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Index (a) Patents III. OPPOSITION BOARD DECISIONS |
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3. Merck and Merck Frosst Canada v. A.G. Can. et al., December 6, 1999, FCTD (McGillis J.) Stay of Judgment/Irreparable Harm Emergency application by the respondent Nu-Pharm for a stay of a judgment of the Federal Court. The effect of the Judgment sought to be stayed was to prevent Nu-Pharm from marketing its version of VASOTEC. The Judgment, which had not taken effect as of the hearing of the application, was made on the basis that the Minister erred in issuing a Notice of Compliance to Nu-Pharm. Held: Stay granted pending outcome of the appeal of the Judgment. The Court, in rendering its decision, reiterated the three-part test to be applied in requesting a stay of judgment, namely that there is a serious issue to be tried on appeal; that the applicant for the stay will suffer irreparable harm if a stay is not granted; and that the balance of inconvenience lies in its favour. On the first part, the Court had little difficulty in finding that Nu-Pharm had met the low threshold test prescribed in the jurisprudence and had established that there is a serious issue to be tried on appeal. Concerning part two, Nu-Pharm was successful in convincing the Court that it would suffer irreparable harm for a number of reasons. First, it is a relatively small generic drug company with revenues approximately one-twentieth to one twenty-fifth the size of other generic companies (this in light of the fact that Merck is one of the largest pharmaceutical companies in the world). Second, and most persuasive, was the submission that Nu-Pharm had over-extended its credit in respect of ramping up to sell its generic version of VASOTEC. In other words, it had put itself into a precarious financial position such that the lack of a stay (in other words, preventing Nu-Pharm to be able to market its generic version pending the outcome of the appeal) would be extremely dangerous to Nu-Pharm's continued viability. Notwithstanding the fact that Merck offered to guarantee a loan with Nu-Pharm's bank during the three-month period that a decision of the Court of Appeal would take, the Court found that Nu-Pharm would suffer irreparable harm if the stay was not granted, and that the balance of inconvenience clearly lay in Nu-Pharm's favour.
1. Club Monaco v. Woody World Discounts et al., October 28, 1999, FCTD (Pelletier J.) Anton Piller Orders/Evidence Application for an extension of rolling Anton Piller orders dating back to 1991. Held: Order issued. The evidence submitted meets or exceeds the current standard, namely that there are current instances of suspected counterfeiting occurring in different parts of the country which justify the making of the order. In future applications for a rolling Anton Piller order against itinerant sales or flea markets, the evidence should reflect the following:
2. Novopharm v. Bayer and Reg. TM, October 28, 1999, FCTD (Evans J.) Opposition Appeal/ Drawings/Colour/Size/Specimens/ Section 30(h)/Distinctiveness/Secondary Meaning Appeal of rejection of appellant's opposition to an application for Circle Design for pharmaceutical preparations, namely nifedipine. The appellant alleges that the Registrar erred because the application failed to comply with statutory requirements of both form and substance, and because the evidence did not support a finding that the mark in fact distinguished Bayer's nifedipine tablets from other pharmaceutical products on the market. The appellant filed new evidence on the issue of distinctiveness of the mark. Held: Appeal allowed on two grounds. Given that pink round small tablets are common in the pharmaceutical market, Bayer has a heavy burden to discharge in proving on the balance of probabilities that its pink round small tablets had a secondary meaning. The fact that Bayer's tablets were the only extended-release nifedipine tablets on the market is in itself insufficient to establish secondary meaning. The mark is inherently weak and there is evidence of some twenty pink tablets available in Canada for the treatment of similar conditions as of the relevant date. There was no direct evidence that patients associated the colour and shape of Bayer's tablets with a single source while there was evidence from pharmacists and physicians that patients typically do not associate the appearance of a medication with a single source. It is not fatal to Bayer's application that consumers may also use means other than the applied for mark to identify the product but the evidence suggested that patients were more likely to identify Bayer's product by its brand name or manufacturer than by its colour, shape and size. The limited use that pharmacists make of the appearance of medication for identification purposes is inadequate to establish distinctiveness. Bayer has not discharged its burden of proof. There is no reason to disturb the Registrar's finding that the application was limited to the size of tablet filed as a specimen – Bayer could have either stated that size was not part of the trade mark or filed specimens of more than one size if it wished to not have its application restricted by size.
3. Kabushiki Kaisha Hattori Seiko v. Impenco, November 3, 1999, FCTD (Campbell J.) Opposition Appeal/Packaging/Wares Appeal from an opposition decision refusing an application for SEIKO for watch boxes. The Board held that a watch box is not a ware independent from the watch it contains. Held: Appeal allowed. The Board reached its conclusion based on its own opinion and that of the respondent. The applicant's position is that it sells two separate goods at a single price but the Board relied on its own speculation that consumers really believe that they are buying a watch in a box which comprises packaging, rather than a watch in a box which comprises a separate ware. On appeal, new evidence was filed, namely an expert opinion, that established that consumers perceive that they are purchasing both a watch and a box, as the box is of the type positioned as wares with their own distinct value. Since the respondent filed an appearance, the applicant is entitled to costs, even though the respondent did not file a record or make a personal appearance.
4. Vejee Group (Canada) v. Woolworth Canada, November 5, 1999, FCTD (Pelletier J.) Opposition Appeal/Amendment of Application Appeal from an opposition decision refusing an application for CANADIAN REFLECTIONS for clothing because of a likelihood of confusion with the trade mark NORTHERN REFLECTIONS for similar wares. After the decision, the applicant filed an amendment to its trade mark application to limit the places where the wares might be sold. Held: Appeal dismissed. It is not possible to amend an application after it has been refused by the Registrar and therefore the filing of an amendment has no effect on the outcome of the appeal. The Registrar was right to find that the marks were confusing despite the coexistence on the Register of other clothing marks incorporating the word REFLECTIONS.
5. Havana House Cigar & Tobacco Merchants et al. v. Skyway Cigar Store, November 9, 1999, FCA (Strayer J.A., Robertson J.A., Rothstein J.A.) Summary Judgment/Expungement/Passing Off/ Infringement Appeal from summary judgment decisions expunging four trade mark registrations and refusing judgment for trade mark infringement and passing off. Cross-appeal contending that the appellants' action for infringement and passing off should have been dismissed in its entirety. Held: Appeal dismissed. Cross-appeal allowed. The registrations were properly expunged as the marks were not distinctive of the trade mark owner (the distributor) at the material time. The motions judge was obliged by r. 432.3(1) to grant summary judgment in favour of the respondent if the appellants did not evidence specific facts showing there to be a genuine issue for trial. The motions judge found there to be no sufficient evidence to give rise to a triable issue and there is no reviewable error in his findings; accordingly the appellants' action is dismissed.
