of the applicant's marks occurred but the respondents now undertake again to cease use of the words objected to.
Held: Motion dismissed. The respondents have put into issue the applicant's title to the marks, based on abandonment or lack of use. It is not appropriate to decide issues of ownership and validity on an interlocutory motion. There is also some authority that an injunction should not be granted where the respondent is able to pay any damages that might be assessed. Infringement of a contested trade mark does not constitute irreparable harm.
Costs awarded to the applicant in any event of the cause from the original defendants; the agreement was crystal clear and therefore the applicant was justified in bringing this application.
4. Stink v. Salt & Pepper, May 18, 2001, FCTD (Lemieux J.) Opposition Appeal/ Distinctiveness/Reasonableness Standard of Review
Appeal from Registrar's decision that dismissed the applicant's opposition to an application to register the trade mark THE STINKING ROSE. In particular, the appellant's position was that the respondent's mark is not distinctive due to the reputation in Canada of the appellant with respect to the identical mark, which it used in the U.S.
Held: Appeal dismissed. The Registrar's finding of lack of distinctiveness is a finding of fact, which was not unreasonable, as it was not clearly wrong.
5. Compulife Software v. Compuoffice Software, May 31, 2001, FCTD (Muldoon J.) Section 57 Expungement
Application to expunge trade mark registrations for COMPUOFFICE and ACROSS THE BOARD. The applicant claims that COMPUOFFICE is confusing with its previously registered trade mark COMPULIFE. It also claims that ACROSS THE BOARD is clearly descriptive and confusing with the same mark that it previously used.
Held: Application dismissed. Although both COMPUOFFICE and COMPULIFE are used in association with software, the nature of each software differs (insurance quotation v. office management) and the products are marketed differently (by subscription to insurance companies v. on a one time basis for customized use by any company). Although the nature of the parties' trades overlap, the softwares are sufficiently different to make confusion about the source unlikely. The common portion of the marks is used in thousands of other trade marks. The marks have coexisted without confusion for 8 years.
ACROSS THE BOARD does not describe the material composition, or an intrinsic quality, of the software. The use of ACROSS THE BOARD by the applicant was not as a trade mark.
6. Andrés Wine v. Vina Concha Y Toro, June 1, 2001, FCTD (Dubé J.) Section 57 Expungement
Application to expunge the trade mark registration for TRIO because it is confusing with the previously registered mark TRIUS. Both marks are for use in association with wine.
Held: Application dismissed. Confusion unlikely. TRIUS wine is an Ontario wine while TRIO wine is Chilean; a prime consideration of wine consumers is the region from which it originates. The Canadian domestic wine industry and the import wine industry operate under two separate regimes with little intermingling. The degree of resemblance between the marks is minimal. Although the distinctiveness of the marks and the length of time they have been used favours TRIUS, the nature of the wares and the nature of the trade strongly favour TRIO.
7. Viewpoint International v. On Par Enterprises, June 8, 2001, FCTD (Lemieux J.) Interlocutory Injunction/Serious Issue/ Irreparable Harm
Application for an interlocutory injunction to restrain the respondent from infringing the applicant's TOMMY BAHAMA trade mark, which is registered in Canada for clothing but is used in the U.S. for both clothing and restaurants. The respondent has opened a restaurant called TOMMY BAHAMAS GRILL.
Held: Application dismissed. The lower threshold should apply with respect to the serious issue question, i.e. whether the applicant's case is arguable. There is evidence of actual confusion but irreparable harm has not been shown. There is no evidence of any lost sale of clothing or of a restaurant client. The affiants who drew linkages between the applicant's clothing and the respondent's restaurant did not say they would stop purchasing the applicant's products. There is also no evidence of a detrimental impact arising from the loss of exclusivity; in fact, the applicant is expanding its clothing distribution to the geographical area where the respondent's restaurant is located. Overall there is no evidence of the weakening of the reputation in the applicant's trade mark.
8. Novopharm v. Astrazeneca and Reg. TMs, June 12, 2001, FCTD (Dawson J.) Opposition Appeal/Reasonableness/Trade Mark Drawings/Colour/Registrar's Expertise/ Section 38(3)(a)/Sufficiency of Opposition Pleadings
Appeal from Registrar's decisions that rejected the appellant's opposition to the registration of the trade marks Tablet Design (red-brown) and Pink Tablet Design. The oppositions were rejected because: some of the opponent's pleadings contravened s. 38(3)(a); the drawing, together with the written description and the specimens on file, adequately described the mark; and because the distinctiveness ground of opposition did not provide sufficient detail so as to enable the respondent to respond to it.