6. Coca-Cola v. Musadiq Pardhan et al., November 16, 1999, FCTD (Lutfy J.) Contempt Plaintiff seeks an order finding the defendants Musadiq Pardhan and Mustafa Pardhan in contempt of an interlocutory injunction which was granted January 8, 1996 to prevent the export of COCA-COLA products. The plaintiff's action was ultimately dismissed and the injunction dissolved but that does not provide a defence to a contempt citation. Held: Musadiq Pardhan is guilty of contempt; Mustafa Pardhan is not. A new company was incorporated to camouflage the identity of the persons involved in exporting COCA-COLA products early in 1996. 39 shipments of COCA-COLA products were exported by this company contrary to the injunction. Musadiq Pardhan knew about the injunction and understood its terms no later than March 1996. The Court found that Musadiq Pardhan participated in the sales of COCA-COLA product, beyond a reasonable doubt. Mustafa Pardhan can be inferred to have acquired knowledge of the injunction in February/March 1997. Evidence of his involvement in the company that was exporting both COCA-COLA and other beverages does not meet the criminal standard of proving that he was involved with the impugned activity. Mustafa Pardhan was not required to prevent his son, Musadiq, from breaching the injunction and there is no evidence that Mustafa influenced the conduct of Musadiq. Typographical errors that do not mislead a defendant do not invalidate an injunction. An enjoined party is not permitted to attack an order to defend against a contempt proceeding.
7. Garbo Group v. Harriet Brown & Company and Reg. TM, November 16, 1999, FCTD (Evans J.) Opposition Appeal/Standard of Review/ Confusion/Estoppel Appeal from Registrar's decision rejecting an opposition to a proposed use application for GRETA GARBO for cosmetics, toiletries, eyeglasses and accessories. The grounds of opposition were based on the likelihood of confusion with the marks GARBO Design, T.G.I.F. BY GARBO and GARBO previously used and registered for various goods by the appellant. The respondent owns the right to use the name of the actress, Greta Garbo. Held: Appeal dismissed. Based on expert evidence filed on appeal, the Court concluded that jewellery, belts, handbags, fragrances, cosmetics, lotions, eyeglasses, sunglasses and eyeglass accessories may fall into the same "general category of goods", albeit a broad category. This was contrary to the Registrar's finding but the Court was not satisfied that the Registrar was wrong in his conclusion that there was no reasonable likelihood of confusion. The respondent argued that estoppel applied to prevent the appellant from arguing that customers would associate its GARBO marks with the actress and therefore be confused by the respondent's mark. The estoppel argument was based on the fact that the appellant, when registering its marks, had successfully argued that its marks did not suggest an association with the actress, in order to overcome an objection under s. 9(1)(k). Estoppel does not apply because the test for determining whether a proposed mark falsely suggests an association with a living person is not the same as the test for determining whether a proposed mark will cause confusion with an existing mark. Mr. Justice Evans indicated that he agreed with Mr. Justice Lufty's opinion in Young Drivers of Canada v. Chan, August 30, 1999, that the standard of review applied to the Registrar's findings of opinion needs to be reformulated to take account of the pragmatic and functional analysis developed in contemporary administrative law jurisprudence for selecting the standard of review appropriate for the issue in dispute. After considering the relevant factors and case law, he concluded that, despite the untrammeled right of appeal in the Trade-marks Act, a considerable degree of deference is called for on the part of the appellate Court when reviewing the Registrar's finding of confusion, provided at least that no significant new evidence has been adduced on a factual issue and it is not alleged that an error of law has been committed. The standard of review that should be used is that of "clearly wrong". When evidence filed on appeal is so significant and extensive that the case is fundamentally different from the one before the Registrar, the Court ought to remit the matter to the Registrar, rather than simply reversing the decision, given the specialized nature of the Registrar's jurisdiction.
8. Apotex v. Borden & Elliot, November 17, 1999, FCTD (Teitlebaum J.) Section 45 Appeal/Ambiguities Appeal from Registrar's decision to expunge the trade mark registration for DINO-VITES. The Registrar held that the evidence was too ambiguous to conclude that use of the mark was by the registered owner. New evidence was filed on appeal. Held: Appeal allowed. The new evidence included a statement that all sales were by the registered owner directly and explained why some of the packaging previously introduced bore the name of the registrant's predecessor. The registrant thereby clarified the ambiguities that had caused the Registrar concern. Costs were not awarded because the registrant ought to have filed this evidence before the Registrar.
1. CCH Canadian et al. v. The Law Society of Upper Canada, November 9, 1999, FCTD (Gibson J.) Copyright Infringement/Originality/Fair Dealing/Public Interest/Section 3(1) Copyright Act/Charter of Rights Action for a declaration that the defendant is infringing the plaintiffs' copyright and a permanent injunction to restrain such infringement. The plaintiffs, who own copyright in various legal publications, allege that the defendant has infringed copyright by providing single copies to the legal profession and judiciary. The defendant counterclaims for a declaration that copyright is not being infringed by its making of a single copy of a judicial decision, case report, statute or regulation from legal materials purchased by the defendant for the purpose of research, private study or review by a member or employee of the defendant or a member of the judiciary for a charge that is intended to approximate the defendant's cost. The defendant urged that the nature and mandate of the defendant were special considerations to be borne in mind – the defendant not being a business enterprise and being mandated to operate in the public interest and in furtherance of the administration of justice and the rule of law. The plaintiff countered that there is no overriding public interest because lawyers and members of the public would still have access to the law if the copyright is enforced. The defendant argued that as the Crown owns copyright in reasons for judgment, the plaintiffs do not own copyright in the individual case reports that they publish as such are derivative works. The defendant acknowledged that certain headnotes could have sufficient originality to qualify for copyright but argued that a blanket declaration that all headnotes attract copyright protection would be inappropriate. Regarding the defence of fair dealing, the plaintiff argued that the defendant's purpose is not "research, private study, criticism or review" but rather to fulfill requests made by others. Held: Injunction denied. Declaration issued that the defendant has infringed the plaintiffs' copyright in a particular textbook and monograph by making and distributing a photocopy of a substantial portion thereof. Declaration sought by defendant denied.
1. Volkswagen Canada v. Access International Automotive, April 19, 1999, FCTD (Giles A.S.P.) Pleadings The defendant filed a statement of defence and counterclaim which inter alia, pleaded a defence and cause of action in the counterclaim under s. 32 of the Competition Act. The plaintiff brought a motion to strike all references to s. 32 of the Competition Act on the ground that the practices mentioned in that section can only be prosecuted on an information exhibited by the Attorney General, as is set forth in that statute. Defendant argued that it should be allowed to allege such practices as evidence of the lack of "clean hands" in reply to the plaintiff's plea for an injunction. Held: Motion granted. In light of the reasoning in Eli Lilly v. Marzone Chemicals (1976), 29 C.P.R. (2d) 253 an infringement of the Combines Investigations Act could, in the proper circumstances, be a bar to equitable relief. However, to act as a bar the infringement must be proved. Section 32 deals with "unduly" limiting or lessening competition. Whether or not any of the acts of the plaintiff result in "undue" consequences is something that can only be determined on an information of the Attorney General. Section 32 does not address the limiting of competition but rather the undueness to which competition is limited. Section 32 therefore cannot, until a Court has found undue consequences, be used as a defence or counterclaim in an action respecting trade marks. These sections of the statement of defence and counterclaim shall therefore be struck.