Held: Appeals dismissed. The new evidence filed on appeal (evidence as to sales of other tablets having similar shapes and colours) would not have affected the Registrar's findings of fact or his discretion, given that the distinctiveness ground failed for lack of pleading particulars. Therefore the standard of review is reasonableness. Issues of the adequacy of a statement of opposition are within the expertise of the Registrar, as are the interpretation of the drawing and verbal description of a trade mark.
Even if the respondent understood what was at issue in each of the grounds of opposition, the Registrar's decision to require compliance with the statute was not clearly wrong. The respondent need not have pleaded non-compliance with s. 38(3)(a) in its counter-statement in order for the Registrar to reject the ground on that basis.
Given that the verbal description and the drawings were neither inconsistent nor inaccurate, the Registrar did not err by referencing the specimens.
The colour chart in s. 28(2) of the Regulations does not include the dense patterns of dots used in the respondent's trade mark drawings. Because the dots have no meaning, the actual colour of the tablets is clear from the written descriptions.
The distinctiveness ground of opposition stated that similarly coloured tablets were common to the trade so that the respondent's wares could not be distinguished from others, inter alia, the tablets of three listed companies. The Registrar was not clearly wrong in rejecting this ground on the basis that the respondent could not respond without particulars of the shape and specific drugs referred to. The opponent's listing was not exhaustive and did not indicate any specific product relied upon or any of the circumstances relevant to when, where, or in what quantities the tablets were used.
9. Top Notch Construction v. Top-Notch Oilfield Services, June 12, 2001, FCTD (O'Keefe J.) Trade Mark Infringement/ Confusion/Pleading Passing Off/Section 7(b)/ Section 22/Depreciation of Goodwill
Action for, inter alia, trade mark infringement, including a claim for an injunction to restrain the defendant from infringing the trade mark TOP NOTCH CONSTRUCTION LTD. CALGARY & Design registered for construction services. The defendant uses the trade name TOP-NOTCH OILFIELD SERVICES LTD. for its business of providing pipelining, maintenance, insulation, hotshot service and surface abandonments in connection with oil fields. Five percent of the plaintiff's work is in the oil field industry.
Held: Action dismissed because confusion is not likely. Neither trade mark is inherently distinctive, TOP NOTCH being descriptive. Although the plaintiff's business has been successful and it has advertised extensively that does not establish that its trade mark has acquired distinctiveness, i.e. that its mark has become known to consumers as originating from one particular source. The Court concluded that generally speaking the services provided by the plaintiff and the defendant appear to be different. The natures of the parties' trades is largely different; the plaintiff is primarily in the earth moving trade whereas the defendant's business deals with maintenance services to the oil field industry. The ideas suggested by the two marks differ in that the crawler dozer's track in the design portion of the plaintiff's mark suggests a road building or earth moving business whereas the defendant's name suggests a company that provides services to oil fields. It is unlikely that anyone would conclude form the defendant's name that it would be in the earth moving business.
The plaintiff pleaded passing off but the Court concluded that it was pleading the common law tort of passing off, not that pursuant to s. 7(b), because there was no reference to s. 7(b) and the wording of the claim did not refer to all of the elements of s. 7(b), for example there was no mention of the timing element of s. 7(b). The Federal Court does not have jurisdiction with respect to the common law action of passing off. In any event, the plaintiff would not have succeeded under s. 7(b) because there is no likelihood of confusion.
A s. 22 (1) claim also failed but the Court held that the question of whether the defendant had any judgments registered against it was relevant in that it could have related to the depreciation of goodwill.
10. Government of the Northwest Territories v. Sirius Diamonds, June 26, 2001, FCTD (Hansen J.) Interlocutory Injunction/Irreparable Harm/Official Marks/ Copyright Infringement/Woods Exception
Motion for an interlocutory injunction to restrain the respondent from using a Polar Bear Design mark. The applicant claims copyright in various Polar Bear Design marks, which are used as both trade marks and official marks in association with a variety of wares and services including ventures into the diamond industry and a certification program in which it attests to the origin and quality of diamonds mined and manufactured in the Northwest Territories. The respondent uses a Polar Bear Design in association with its business of cutting, polishing and marketing diamonds and it negotiated with the applicant about participating in its certification program.
Held: Motion dismissed because the plaintiff failed to establish irreparable harm. There is no evidence that the determination of this motion will have the practical effect of deciding the main action or cause either party to go out of business and so the Woods exception does not apply. With respect to the copyright and trade mark claims, there is no basis for dispensing with the requirement that the applicant establish irreparable harm. The only official mark that predates the respondent's adoption of its mark is NORTHWEST TERRITORIES & Polar Bear Design. The respondent's mark does not consist of or so nearly resemble that official mark that a person would likely be deceived, confused or mistaken and so the applicant has not made out a prima facie case under s. 9. Although there is case law that proposes that an applicant need establish neither irreparable harm nor the balance of convenience in order to obtain an interlocutory injunction in respect of official marks, the Court saw no reason to depart from the RJR-Macdonald tripartite test in the present case. The applicant's evidence with respect to irreparable harm amounts to bald assertions unsupported by clear evidence of irreparable harm. While the Court agreed that potential harm to the Northwest Territories' emerging diamond industry is irreparable in nature, it was not satisfied that such harm would occur if the requested injunction was not granted. There is no direct evidence that consumer confusion would inevitably compromise the applicant's certification program or the Northwest Territories' diamond industry. The applicant also claimed that irreparable harm would occur with respect to its goodwill. Loss of credibility may amount to irreparable harm, but there is no clear, independent evidence that the plaintiff has lost credibility. The balance of convenience favours the plaintiff since there is a significant public interest in the general success of its diamond industry.
(c) Copyright
Gregory H. Guillot v. Istek and Arvic Search Services, July 17, 2001, FCTD (Hugessen J.) Summary Judgment/Copyright Infringement/ Compilations/Internet Sites
Motion for summary judgment by the plaintiff. Both parties have created Internet sites and the plaintiff claims that the defendant has infringed its copyright by inviting visitors to its site to obtain unauthorised copies of articles written by the plaintiff and by reproducing on its site substantial parts of the plaintiff's compilation of links to other sites.
Held: Motion dismissed. There is contradictory evidence concerning consent having been given re the compilation; that issue would therefore have to be decided by assessing the credibility of the witnesses. Also, the present evidence makes it impossible to assess whether the copied parts are qualitatively substantial, bearing in mind that any compilation of publicly available information is bound to include a high degree of identity with any other compilation of the same materials. Regarding the articles, the parties agree there is an implied license to reproduce or copy any document published digitally on the Internet to the extent necessary to take communication and make personal use of the document, and there is no evidence that the defendants did anything more than that.
The Court criticized the parties for failing to provide any expert evidence, saying that "[s]ince copyright is itself a statutory (and highly technical) right, it is only appropriate that where technical and non-traditional forms of creation, production, copying or reproduction are in issue, the Court should receive proper technical guidance."
II. OPPOSITION BOARD DECISIONS
1. Unilever v. SFS-Spirituosen, February 28, 2001 (Folz) Confusion/State of the Register Evidence
Application for FABERGE based on proposed use and use and registration abroad for spirits, liqueurs, wines and sparkling wines. Opposition based, inter alia, on s. 16(2)(a) due to confusion with various FABERGE marks previously used by the opponent for, inter alia, personal care products, jewelry and stemware for use in drinking wine and champagne.
Held: Application refused. The Registrar was left in a state of doubt as to the likelihood of confusion in view of the potential overlap in the parties' channels of trade with respect to the applicant's wares and the opponent's stemware, the fact that the parties' marks are identical, and the significant reputation of the opponent's marks in respect of other wares. The Registrar had doubts as to the admissibility of the applicant's CD-Namesearch state of the register search; in any event, the fact that a number of pairs of identical marks co-exist for different wares does not support the argument that the marks in issue can co-exist, in part in view of the evidence that wine glasses are available for sale in liquor stores.
2. Del-Rain v. Pelonis USA, March 2, 2001 (Herzig) Confusion/Propriety of Cross-examination
Use-based application for PELONIS for portable electric heaters for domestic use. Opposition based, inter alia, on s. 16(1)(a) due to confusion with the mark PELONIS previously used by the opponent for portable electric heaters.
Held: Opposition rejected. The opponent failed to meet its evidential burden; there is no evidence of even a single sale of PELONIS heaters in Canada in the normal course of trade and no explanation has been given as to why the opponent recently filed a proposed use application for PELONIS. The opponent took the position that it was prejudiced in the cross-examination of its affiant because two individuals conducted the cross-examination on behalf of the applicant, one of whom was neither the applicant's agent of record nor a registered trade-mark agent. The Registrar saw nothing prejudicial in the manner in which the cross-examination was conducted and was satisfied that it was conducted by one individual, who was a registered trade mark agent at the time, with the second individual only intervening several times for the purpose of clarification.
3. La Senza v. Apparel Ventures, May 3, 2001 (Partington) Confusion/Foreign Co-existence
Proposed-use application for SESSA! for ladies' swimwear and sportswear. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark LA SENZA previously registered for ladies' wearing apparel and the operation of retail outlets.