2. Society of Composers, Authors and Music Publishers of Canada v. Malcolm Enterprises et al., April 26, 1999, FCTD (Lafreniere P.) Status Review The plaintiff brought a motion for judgment against the corporate defendant in default of filing a statement of defence. The motion to strike was originally brought in 1997, but adjourned sine die at the request of the plaintiff, presumably to facilitate settlement. The motion was brought back on in February of 1999 but, prior to its hearing, was once again adjourned sine die on consent. On April 1, 1999, a Notice of Status Review was issued by the Federal Court. On April 14, 1999, the plaintiff filed a Notice of Return of Motion. Held: The motion is adjourned sine die by the Court, pending disposition of the status review by the Court. A status review is convened by the Court when the parties fail to reach specific steps within a certain time. The powers of the Court on a status review include requiring the plaintiff to show cause why the proceedings should not be dismissed for delay, and dismissing for delay if not satisfied. The issuance of a notice of status review shifts the onus to the plaintiff to satisfactorily explain the delay in prosecuting its action. It is therefore premature to deal with the plaintiff's motion for default judgment before the status review hearing is completed. To allow the plaintiff to proceed on its motion would circumvent the status review. It could also result in irreconcilable decisions from this Court in simultaneous proceedings.
3. Apotex et al. v. Merck, April 28, 1999, FCTD (Muldoon J.) Pleadings/Res Judicata/Rule 221(2) The plaintiffs A and S brought an action seeking to impeach the defendant's patent. Earlier patent infringement litigation instituted by the defendant against A (but not S) resulted in an injunction issuing against A restraining it from infringing the patent at issue. In that proceeding, A did not challenge the validity of the patent at trial. A later purportedly learned of new information affecting the validity of the patent and thus brought the present action. The defendant brought a motion under r. 221 to strike the statement of claim on the basis, inter alia, that the claim was an abuse of process in that it sought to re-litigate issues settled by a final determination of the Court in the prior proceeding and the matter was, therefore, res judicata. A attacked the defendant's attempt to file documents from the previous proceeding on the basis that r. 221(2) does not permit the Court to consider evidence on a motion to strike. Held: Motion granted. The case law is clear that the application of the doctrine of res judicata does not depend on whether the parties actually raised the issue or issues in previous proceedings, but whether the parties could have done so. Should a party choose to drop certain issues for reasons of tactics or otherwise, the party seals its fate with regard to those decisions. Parties must bring forward their whole case and will not be permitted to litigate by installments. Res judicata is a principle of law and also of policy that there be finality to Court decisions. In the present case, with the exception of the plaintiff S, the parties are the same. The previous proceedings, which form the basis of the defendant's claim to res judicata, are final and the Court in that case has refused to reopen or revisit the matter. The issue, as well, has also been decided in the previous proceeding, when the Court found that the claims now attacked were valid and infringed. Accordingly, res judicata applies and the statement of claim is therefore struck, without prejudice to the plaintiff S filing and serving a new statement of claim on its own behalf.
4. Nike Canada et al. v. Jane Doe and John Doe et al., July 27, 1999, FCTD (Reed J.) Anton Piller Order The solicitor for nine groups of plaintiffs in nine separate actions, in which rolling Anton Piller (a.k.a. "John Doe") orders had been issued, brought a motion seeking the Court to sign approximately 80 orders consequent on the review of the execution of several Anton Piller orders. The Court issued reasons relating to 43 of those orders which had been executed either simultaneously with, or in close succession to, a criminal search warrant. Held: Motion dismissed. Although the plaintiff's solicitor here has obtained the respondent's consent to the orders presently sought, it is trite law that the Court is not bound by consents that are filed with it. Anton Piller orders are given to allow a plaintiff to seize and preserve goods and related material for use as evidence at trial. Where such an order is sought against unknown defendants, however, trials in fact never occur and the purpose of preserving evidence for use at trial is a fiction. Though perhaps an effective weapon against the sale of counterfeit goods, rolling Anton Piller orders also contain a real potential for abuse. For example, where only a few items are seized from a person, even if the goods are genuine the owner is unlikely to come to Court to challenge the improper seizure. Although those against whom Anton Piller orders are executed have the right to refuse entry to the premises, they risk being in contempt of a Court order if they do so. Thus, in effect, rolling Anton Piller orders allow for a warrantless search of premises based only on the plaintiff's assertion that the goods infringe the plaintiff's intellectual property rights. Understandably, there is unease among many members of this Court because there has been no Court of Appeal direction or assessment of the appropriateness of this remedy. While the Court accepts that the proliferation of counterfeit goods is a serious problem, the Court remains concerned that there are often insufficient checks to ensure that abuses do not occur. In the United Kingdom, for example, when specific Anton Piller orders are granted, it is a solicitor other than the plaintiff's solicitor who attends on the execution of the order. This Court would also prefer that Anton Piller orders were not granted except on the condition that the plaintiff paid for a supervising solicitor who could both monitor the plaintiff's execution of these orders as well as be independent of the plaintiff's interest. An Anton Piller order is not a search warrant but an order on the defendant in personam to permit the plaintiff's entry, or be in peril of proceedings for contempt of Court. It is therefore inappropriate to execute Anton Piller orders in conjunction with or in close proximity to a criminal search conducted by the police. The Court will not approve the execution of an Anton Piller order that appears to piggy back on a search and seizure of goods by police pursuant to a criminal proceeding when the terms of the Anton Piller order expressly state that the seizure of goods thereunder is for civil purposes only. The Court will also not approve the execution of an Anton Piller order that does not abide strictly with the terms of the order issued by the Court. For example, where an Anton Piller order requires that the executing solicitor make a list or description of the seized goods and provide the same to the respondents and to the Court, where no such list is made the Court will not approve the execution of the order.
5. PC Connection v. MPC Technologies, August 10, 1999, FCTD (Hargrave P.) Pleadings/Rule 200 The plaintiff sued for infringement of its registered trade mark. The defendant filed a pro forma defence. The plaintiff did not file a reply and the parties proceeded with productions of documents. The defendant then filed an amended defence, containing a new pleading and adding a counterclaim seeking to have the registration at issue, as well as a second trade mark registration owned by the plaintiff, modified pursuant to s. 57 of the Trade-marks Act. The plaintiff objected to the amended defence and counterclaim on the grounds that the time for amendments without leave had long since run out. Held: The amended defence and counterclaim shall be removed from the Court file. As for whether the defence may be filed, r. 200 provides that a party may, without leave, amend any of its pleadings "at any time before another party has pleaded thereto". Rule 202 automatically closes pleadings, inter alia, on the expiration of the time for filing a reply. This deemed close of pleadings is vital in that it provides a reference date for other procedures, such as the deadline for production of documents, settlement discussions, discoveries, etc. Rule 200 must be read in conjunction with the other Federal Court Rules, which limit it and which govern the timing for the litigation process. Thus, once pleadings are closed, the right to amend without leave must be foreclosed.