Held: Opposition rejected due to the small similarity between the marks and notwithstanding the overlap in the wares and channels of trade and the reputation of the opponent's marks. A copy of a U.S. file history introduced by the applicant was hearsay evidence; in any event, evidence of co-existence on foreign trade mark registers is to be accorded little weight.
4. R. Griggs v. Bata Industries, May 3, 2001 (Herzig) Section 30/Confusion
Proposed use application for AIR SUPPLY for all types of footwear namely, boots, shoes and slippers. Opposition based, inter alia, on s. 30 because the applicant never intended to use the mark and on s. 16 due to confusion with a previously filed application for AIRWAIR for luggage, clothing and footwear.
Held: Application refused with respect to boots and slippers because cross-examination of the applicant's affiant made it clear that the applicant never intended to use the mark in association with boots and slippers. Opposition rejected with respect to remaining wares. Confusion not likely because there is no evidence of the opponent's mark having acquired any reputation, the distinctiveness of the opponent's mark is questionable in view of a third party's use of that mark, and the differences between the marks outweigh their similarities.
5. Bacardi v. Havana Club Holding, May 3, 2001 (Herzig) Expropriation of a Trade Mark Through Nationalization/ Jurisdiction/ Section 57
Use-based application for HAVANA CLUB Design for rum. Opposition based, inter alia, on s. 30 because the applicant could not have been satisfied that it was entitled to use the mark in Canada given that an associated Canadian trade mark registration was recorded in its name pursuant to a Cuban law that expropriated the mark from its original owner without compensation.
Held: Opposition rejected. The Registrar may have acted inappropriately in changing the ownership of the associated registration because confiscatory laws are akin to penal laws and there is no jurisdiction to enforce a foreign penal law against property located in Canada. However it is not open to the Registrar to question the validity of an extant trade mark registration in these proceedings; the Federal Court has exclusive jurisdiction to amend or strike out a registration under s. 57.
6. Superkids Karate v. Canada's Best Karate, May 4, 2001 (Martin) Confusion
Proposed use application for CANADA'S BEST KARATE & Design for clothing, audio tapes… books… training equipment, provision of karate, martial arts and self defence instruction education etc. Opposition based, inter alia, on s. 16 due to confusion with the mark SUPERKIDS & Design previously used for the provision of martial arts instruction.
Held: Opposition rejected. Both marks are weak, the opponent's mark has no significant reputation, and there is little resemblance between the marks.
7. Noma v. Nomaco, May 15, 2001 (Partington) Confusion/Channels of Trade
Proposed-use application for NOMALOCK for pipe insulation for use in the automotive, appliance, sports and leisure, home furnishings, agriculture, specialized packaging and construction industries. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark NOMA registered for a broad range of consumer goods including Christmas tree lighting outfits, electric lamps, electrical wiring devices.
Held: Application refused. Although the parties' wares differ, there is an overlap in the channels of trade, in that both would be sold through the same types of retail outlets, and the marks are very similar in appearance and sounding.
8. Neil P. Kelly v. James M. Alexander, May 28, 2001 (Folz) Section 30(b)/Use Pursuant to Section 4(2)
Use-based application for CREATIVE EDGE COMMUNICATIONS for film and video production services. Opposition based, inter alia, on s. 30(b) because the applicant did not use its trade mark on the date claimed.
Held: Application refused. The applicant's own evidence is clearly inconsistent with its claimed date of first use. Although the applicant registered its business name on the date claimed and may have begun promoting its business on that date through word of mouth and phone calls, it did not display its mark in the promotion of its services on that date and therefore was not using its mark pursuant to s. 4(2).
9. Anheuser-Busch v. Labatt Brewing, May 28, 2001 (Folz) Descriptiveness/Collateral Wares
Proposed-use application for ICE GOLD for various wares including alcoholic brewery beverages, wearing apparel, metal goods, paper goods, leather goods, housewares and sporting goods. ICE disclaimed. Opposition based, inter alia, on s. 12(1)(b) because ICE GOLD clearly describes a beer that is gold in colour and produced through a brewing process involving the creation of ice crystals.
Held: Application refused with respect to alcoholic brewery beverages; opposition rejected with respect to remaining wares. Although "ice " and "gold" are each separately descriptive, the question is whether the mark as a whole is clearly descriptive. It is with respect to beer but not with respect to the remaining goods. Although the remaining goods may be collateral to the promotion and sale of the ICE GOLD beer, this does not make ICE GOLD clearly descriptive of a feature of such wares.
10. McCain Foods v. 1009222 Ontario, June 5, 2001 (Martin) Ordinary Commercial Terms/Descriptiveness/Confusion/Section 12(1)(e)
Proposed-use application for PIZZA CHIPS for food and food products, namely, snack products made from corn based dough excluding tortilla chips, cooked pizza pies, uncooked pizza pies, pies, pizza-like snack foods, namely snack foods having pizza type toppings and ingredients excluding potatoes. PIZZA and CHIPS disclaimed. Opposition based, inter alia, on s. 30(a) because the wares are not described specifically enough, s. 12(1)(b), s. 12(1)(d) and s. 12(1)(e).
Held: Application refused with respect to snack products made from corn based dough excluding tortilla chips, pizza-like snack foods, namely snack foods having pizza type toppings and ingredients excluding potatoes, because the mark clearly describes such wares. It matters not that the phrase "pizza chips" cannot be found in dictionaries or in the snack food trade.
Re s. 30: the descriptions "snack products made from corn based dough excluding tortilla chips" and "pizza-like snack foods, namely snack foods having pizza type toppings and ingredients excluding potatoes" are sufficiently specific; it matters not that these descriptions may cover more than one specific product.
Re s. 12(1)(d): confusion with any of the opponent's marks, such as MCCAIN PIZZA POCKETS and DOLLAR CHIPS, is not likely due to the inherent weakness of the marks, the low degree of resemblance between the marks, and the common adoption and use by others of food trade marks incorporating the word CHIP or PIZZA.
Re s. 12(1)(e): the mark does not contravene s. 10; the Registrar rejected the opponent's argument that s. 10 prohibits any mark comprising a prohibited term preceded by a descriptive adjective.
11. Sears Canada v. Latitude Men's Wear, June 6, 2001 (Martin) Confusion
Application for LATITUDE for clothing and retail sale of clothing based on use and proposed use. Opposition based, inter alia, on
s. 12(1)(d) due to confusion with the mark ATTITUDE registered for clothing and operation of a female fashion boutique.
Held: Application refused. The Registrar was left in a state of doubt concerning the likelihood of confusion given the reputation associated with the opponent's mark, the overlap in the wares, services and trades, and the high degree of visual and phonetic resemblance between the marks. Because the onus is on the applicant, the doubt was resolved against the applicant.
12. Estée Lauder Cosmetics v. Louise Brandolini, June 7, 2001 (Herzig) Confusion/Section 30(b)
Application for IN-TU-IT for audio and video recordings, health care products, namely oil blends for relaxation and massage and healing and metaphysical services namely providing instruction and guidance in body work, breathing and visualization in relation to sexual energy and sexual energy dynamics, cranial sacral therapy, Qi Gong therapy, aromatherapy, astrology and philosophical teaching; sexual energy education; spa services, namely aromatherapy spa services, based on use and proposed use. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark INTUITION registered for perfume, cologne, body cleansers and body lotions and s. 30(b) because the applicant has not used its mark with the services since the date claimed.
Held: Application refused in respect of health care products, namely oil blends for relaxation and massage, cranial sacral therapy, Qi Gong therapy, aromatherapy, astrology and philosophical teaching; spa services, namely aromatherapy spa services. The applicant failed to satisfy the Registrar that there is no likelihood of confusion between the IN-TU-IT health care products and the INTUITION body lotion and related wares. The s. 30(b) ground succeeded with respect to certain services because the applicant's evidence casts doubt on whether it offers such services.
13. Sherwood Brands Overseas v. Linkletter (P.E.I.), June 13, 2001 (Partington) Distinctiveness
Proposed use application for COW'S for confectionary products, men's and women's clothing, and stationery products. Opposition based, inter alia, on non-distinctiveness because the applicant's mark does not distinguish its wares from the opponent's SHERWOOD COWS & Design candy.
Held: Application refused in respect of confectionary products only. Although the opponent did not begin selling its SHERWOOD COWS & Design candy in Canada until after the filing of the applicant's application, it had commenced sales prior to the material date and there is evidence that such sales were bona fide because it had begun promoting its product to potential Canadian distributors prior to the applicant's filing date. The applicant's mark had become well known in association with its clothing and stationery, as well as with the services of operating retail outlets selling ice cream, T-shirts, etc., but there is no evidence that it has acquired any reputation with respect to candy.
14. Ocean Fisheries v. 602390 Ontario, June 18, 2001 (Herzig) Confusion
Proposed use application for OCEAN CHOICE for fresh, frozen and processed fish and seafood. CHOICE disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark OCEAN'S Design registered for a variety of fish products.
Held: Application refused. Although OCEAN is an inherently weak component for marks applied to seafood products, the public is already familiar with the opponent's OCEAN'S Design mark and its use in conjunction with the advertising slogan THE NATURAL CHOICE. The Registrar was therefore left in a state of doubt concerning the likelihood of confusion, which he resolved against the applicant since it bears the onus.