6. 1029894 Ontario v. Dolomite Svenska and Dolomite Home Care Products, November 12, 1999, FCTD (Sharlow J.) Appeal of Prothonotary's Decision/Particulars/Motion to Strike Appeal by defendants from prothonotary's decision refusing to strike a paragraph in a statement of claim for failure to provide particulars, or, in the alternative, to order further particulars. The action claimed that the defendants had made false/misleading statements tending to discredit the plaintiff's business/wares, in particular by telling plaintiff's customers, etc. that the plaintiff's products infringe the defendants' design and patent rights. The plaintiff responded to a request for further particulars by saying that the particulars are within the knowledge of the defendants but as an example provided the dates and locations at which 3 of its named customers had been confronted with the offending statements. Held: Appeal dismissed. The prothonotary's decision must stand as it was not based on an error of law or fact. The prothonotary was satisfied that the particulars already provided, when combined with the facts presumed to be within the defendants' knowledge, were sufficient to enable the defendants to defend themselves. In reaching this conclusion, the prothonotary was clearly influenced by the defendants' failure to provide any evidence to the contrary. Considering the motion to strike anew, the Court held that the paragraph, when read together with the particulars provided, meets the standard for a claim based on s. 7(a) of the Trade-marks Act.
1. Petals v. Winners Apparel et al., October 7, 1999, O.S.C.J. (Benotto J.) Passing Off Action alleging that the defendant passed off its goods as those of the plaintiff and caused confusion in the market place. The plaintiff, a U.S. company, has sold high-end children's dresses under the name PETALS in Canada. The defendant, unaware of the plaintiff's activities, began selling a line of dresses under the name PETALS. The dresses produced by the defendant bore little resemblance to the dresses produced by the plaintiff. They were sold at a very different price level and were made with inferior fabric. Held: Action dismissed because the plaintiff has not established a reputation or goodwill, actual/potential confusion, or damages. The evidence shows that the plaintiff's PETALS clothing did not have a sufficient base of loyal clientele to create a reputation in the first place. The plaintiff did no consumer advertising in Canada, without which, it is difficult to establish a consumer franchise. Although the use of the same name would, on its own, be a likely source of confusion, any confusion would evaporate very quickly after a cursory look at the product; the vast difference in the quality of the dresses make it clear that they could not have originated from the same source.
2. Ebco Industries v. Kaltech Manufacturing et al., October 22, 1999, B.C.S.C. (Gill J.) Confidential Information/Interim Injunction Application for interim injunction to prevent the defendants from approaching certain named companies for the purpose of obtaining their business, using or divulging any confidential information or trade secrets belonging to the plaintiff, manufacturing and selling any products which are the same in design and in function to those previously sold by the plaintiff to any of the named clients, and approaching any employee of the plaintiff for the purpose of offering employment. Held: Interim order granted enjoining the defendants from soliciting certain customers of the plaintiff and from directly approaching the plaintiff's employees for purposes of inducing them to accept employment with the defendants. There is a fair question to be tried as to whether one of the defendants owes fiduciary duties to the plaintiff and an employee who owes fiduciary duties is not entitled to solicit business from clients of his former employer. On the issue of confidential information, a fair question has not been made out as the materials do not provide a specific description of any process or system such that the alleged confidentiality can be assessed. The plaintiff cannot prevent its former employees from using knowledge, skill or experience gained in their trade - an order precluding the defendants from manufacturing and selling any products which are the same in design and in function to those previously sold by the plaintiff would do that.
III. OPPOSITION BOARD DECISIONS 1. Sasson Licensing v. Swarovski, September 8, 1999 (Partington) Confusion Proposed-use application for OOH LA LA for jewellery. Opposition based on s. 12(1)(d) due to confusion with the opponent's marks SASSON OO-LA-LA & Design registered for jewellery and wearing apparel and OO LA LA registered for clothing. Held: Application refused. There is a fair degree of similarity in sounding and some similarity in the ideas suggested by the applicant's mark and SASSON OO-LA-LA & Design. The opponent has established the existence of at least some measure of a family of OO LA LA marks through use.
2. Loblaws v. Tritap Food Broker, September 8, 1999 (Martin) Confusion/Licensed Use Proposed-use application for TASTEFUL MEMORIES for cookies, snack foods (including extruded and processed cheese products and jams), coffee, tea and nuts. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark MEMORIES OF registered for sauces, cream cheese, meat, jelly, pizza. Held: Opposition rejected. Although there is a fair degree of resemblance between the marks, there is no direct overlap in the specific wares since the applicant's wares can be categorized as snack foods and the opponent's cannot. Although there is an overlap in the trades, the wares would not likely be sold in the same sections of grocery stores. The opponent's evidence showed use of marks which begin with the words MEMORIES OF and end with a geographical name (e.g. MEMORIES OF BANGKOK), but not of its mark, MEMORIES OF, per se. Even though TM generally appears after MEMORIES OF in the marks used, there is no evidence of use of MEMORIES OF by the opponent itself as the packaging refers to a third party. It was stated in the opponent's evidence that such third party is a licensee of the opponent but on cross-examination the affiant admitted that he was unaware of any license agreement and no particulars of any license agreement, written or oral, were provided. Furthermore, the company responsible for inspecting the various products sold by the third party is not the opponent but a related company and there is no evidence that the opponent appointed it to be its agent in exercising quality control. The fact that the user of the mark is a wholly owned subsidiary of the opponent does not of itself establish the existence of a licensing arrangement.
3. Kansei Healthcare Technologies v. John Ingle Insurance Group, September 8, 1999 (Partington) Confusion Proposed-use application for HEALTH CARE PLUS for insurance services. HEALTH CARE disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark CARE+ registered for computer software and consulting services in the area of automated records administration and management in hospitals and health care facilities. Held: Opposition rejected because the parties' services differ, as do the nature of their trades. The Chairperson also noted that the state of the register evidence showed that there are at least some other marks in use that include the words CARE and PLUS or a + sign, and that the opponent did not file either evidence or a written argument.
4. National Cheese v. Minerva, September 8, 1999 (Partington) Primarily Merely a Surname/Confusion Use-based application for LUPI & Design for olive oil. Opposition based, inter alia, on s. 12(1)(a) because the mark is primarily merely a surname, and s. 12(1)(d) due to confusion with the opponent's mark LUPA registered for cheese. Held: Application refused. The s. 12(1)(d) ground succeeded because the opponent evidenced that some other parties use a single trade mark for both cheese and salad oils and, given the degree of similarity in appearance and the fair degree of similarity in sounding between the parties' marks, the Chairperson was left in a state of doubt with respect to the issue of confusion. The s. 12(1)(a) ground failed because the existence of 16 persons residing in Canada having the surname Lupi does not show that the public would recognize Lupi as a surname, as opposed to as a coined term. In addition, the design features of the mark would probably warrant its registration despite s. 12(1)(a).