15. La Senza v. Phantom Industries, June 19, 2001 (Partington) Confusion/Family of Marks
Use-based application for SATIN SILKS for hosiery, tights, lingerie and socks. SATIN disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark SILK & SATIN registered for a variety of wares, including hosiery and the operation of retail outlets selling clothing.
Held: Application refused. The applicant's evidence establishes that it has a family of SILKS marks as applied to hosiery but this alone does not justify concluding that the present application should proceed to registration. Although the opponent's mark has become known to a greater extent, both parties' commenced use of their marks in the same year. Nevertheless, the Registrar was left in doubt in relation to the likelihood of confusion, which he was obliged to resolve against the applicant.
16. Max v. OfficeMax, June 19, 2001 (Partington) Confusion
Application for OFFICEMAX for paper products, office requisites and retail sales of office supplies based on use and registration abroad and for various office supplies based on proposed use. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark MAX registered for numbering machines, hand counters, staplers, staples, pencil sharpeners…
Held: Opposition rejected. Although there is an overlap in wares and a potential overlap in channels of trade, the opponent's mark is weak and there is evidence of 15 trade mark registrations containing MAX for wares in the same classes. The applicant therefore has met its legal burden with respect to the issue of confusion.
17. Canadian Tire v. Autozone, June 21, 2001 (Folz) Descriptiveness
Applications for THE BEST PARTS IN AUTO PARTS and YOUR DISCOUNT PARTS SUPERMART for retail automotive parts store services. BEST, PARTS, AUTO PART, DISCOUNT and SUPERMART disclaimed. Opposition based, inter alia, on s. 12(1)(b).
Held: Applications refused. The fact that certain components of the marks may have different connotations is not sufficient to remove them from the ambit of s. 12(1)(b). The meaning of each mark is plain and self-evident. The Registrar rejected the argument that THE BEST PARTS IN AUTO PARTS could only be descriptive of wares, not the applied for services; the mark includes an abbreviated form of the type of services offered and the mark is neither unique or unusual. The fact that the mark has not been used by others is insufficient to make it registrable.
18. Advance Magazine Publishers v. Quarto Publishing, June 27, 2001 (Martin) Confusion
Proposed use application for MAGNET GOURMET for series of small format books… with magnetic mounts for fixing to refrigerator doors etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark GOURMET Design registered for magazines.
Held: Application refused. The Registrar was left in a state of doubt respecting the issue of confusion in view of the resemblance between the wares, trades and marks of the parties and the acquired reputation associated with the opponent's mark.
19. Canada Post v. The Post Office, June 28, 2001 (Herzig) Distinctiveness
Application for ROYAL MAIL for philatelic supplies, based on use, and for model postal delivery vehicles, machines for use in connection with postal services, ceramic tableware, electrical, electronic and optical apparatus and instruments, computers… for use in connection with postal services, based on use and registration abroad. MAIL disclaimed. Opposition based, inter alia, on non-distinctiveness. The applicant performs post office functions in Great Britain by assent of Her Majesty.
Held: Application refused. The applicant's evidence falls far short of establishing any significant reputation for its mark in Canada. The term ROYAL MAIL appertains as much to the opponent as to the applicant because both parties are "royal", serving the same Queen, and both provide mail and mail-related wares and services under government authority. In fact, the opponent's predecessor used ROYAL MAIL in Canada until about 1940. The ordinary consumer would either believe that the applicant's ROYAL MAIL wares and services originate with the opponent or would be in a state of doubt as to whether such wares and services were approved, licensed or sponsored by the opponent.
III. SECTION 45 DECISIONS
1. Russell & Dumoulin v. Guangdong Cereals & Oils, August 31, 2000 (Bradbury) Admissibility of Foreign Affidavits
DOUBLE SWALLOW BRAND & Design registered for various rice products.
Held: Registration maintained. The issue was whether the registrant's affidavit was admissible. The jurat at the end of the affidavit was not completed but the affidavit began with the words “I… make oath and say that:” and the affiant signed the affidavit at the end. Attached to the complete affidavit and exhibits by a sealed ribbon was a “China Council for the Promotion of International Trade Certificate” that read: “This is to certify that: the signature of … on the annexed Affidavit is genuine.” The certificate was signed by the same individual who signed each of the exhibit slips. In its written argument, the registrant's agent stated: "We have been informed that in China it is common practice for a notary to attach to an Affidavit a cover page and then sign the cover page. Indeed we have been informed that this is the Notary Public’s own form of notarizing documents.” The requesting party did not make any submissions concerning the rules with respect to affidavits in China. Bearing in mind the summary nature and purpose of s. 45 proceedings and the Registrar’s practice to accept, as prima facie admissible, affidavits made in accordance with the rules of the jurisdiction where they were sworn, the Hearing Officer accepted the affidavit as being admissible.
2. Metro-Goldwyn-Mayer Studios v. Paris Star Knitting Mills, February 28, 2001 (Savard) Proper Affidavit
OUTER LIMITS registered for clothing.
Held: Registration expunged. The registrant's evidence was not in proper form since the jurat read "signed by … before a Commissioner for Oaths".
3. Borden Elliot Scott & Aylen v. The House of Kwong Sang Hong International, February 28, 2001 (Savard) Use by Whom
TWO GIRLS & Design registered for perfumes and cosmetics.
Held: Registration expunged. Although the affiant said that the registrant was using the mark, the name appearing on the packaging omitted the word "International".
4. Malcolm S. Johnston v. Crazy Canucks Enterprises, February 28, 2001 (Savard) Use with Services in Conjunction with Charitable Fund Raising
CRAZY CANUCKS registered for entertainment services, namely performance of ski exhibitions and demonstrations…
Held: Registration maintained. The evidence showed use in association with the registered services. The requesting party argued that because all of the services were performed in connection with charitable fund raising events the trade mark was not used within the meaning of s. 4(2). The use shown is within the registrant's normal course of trade; the fact that the services are being provided in conjunction with a fund raising event is not prohibited under the Trade-marks Act.
5. Hofbauer v. Toronto-Dominion Bank, February 28, 2001 (Savard) Deviation from Registered Mark
FUTURLINK Design registered for management and administration of funds of others.
Held: Registration maintained because the differences between the mark used and the mark registered are minor. The registered mark was FuturLink whereas the mark used was FUTURELINK in a different font and all capitals.
6. Anissimoff v. EWA Trading International, May 17, 2001 (Savard) Sufficiency of Evidence
HERBAPOL registered for teas and fruit herbal syrups.
Held: Registration restricted to teas. The registrant's affiant explained that it sells a wide variety of teas under the mark and that all of the teas are manufactured to its specifications in Poland. Although the packaging refers to the registrant as importer, this is being changed in response to advice that the registrant should also identify itself as the trade mark owner. Such explanation is sufficient to conclude that use of the mark is by the registrant; the packaging does not contradict the statements made by the affiant. There is no requirement that the trade mark appear on invoices.
7. Philip B. Kerr v. Face Stockholm, May 17, 2001 (Savard) Foreign Web Site/Use in Canada
FACE STOCKHOLM registered for various cosmetics and beauty products and the services of retail cosmetic and beauty product stores.
Held: Registration restricted to services and wares shown to be in use. The registrant offers wares from its own web site; Canadians can view and request a catalogue to purchase the wares and may order from Canada and receive wares in Canada. Thus the registrant's Internet activities constitute retail cosmetic and beauty product store services. As the web site and catalogue clearly display the mark, the evidence shows that the mark was used in the advertisement of the services. Invoices provided confirm that delivery of products were made by the registrant in Canada during the relevant time period.
8. Reeds Jewelers of Niagara Falls v. Reed and Barton, May 17, 2001 (Savard) Use with Related Wares
REED & BARTON registered for silverware - namely, plated and sterling hollow-ware and flatware, and jewelry, namely pendants, bracelets, stick pins, ornamental pins, and earrings, made of precious metal.
Held: Registration restricted to the silverware items. The evidence clearly showed use with respect to the silverware. The registrant said that it was not using the mark with jewelry but that it had not abandoned the mark with respect to jewelry and expected to use it with jewelry in the near future. It unsuccessfully argued that the use with silverware ought to maintain the registration for jewelry because silverware and jewelry are closely related.
9. Shapiro Cohen v. Norton Villiers, May 17, 2001 (Savard) Sufficiency of Evidence/Use on Invoices
NORTON registered for motor cycles, side cars, internal combustion engines and parts thereof, speed gears, brakes, clutches, parts and accessories of motor cycles, side cars, and stampings and casting for same.
Held: Registration expunged. The evidence provided by an officer of a company other than the registrant was that it had shipped "genuine Norton Motorcycle Parts" on three occasions and invoices were provided. There is no evidence that the affiant's company owns the mark and no evidence that the mark was associated with the wares in accordance with s. 4(1). The display of various marks, including NORTON, at the top of the invoice is not use pursuant to s. 4(1) as the mark is not associated with a particular item.