5. Bedford Furniture v. Bay Rest Bedding, September 8, 1999 (Folz) Confusion Use-based application for SPINAL CARE for mattresses, box springs and mattress sets. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark SPINAL GUARD registered for mattresses. Held: Application refused. Given the acquired distinctiveness of the opponent's mark, the similarity of the wares, the overlap of the channels of trade, and the resemblance between the marks, the Board Member was left in a state of doubt concerning the likelihood of confusion.
6. Ivy Lea Shirt v. Muskoka Fine Watercraft and Supply, September 15, 1999 (Partington) Section 30(b) Use-based applications for CHESTNUT CANOE CO. for the restoration and rebuilding of canoes, paddles for canoes, paddle racks, and decals for canoes, paddles and paddle racks. Oppositions based on s. 30(b) because the applicant has not used the marks continuously since the dates claimed. Held: Oppositions rejected. Although the applicant is required to show that there was continuous use of its marks in the normal course of trade from its claimed dates of first use to the filing dates of its applications, the opponent must first establish the facts that support the s. 30(b) ground. An investigator's report concerning the applicant's activities ten years after the filing of the applications is of no relevance. As the applicant's own evidence is not clearly inconsistent with its claim of use, the opponent failed to meet its evidential burden.
7. Unitel International v. Unitel Communications, September 15, 1999 (Martin) Section 30(b)/Confusion Use-based application for UNITEL for telecommunication services and operation of a retail store selling cellular telephones and facsimile equipment, and the installation and servicing of cellular telephones and facsimile equipment. Opposition based, inter alia, on s. 30 (b) because the applicant has not used the mark continuously since the date claimed and s. 16(1) due to confusion with the mark UNITEL previously used by the opponent for radio telecommunication equipment and the repair and maintenance of such goods. Held: Application refused. The s. 30(b) ground succeeded because the opponent evidenced that the applicant's predecessor did not exist for two and half years during the relevant period. The s. 16 ground succeeded because of the resemblance between the wares, services, trades, and marks of the parties.
8. Cummins Engine v. Rom Nicholson, September 15, 1999 (Herzig) Distinctiveness Proposed-use application for RECON for the operation of a business dealing in the sale, maintenance and repair of new and used vehicles. Opposition based, inter alia, on non-distinctiveness due to confusion with the opponent's mark RECON used for rebuilt parts for internal combustion engines and driveline accessories therefor. Held: Application refused. In view of the connection between the applicant's services and the opponent's wares, the Board Member was left in a state of doubt whether it is likely that the public would assume that the applicant's services are approved, licensed, or sponsored by the opponent. Given that the applicant must prove its case on a balance of probabilities, the non-distinctiveness ground succeeded.
9. Caribbean Cultural Committee v. Rita Khan, September 30, 1999 (Partington) Confusion Use-based application for CARIBANA for seasonings, flavours, syrups, farine mixes, condiments, teas, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark CARIBANA registered for entertainment services, namely the arranging, promotion and presentation of a Caribbean cultural festival. Held: Application refused. The opponent evidenced that it licenses vendors to sell food at its festival. Although there is no evidence that the opponent's mark is directly associated with the sale of such food, the Chairperson found that there is at least some connection between the applicant's wares and the opponent's services. Given that and the fact that the marks are identical and the opponent has used its mark for many years, the Chairperson was left in a state of doubt that was resolved in favour of the opponent, in view of the onus.
10. Jean Couzon v. 155686 Canada, September 30, 1999 (Partington) Section 30/Ethical Conduct Proposed-use application for CUISINOX & Design for dinnerware. Opposition based, inter alia, on s. 30 because the applicant had already used its mark as of the date of filing of its proposed-use application. Held: Opposition rejected. Advertisements or promotions bearing the applicant's mark prior to the filing date of the application do not contravene s. 30 as they are not use of the mark pursuant to s. 4(1). (The applicant complained that the activity of the opponent's agent in approaching the applicant to obtain information concerning the applicant's use of its mark was contrary to Québec's Code of Ethics for attorneys. However, the opponent's agents are a firm of patent and trade mark agents, not lawyers, and the Registrar has no control over the ethical conduct of trade mark agents.)
11. Chanel v. Charmelle, September 30, 1999 (Partington) Confusion Proposed-use application for CHARMELLE for cosmetics and jewellery. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark CHANEL registered for toilet preparations and cosmetic products. Held: Application refused. While there appears to be little similarity in appearance between the marks, there does exist a fair degree of similarity in the sounding of the marks. The CHANEL mark is entitled to a broad scope of protection because the opponent's evidence shows that it is well known. The Chairperson also noted that the applicant has not yet started using its mark and concluded that he was left in doubt in relation to the likelihood of confusion. Such doubt was resolved against the applicant in view of the onus.
12. McCain Foods v. Aromatic Foods, September 30, 1999 (Partington) Confusion Proposed-use application for PESO POCKETS for Mexican foods, namely pasta containing a variety of fillings. Opposition based, inter alia, on s. 16 due to confusion with a previously filed application for the mark POCKETS that the opponent uses for frozen sandwich products, namely frozen bread with a filling. Held: Application refused because the applicant has adopted the entirety of the opponent's mark as an element of its mark, the wares are very similar, the opponent has evidenced a family of POCKET(S) marks, and the applicant has not taken any active steps since the filing of its counter statement.
13. Ralston Purina v. Effem Foods, November 10, 1999 (Partington) Deceptively Misdescriptive/Place of Origin of Wares Six applications for WALTHAM & Design for pet food. Oppositions based, inter alia, on s. 12(1)(b). Held: Oppositions rejected. The opponent argued that the marks are deceptively misdescriptive because references to "WALTHAM the world's authority on pet care and nutrition" point not to the applicant but to one or more of the affiliated companies who are collectively known as Waltham around the world – the applicant is not the "world's authority on pet care and nutrition". However, the average Canadian purchaser of pet food would not be aware that other companies own these marks in other countries. Moreover, the average consumer would perceive the reference to WALTHAM in the marks as possibly referring to some entity involved in pet nutrition and the development of pet food formulas, but not involved in the manufacture or sale of pet food. WALTHAM would not be clearly descriptive of the place of origin of pet food because the place of origin of wares refers to where the wares are manufactured.
14. Ralston Purina v. Effem Foods, November 10, 1999 (Partington) Descriptiveness/Distinctiveness Proposed use applications for LA PYRAMIDE D'ALIMENTATION POUR CHATS WALTHAM and LA PYRAMIDE D'ALIMENTATION POUR CHIENS WALTHAM for pet food. POUR CHATS and POUR CHIENS disclaimed. Oppositions based, inter alia, on non-distinctiveness because of the use of similar marks by associated companies in other countries and s. 12(1)(b). Held: Oppositions rejected. The s. 12(1)(b) grounds failed because there was no evidence that the words LA PYRAMIDE D'ALIMENTATION have a descriptive sense. The non-distinctiveness grounds failed because there was no evidence that Canadian consumers would be aware of who owned or used the marks in other countries.
15. Ralston Purina v. Effem Foods, November 10, 1999 (Partington) Descriptiveness/Distinctiveness Proposed use application for WALTHAM DOG NUTRITION PYRAMIDE & Design for pet food. Opposition based, inter alia, on s. 12(1)(b) and non-distinctiveness, the latter because of the use of similar marks by associated companies in other countries and because the mark is adapted to distinguish a dog nutrition pyramid for dog food of WALTHAM and not dog food of the applicant. Held: Opposition rejected. The s. 12(1)(b) ground failed because the mark when considered in its entirety is not descriptive of the character or quality of the wares or of the conditions of or the persons employed in the production of the wares. The non-distinctiveness ground failed because the average Canadian consumer would not be aware of the ownership or use of similar marks by other parties in other countries. Although a Canadian purchaser might well conclude that there is an entity involved in the development of the formulation of the pet food manufactured and sold by the applicant, that alone does not preclude the applicant's mark from being adapted to distinguish the applicant's wares from those of others in the marketplace in Canada.
16. Ralston Purina v. Effem Foods, November 10, 1999 (Partington) Section 30(e) Proposed use application for Pyramid Design for pet food. Opposition based, inter alia, on s. 30(e) because the applicant did not intend to use the mark in the form applied for. Held: Application refused. The evidence showed that the mark had been used with another mark at its base and with extensive wording within the pyramid – this is not use of the plain pyramid applied for. The applicant did not establish that it intended to use the mark applied for, per se.
17. Max Mara Fashion Group v. Jay-Gur Import, November 10, 1999 (Martin) Confusion/Hearsay/State of the Marketplace Use-based application for L.A. BLUES Design for clothing. Opposition based, inter alia, on s. 12(1)(d) due to confusion with I BLUES and three BLUES CLUB marks registered for clothing. Held: Opposition rejected – the marks are not confusing. State of the register evidence showed over 40 third party registrations for clothing trade marks which include the component BLUES. In addition, eleven BLUES.... businesses located in a telephone directory search, when contacted by telephone, stated that they sold clothing (the Board stated that although the hearsay nature of the telephone discussions would not normally allow an inference that a particular business name is in use with certain goods, where a significant number of such enquiries are made, it is reasonable to infer that at least some of the business names canvassed are in active commercial use). It was revealed on cross-examination that the opponent's affiant had no direct knowledge of the activities and history of the opponent and so much of his affidavit was inadmissible hearsay, resulting in there being limited evidence of use of the opponent's marks.
18. Tropicana Products v. Wesergold, November 14, 1999 (Partington) Confusion/Estoppel Application for TROPICALIA for non-alcoholic beverages (including fruit juices) and other fruit or vegetable-based food or drinks. Opposition based, inter alia, on s. 12(1)(d) due to confusion with TROPICANA registered for fruit juices. Held: Application refused. Confusion likely given the degree of similarity in appearance between the marks, the fact that the opponent's mark is well known and that the parties' wares are identical or closely related and would travel through the same channels of trade. The applicant's state of the register evidence was disregarded as the affiant did not conduct the search and did not provide registration pages. Furthermore, only the classes, not the specific wares, of the third party marks were provided and if such wares were alcoholic drinks as opposed to non-alcoholic drinks, they would be of limited relevance. The fact that other TROPIC.... beverage marks were on the Register when the opponent registered its mark does not estop the opponent from arguing that TROPICANA and TROPICALIA are confusing as there is no evidence that any of the third party marks were cited during prosecution of the opponent's application, nor that the opponent ever argued that any of such marks are not confusing with its mark. Moreover, the third party marks are not as similar to TROPICANA as is TROPICALIA.
19. Compusa v. Multitech Electronics, November 18, 1999 (Partington) Confusion Proposed-use application for COMPCANADA for operation of a business dealing in the retail sales, maintenance and installation of office equipment and business machines, software, peripherals and related parts and accessories thereof. Opposition based, inter alia, on s. 16 due to confusion with the mark COMP USA previously used by the opponent for operation retail store services relating to the sale of computer software and accessories. Held: Opposition rejected. The opponent does not operate any stores in Canada but it has shipped some goods to Canadian customers and advertised in magazines that circulate in Canada and on TV that spills over into Canada. The shipment of wares to Canada can be characterized as the performance of one aspect of the opponent's services. However, confusion is not likely because of the inherent weakness of the opponent's mark and the common adoption of the prefix COMP in the computer field.
20. Compusa v. Multitech Electronics, November 18, 1999 (Partington) Confusion Proposed use application for COMPUBANK for operation of a business dealing in the retail sales, maintenance and installation of office equipment and business machines, software, peripherals and related parts and accessories thereof. Opposition based, inter alia, on s. 16 due to confusion with the mark COMP USA previously used by the opponent for retail store services relating to the sale of computer software and accessories. Held: Opposition rejected. In view of the inherent weakness of the opponent's mark and the fact that there has been common adoption of the prefix COMP in the computer area, the differences between the marks are such that there is no reasonable likelihood of confusion between them.
21. Claude Montana v. Montana Silversmiths, November 18, 1999 (Herzig) Descriptiveness/Section 12(2)/Distinctiveness/Confusion Use-based application for MONTANA SILVERSMITHS for belt buckles, bolo ties, necklaces, earrings, scarf pins, collar tips, barrettes, button covers, hat bands, rings, and saddle adornment. Because the mark clearly describes that the wares are produced by silversmiths from Montana, the benefit of s. 12(2) was claimed and the application was approved for the provinces where the mark had acquired distinctiveness namely, Alberta, British Columbia, Manitoba, Nova Scotia, Ontario, Québec, and Saskatchewan. Opposition based, inter alia, on s. 12(1)(b) and non-distinctiveness due to confusion with the mark CLAUDE MONTANA previously used by the opponent for clothing, footwear and accessories such as belts and leather fashions. Held: Opposition succeeded in part – approval of the application restricted to the provinces of Alberta and British Columbia because the relatively low sales in the other provinces do not justify a finding that the mark had become distinctive of the applicant's wares in those provinces as of the material date. The distinctiveness ground failed because the parties' wares are not closely related but are directed to different market segments and would not likely be sold through the same retail outlets. The similarities between the marks are owed solely to the common use of the word MONTANA, with the ideas suggested by each mark differing significantly.
22. Precious Moments v. Precious Memories, November 30, 1999 (Partington) Confusion Use-based application for PRECIOUS MEMORIES for statues and ornamental figurines, etc. and the operation of a business engaged in the purchase and sale of statues and ornamental figurines, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark PRECIOUS MOMENTS registered for a variety of collectibles and giftware items, including statues and ornamental figures. Held: Application refused. Given that there is a fair degree of similarity between the marks as applied to related wares which would travel the same channels of trade, and bearing in mind that the applicant did not submit any admissible evidence or a written argument, the applicant failed to meet its legal onus.
23. Hudson's Bay v. Duvet Comfort, November 30, 1999 (Partington) Confusion Applications for CDN SPIRIT and CDN SPIRIT & Design for skiwear, sportswear and outerwear. CDN disclaimed. Oppositions based, inter alia, on s. 12(1)(d) due to confusion with the mark NORTHERN SPIRIT registered for apparel and accessories. Held: Oppositions rejected. State of the register evidence indicates that consumers are accustomed to seeing clothing trade marks that include the word SPIRIT. Therefore, despite the reputation acquired by the opponent's mark and the overlap in the wares and channels of trade, there is no likelihood of confusion between the marks.