10. Canadian Council of Professional Engineers v. Tecumseh Products, May 17, 2001 (Savard) Sufficiency of Evidence
SNOW KING & Design registered for gasoline engines for snow throwers.
Held: Registration maintained. It matters not whether the engines were shipped on their own or as part of snowblowers since the evidence shows that the trade mark is affixed to the engine of the snowblower.
11. Rogers & Milne v. Sherwood-Drolet, May 17, 2001 (Savard) Sufficiency of Evidence
PLATINUM 8000 registered for hockey sticks.
Held: Registration maintained. Although only one sale for a minimal amount was evidenced during the relevant time period, the sale appears to be a genuine sale made in the registrant's normal course of trade. The affiant indicated that the sale was for hockey sticks bearing the mark; the invoice refers to the wares as PLATINUM 8000; and the catalogues show the manner in which the sticks bear the mark.
12. Barrigar & Moss v. GORDON 7 S.R.L., May 17, 2001 (Savard) Sufficiency of Evidence
OUTRAGE registered for various items of clothing.
Held: Registration restricted to those items supported by the evidence. The use was by a company who used to be the trade mark owner and then became a licensee. Since there was no statement that the owner controlled the licensee's use, use by the licensee did not accrue to the registrant. However, the evidence also showed use by the present licensee when it was still the owner of the mark and this sufficed. All of the invoices were to one company and each bore the notation "lines (line) OUTRAGE". The Registrar concluded that the notice required by s.4 (1) was given to the purchaser because the notation on the invoices would have been brought to the attention of the purchaser when it received the invoices and compared the items it received with the items listed on such invoices.
13. Doris Hosiery Mills v. a partnership of Waszczuk Enterprises and Labignan Investments, May 17, 2001 (Savard) Special Circumstances
SECRET STRATEGIES registered for novelty items and videos and entertainment and educational services, namely the promotion and staging of live demonstrational shows and seminars relating to angling.
Held: Registration restricted to videos and entertainment and educational services, namely seminars relating to angling. Shortly before the issuance of the s. 45 notice, the registrant ceased its live demonstrational shows because its sponsor dropped out. Although it plans to revamp those shows and find a new sponsor, no documentary evidence has been furnished to demonstrate the efforts that were made to do so and it would appear that the owner had not taken any such steps prior to the issuance of the s. 45 notice. The Registrar could not conclude that the owner had an intention to resume use with such services during the relevant time period and therefore could not conclude that the absence of use was due to special circumstances.
14. Osler, Hoskin & Harcourt v. Mastercut, May 31, 2001 (Savard) Special Circumstances
MAXI-GRIP registered for hand tools.
Held: Registration expunged. The registrant admitted that there had been no use of the mark during the relevant time period but explained that this was because a cease and desist letter was received. It claimed that one year prior to the issuance of the s. 45 notice, it had decided to reintroduce the trade mark and evidence of a sale that took place about one year after the notice was filed. The registrant failed to show how the mark was used prior to the s. 45 notice. The decision to stop using the mark appears to have been voluntary and the applicant has not shown any steps taken prior to the s. 45 notice to resume use. The sale evidenced is "too little too late".
15. Scott & Aylen v. Equidex, May 31, 2001 (Savard) Sufficiency of Evidence
COLD FUSION registered for coins, jewellery, watches, medallions and ingots all made of palladium or platinum.
Held: Registration restricted to medallions made of palladium. Although the registrant's affiant identified the wares sold as "medallions/coins made of palladium", the exhibits characterize the product as a medallion. The Registrar rejected the argument that the sale of palladium medallions is sufficient to maintain the wares "medallions made of palladium or platinum".
16. Swabey, Ogilvy Renault v. 395925 Alberta, May 31, 2001 (Savard) Sufficiency of Evidence
FORESTER registered for a large number of wares.
Held: Registration restricted to those wares for which use has been shown. Although direct evidence or documentary proof is not required with respect to each of the wares, there must be at least a clear statement that sales of each of the wares bearing the mark occurred during the relevant period. As such a statement has not been provided, the wares were restricted to those shown in either the photographs, the brochures or the invoices.
17. Borden & Elliot v. Raphaël, June 20, 2001 (Savard) Use with Services/Sufficiency of Evidence
RAPHAËL & Design registered for various leather goods.
Held: Registration expunged. The affiant stated that the trade mark is used in the operation of his business, which deals in fine leather goods. Most of the evidence shows use of the mark in association with services or a business, not wares. Plastic bags bearing the mark in which purchases are placed are use in association with services, not wares. The use shown with respect to wares is of a trade mark that deviates substantially from that registered. In any event, the evidence fails to show transfers of any of the wares during the relevant time period.