24. The Williams Companies et al. v. William Tel, November 30, 1999 (Folz) Section 30(b)/Confusion Use-based application for WILLIAM TEL for telecommunications services. The applicant originally claimed use since March 9, 1994 but subsequently applied, unsuccessfully, to amend its application to claim use since at least as early as March 14, 1994. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since at least as early as March 9, 1994, as claimed in the application, s. 16 due to confusion with the marks/names WILTEL and WILLIAMS COMMUNICATIONS previously used/made known by the opponents for telecommunications services, and non-distinctiveness due to the opponents' promotion of their marks. Held: Application refused. Opponents are entitled to rely on the applicant's evidence to meet their initial evidential burden under s. 30(b), in which case the opponents must show that the applicant's evidence is clearly inconsistent with the claims set forth in its application. The applicant's affiant swore that use of the mark began on March 14, 1994 and so the s. 30(b) ground succeeded. The s. 16 grounds failed because there was no evidence of use of the opponent's marks/names in Canada and references to such in Canadian newspaper articles do not qualify as advertising and therefore cannot support a conclusion of making known. Such articles are however sufficient to show that the opponents' marks/names have acquired a reputation in Canada sufficient to meet the opponents' onus with respect to the distinctiveness ground. The distinctiveness ground succeeded because confusion is likely given the degree of resemblance between the marks, as applied to closely related services travelling through the same channels of trade.
25. Williams Telecommunications v. William Tel, November 30, 1999 (Folz) Section 30(b)/Confusion Use-based application for WILLIAM TEL for telecommunications services. The applicant originally claimed use since March 9, 1994 but subsequently applied, unsuccessfully, to amend its application to claim use since at least as early as March 14, 1994. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since at least as early as March 9, 1994, as claimed in the application, and s. 16 due to confusion with the mark WILTEL previously used by the opponent for telephone equipment and software. Held: Application refused. Opponents are entitled to rely on the applicant's evidence to meet their initial evidential burden under s. 30(b). The applicant's evidence is clearly inconsistent with the claim set forth in its application as the applicant's affiant swore that use of the mark began on March 14, 1994, and so the s. 30(b) ground succeeded. The s. 16 ground also succeeded because of the similarity between the marks, as well as their related wares/services and channels of trade.
26. Nutribasics v. Clintec Nutrition, December 14, 1999 (Martin) Confusion Proposed use application for NUBASICS Design for nutritional food products, nutritional soups and powdered soups, trace elements, electrolytes and vitamins. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark NUTRIBASICS registered for livestock and pet feed additives. Held: Opposition rejected because of the differences between the wares and trades of the parties and the absence of any reputation of note for the opponent's mark.
27. Vienna Sausage Manufacturing v. Vienna Meat Products, December 14, 1999 (Martin) Distinctiveness Use-based application for VIENNA for various meat products, excluding vienna sausage, and the operation of a business dealing in the manufacture, processing, packaging, and wholesale and retail distribution and sale of meat products, excluding Vienna sausage. Benefit of s. 12(2) claimed to overcome a descriptiveness objection (application restricted to four provinces). Opposition based, inter alia, on non-distinctiveness because of the use of VIENNA by others in the meat industry. Held: Opposition succeeded with respect to the various types of sausage covered by the application, but failed with respect to wieners, bologna, meat roasts, meat loaf, meat pastes, spiced meats excluding salami, smoked and cooked hams, cold cuts excluding salami, patés, roast beef, corned beef, pastrami and the services. The opponent met its evidential burden with respect to VIENNA sausage products by showing that the terms Vienna salami and Vienna sausage are generic for specific meat products and that such wares are available in a number of locations. Although the applicant's sales figures are impressive, they were not broken down by specific product line so the Board Member was unable to conclude that a significant portion of the applicant's sales were of sausage products such that consumers would have been overwhelmingly educated to the trade mark significance of the word VIENNA as applied to sausage products.
28. T.E. Financial Consultants v. MacDonald, Shymko, December 14, 1999 (Partington) Section 30(b) Use-based application for FEE ONLY for comprehensive personal financial advisory services. FEE disclaimed. Opposition based, inter alia, on s. 30(b) because FEE ONLY is not a trade mark within the meaning of s. 2 as it has not been used for the purpose of distinguishing the applicant's services from those of others. Held: Application refused. The words "fee only" have been used by the applicant to describe the manner of payment that it accepts for its financial planning services (e.g. "Fee Only Financial Advisors", "CANADA'S LONGEST-ESTABLISHED FEE-ONLY ADVISORY GROUP"). The words "FEE ONLY" are not identified as being a trade mark when used and do not create an independent impression apart from the accompanying words.
29. The Old Spaghetti Factory Canada v. Spaghetti House Restaurants, December 14, 1999 (Partington) Confusion Application for THE SPAGHETTI HOUSE & Design for food for human consumption based on use and registration abroad. SPAGHETTI disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks THE OLD SPAGHETTI FACTORY registered by the opponent for specialty restaurant services, packaged frozen spaghetti and meat sauce and THE SPAGHETTI WAREHOUSE & Design registered by a third party for restaurant services. Held: Application refused. The Chairperson was left in a state of doubt concerning the likelihood of confusion between THE SPAGHETTI HOUSE & Design and THE OLD SPAGHETTI FACTORY in view of there being some similarity between the marks, the overlap in the nature of the wares and the trade, and the fact that the opponent's mark has become known, particularly in relation to its services. As the onus is on the applicant, this doubt was resolved in favour of the opponent. However, the ground based on confusion with THE SPAGHETTI WAREHOUSE & Design failed because there was no evidence of use of that mark, the applicant's wares differ from restaurant services, and the opponent's evidence of use of THE OLD SPAGHETTI FACTORY limits the scope of protection that can be afforded the third party registration.
30. Noma v. Nomaco, December 30, 1999 (Partington) Confusion Proposed-use application for NOMAFLEX for pipe insulation. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark NOMA registered for a broad range of consumer goods such as electrical wiring devices, automotive products, lighting accessories, etc. Held: Application refused because: the opponent's mark is fairly well known; the marks are very similar in appearance and sounding; the applicant has adopted the opponent's mark as the initial element of its mark; and, although the applicant's wares differ from the opponent's wares, there is an overlap in the channels of trade in that both parties' wares could be sold through hardware stores and building supply retail outlets.
31. Futurekids v. BKW Investments, December 30, 1999 (Partington) Confusion Proposed use application for FS FUTURE SCHOOL & Design for teaching aids and education services. SCHOOL disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the mark FUTUREKIDS previously used by the opponent for teaching materials and education services, all related to computers. Held: Opposition rejected. Confusion not likely given the relatively little similarity between the marks and bearing in mind that state of the register evidence revealed more than 20 FUTURE marks for various wares and services related to those of the parties.
32. Stink v. Salt & Pepper Holdings, December 30, 1999 (Partington) Distinctiveness Use-based application for THE STINKING ROSE for restaurant services. Opposition based, inter alia, on non-distinctiveness because the opponent's mark is well known in Canada. Held: Opposition rejected. The opponent uses its mark in the United States. The evidence showed only passing references to the opponent's mark in Canadian publications, with more references to the expression "stinking rose" meaning garlic than as the name of a U.S. restaurant. The Canadian circulation of U.S. publications referring to the opponent's mark was minimal. Cross-examination of the applicant's affiant revealed that up to 50 people in Vancouver were aware of the opponent's mark (some of the applicant's customers having enquired if they were affiliated with the U.S. restaurant). The Chairperson had doubts as to whether the evidence as a whole was sufficient to meet the opponent's evidential burden but in any event concluded that the applicant had met its legal burden to show that its mark distinguished its services because it had operated its restaurant for almost 14 months prior to the opposition being commenced.
33. Deutsche Telekom v. TVI Interactive Systems, December 30, 1999 (Herzig) Confusion/File Estoppel Use-based application for TVINET Design for computer software for use in accessing global interactive networks and computer database access services. NET disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the mark TNET that was the subject of previously filed applications covering a wide variety of telecommunications equipment and services including computer programming services. Held: Opposition rejected. The applicant has met its onus because the opponent's mark has low inherent distinctiveness, has no reputation in Canada, and has only been used for telephone communication services abroad. The phrase "net" is fairly non-distinctive as applied to telecommunications and letters of the alphabet are also relatively non-distinctive. The primary business of the opponent is providing traditional telephone communications while that of the applicant's is providing web-site design services for the banking and financial industry. During prosecution of its application, the opponent had argued over a citation of TNET owned by a third party on the basis that the third party was primarily a computer manufacturer whereas the opponent is a telecommunications company – the opponent ought not to be able to argue in one proceeding that a virtually identical mark (TNET) will not lead to confusion and then argue in this proceeding that a more different mark (TVINET) will lead to confusion.
1. Ladner Downs v. Superkids Karate, November 10, 1999 (Folz) Use Pursuant to Section 4 THE KARATE KID registered for clothing etc., martial arts instruction..... Held: Registration expunged. The only document provided by the affiant was an advertisement for its SUPERKIDS program that contained the notation "Creators of SuperTotsTM, SuperKidsTM.... The Karate KidTM, We Teach Kids to Fly®". This is not use of the registered mark pursuant to s. 4 as the advertisement does not refer to wares or services being sold under the trade mark THE KARATE KID.
2. Kraft Foods v. Maple Leaf Foods, November 10, 1999 (Folz) Special Circumstances ALL STAR registered for wieners. Held: Registration expunged. The current owner, who acquired the mark in October 1996, had not commenced use as of the date of the evidence, that is November 1998. It did state that use was intended to recommence in the second quarter of 1999 and that the delay was in part due to labour disputes experienced following the acquisition. Although labour disputes might sometimes constitute special circumstances outside the control of the registrant, the registrant has not here provided any details concerning the length of time of the labour dispute or why such dispute was out of its control. The acquisition cannot itself be considered to be a special circumstance and the registrant has failed to show the concrete steps that it has taken to resume use of the mark in the near future.
3. McFadden, Fincham v. Maxwell Taylor's Grill, November 23, 1999 (Savard) Sufficiency of Evidence MAXWELL TAYLOR'S & Design registered for restaurant services. Held: Registration maintained, as there was use during the relevant period. Three restaurants operated under the mark but all were closed part way through the relevant period as a result of the failure of an associated business. Samples of menus and ads were provided. Evidentiary overkill is not required.
4. Koffman Birnie & Kalef v. McGregor Industries, November 23, 1999 (Savard) SUPERSTAR registered for hosiery and a variety of other clothing. Held: Registration restricted to hosiery as the mark is only used with such wares.
5. Smart & Biggar v. Quality Craft Importers, November 23, 1999 (Savard) Sufficiency of Evidence/Normal Course of Trade FORTRESS registered for security hardware. Held: Registration expunged. The evidence filed was inadmissible, as it was not declared before a notary public, commissioner of oaths or other appropriate official. In any event, the evidence would not have maintained the registration because it did not provide facts which would have enabled the Registrar to conclude that the shipments referred to represented sales in the normal course of trade. It is also not clear whether the transactions referred to represent sales or something else.
6. AT&T Wireless Services v. Telus, November 23, 1999 (Savard) Sufficiency of Evidence/Special Circumstances GO MOBILE Design registered for mobile telecommunication services. Held: Registration expunged. The registrant acquired a company and all of its trade marks in 1995 but only realized that the present mark existed in 1998 when it did an audit. Applications for a number of other similar trade marks were then filed. However, the registered mark has not been used during the relevant period and the fact that the registrant has stated that it has no intention of abandoning the mark is not relevant in s. 45 proceedings. No special circumstances were shown that would excuse the non-use.
7. Hughes Etigson v. Park Avenue Furniture, November 23, 1999 (Savard) Deviation from Mark as Registered POSTURE POCKET registered for mattresses, box springs and sofa sleepers. Held: Registration restricted to mattresses as no use shown with respect to other wares. The evidence shows use of POSTURE POCKETS I and POSTURE POCKETS II. The use of the word "pocket" in the plural rather than in the singular is a minor deviation and is not such as to deceive or injure the public in any way. The addition of the Roman numeral "I" or "II" would be perceived as numeral designations identifying specific models of POSTURE POCKETS mattresses and would not detract from the public's perception of the use of the mark POSTURE POCKETS per se.
8. Phillips, Freidman, Kotler v. Acme Bedding & Felt, November 30, 1999 (Savard) Technical Deficiencies POSTURE CARE and POSTURE CARE & Designs registered for mattresses and box springs. Held: Registrations maintained. The fact that the affiant's exhibits were not properly notarized is merely a technicality as the exhibits are properly identified in the affidavit. However, the fact that one of the exhibits is identified as being labels but actually contains additional materials is more serious and the non-label items will be disregarded. The invoices and labels show use of the marks during the relevant time period.
9. Dominion Citrus and Drugs v. Silcorp, November 30, 1999 (Savard) Sufficiency of Evidence COUNTRY FRESH registered for milk and fruit juices. Held: Registration restricted to milk. Use of the mark with lemon flavoured iced tea is not use with fruit juices. The fact that the registrant has located some of its predecessor's labels and order forms referring to the trade mark and "fruit juices" does not confirm that its predecessor made sales during the relevant period.
10. Pro Group v. MRRM (Canada), November 30, 1999 (Savard) Use of the Mark as Registered THE ROYAL BRAND registered for rice and various rice products. Held: Registration expunged. Use of ROYAL by itself does not constitute use of the registered mark because it deletes BRAND which is one of the two dominant elements of the registered mark. The use of an oval containing the words ROYAL BRAND MARQUE encircling the letters MRRM might be perceived by the public in various ways but, because the words ROYAL BRAND do not stand out from the other elements, the Registrar could not conclude that the public would recog |
