Recent Decisions June 2001
I. FEDERAL COURT DECISIONS
(a) Patents
1. R.L.P. Machine & Steel Fabrication v. DiTullio et al., March 27, 2001, FCTD (Heneghan J.) Declaration/Ownership/ Jurisdiction
Application for a declaration that a patent assignment is null and void. The assignment was made from Mr. DiTullio's company to Mr. DiTullio at a time when a security agreement existed that covered the patent Mr. DiTullio signed the document as both the assignee and assignor.
Held: Application dismissed. The applicant refers to a series of contracts in support of its claim that it owns the patent. The validity of the assignment can only be determined upon interpretation of the various contracts and that requires the interpretation and application of provincial law - the Federal Court lacks jurisdiction to do so.
2. Monsanto Canada et al. v. Percy Schmeiser et al., March 29, 2001, FCTD (MacKay J.) Patent Infringement/Patentable Subject Matter/Genetically Engineered Plant Cells/Waiver of Patent Rights
Action for patent infringement. The Monsanto patent concerns genetically engineered plant genes, and plant cells containing those genes which, when inserted in plants, make those plants resistant to glyphosate herbicides such as Monsanto's ROUNDUP product. Monsanto alleged the defendant Schmeiser infringed the patent by planting and selling a canola crop having the patented gene and cells. Schmeiser first noticed the presence of ROUNDUP-resistant canola in 1997 after hand-spraying for weeds at the border of one field. Seed from the field was kept, mixed with other seed and fertilizer, and used to plant the 1998 crop. Samples of canola from the defendants' field were obtained by private investigators, from seed withheld by the local mill, and under court order. Tests of these samples revealed high proportions of ROUNDUP-tolerant plants, and the presence of the patented gene.
Held: Action for infringement allowed. By growing and selling canola from seed which was known or ought to have been known to be ROUNDUP-tolerant, the defendants infringed Monsanto's exclusive rights to use the patented gene and cells. The Court rejected the defence that the defendants did not use the patent because they did not spray their 1998 canola crop with ROUNDUP. It is the taking of the essence of the invention without leave or licence of the owner that constitutes infringement. Here the essence of the claims at issue concerns the patented gene and plant cells containing the gene. The claims do not require the use of ROUNDUP or other herbicide. As well, the Court rejected the defendants' invalidity arguments. The genes and plant cells claimed in the Monsanto patent constitute patentable subject matter. The Plant Breeders' Rights Act does not preclude patenting of an invention relating to a plant that meets requirements under the Patent Act. Furthermore, Monsanto had not lost or waived their patent rights by introducing the invention for unconfined release into the environment. Monsanto undertook a variety of measures designed to control the unwanted spread of canola containing the patented gene and cell, including thorough licensing arrangements, monitoring of authorized growers, and removal of undesired ROUNDUP ready canola. Monsanto is entitled to: (i) a declaration that the patent is valid, without foreclosing any possible claim of invalidity on grounds not considered; (ii) an injunction prohibiting planting of any seed saved from plants which are known or ought to be known to be ROUNDUP tolerant; (iii) delivery up of any plants or seeds known, or which ought to be known, to be ROUNDUP tolerant; (iv) an accounting of profits in an amount to be agreed upon by the parties or to damages; and (v) pre- and post-judgment interest. The conduct of the defendants does not warrant exemplary damages.
3. Glaxo Group et al. v. The Minister of National Health and Welfare et al., April 2, 2001, FCA (Richard C.J., Noël J.A., Evans J.A.) Appeal/Prohibition/Patented Medicines (Notice of Compliance) Regulations
Appeal by Glaxo of an order dismissing an application for prohibition. Glaxo sought to prohibit the Minister from issuing an NOC for cefuroxime axetil tablets to Apotex until after expiry of the Glaxo patent.
Held: Appeal dismissed. The claims of the Glaxo patent require highly pure cefuroxime axetil in substantially amorphous form. Both properties must be present in the medicine utilized for the patent to be infringed. The application judge found that neither property was present in the cefuroxime axetil utilized by Apotex. The judge properly construed the claims, considered and weighed the evidence, and concluded that he was not satisfied that Glaxo had discharged its burden of proof. The judge did not make any palpable and overriding error that would warrant interfering with his findings of fact. In addition, Glaxo contended that Apotex failed to prove it had filed a new drug submission in accordance with the NOC Regulations. Glaxo failed to establish whether and when Apotex filed its submission, but argued that Apotex had direct knowledge of the date of filing and therefore bore the burden of proving its filing date. There is no obligation on Apotex to introduce evidence in support of an issue raised by Glaxo, particularly where Glaxo had other means available to obtain the information and failed to do so. Finally, Glaxo argued that the Apotex NOA was insufficient. Following the issuance of a protective order, Apotex did provide a further disclosure setting out in complete detail the nature of its product. It is permissible to withhold certain information regarding allegations until a confidentiality order has been issued.
4. Apotex v. Eli Lilly Canada and The Minister of Health, April 6, 2001, FCA (Richard C.J., Evans J.A., Malone J.A.) Appeal/Leave to Intervene/Rule 109/Judicial Review Proceeding/Patented Medicines (Notice of Compliance) Regulations
Appeal by Apotex of an order dismissing a motion for leave to intervene. In the main proceeding, Eli Lilly sought judicial review of a decision of the Minister of Health to remove a patent from the register administered under the NOC Regulations.
Held: Appeal dismissed. An appellate court will not disturb a discretionary order of a motions judge simply because it might have exercised its discretion differently. Intervention is permitted under r. 109 of the Federal Court Rules, 1998. The factors relevant to a motion to intervene are set out in C.U.P.E. v. Canadian Airlines International Ltd. [2000] F.C.J. No. 220 [Q.L.]. The motions judge considered r. 109(2) which required Apotex to show that their proposed intervention "… will assist the determination of a factual or legal issue related to the proceeding", and provided reasons for dismissing Apotex's motion. Considering the factors relevant to a motion to intervene in the context of this case, the Court was not persuaded that the decision should be disturbed.
5. Apotex v. Warner-Lambert Canada et al., April 20, 2001, FCA (Noël J.A., Sexton J.A., Sharlow J.A.) Appeal/Joinder/Leave to Intervene/Judicial Review Proceeding/Patented Medicines (Notice of Compliance) Regulations
Appeal by Apotex of an order dismissing a motion to be joined as a party to the proceedings, or in the alternative, for leave to intervene. In the main proceeding, Warner-Lambert sought judicial review of a decision of the Minister of Health concerning the removal of certain patents from the patent register maintained by the Minister under the NOC Regulations.
Held: Appeal dismissed. Apotex claimed that it was directly affected by the Minister's decision because it intends to seek an NOC for a generic version of the drug in question. A present intent to seek an NOC does not establish that an NOC will be sought. It was open to the motions judge to hold that Apotex's interest was not sufficient to justify the order for joinder sought, particularly when regard is had to the confidentiality order in place between Warner-Lambert and the Minister. As to the motion to intervene, the burden was on Apotex to show that its intervention would be of assistance to the Court. The motions judge did not err in concluding that this burden had not been met.
6. Merck Frosst et al. v. The Minister of Health et al., May 1, 2001, FCA (Strayer J.A., Rothstein J.A., Evans J.A.) Appeal /Judicial Review Proceeding/Patent Register/Patented Medicines (Notice of Compliance) Regulations
Appeal by Merck Frosst of an order dismissing an application for judicial review. Merck Frosst obtained an NOC in 1990 authorizing it to market a tablet containing the medicine simvastatin. In 1999 Merck Frosst obtained a patent for two metabolites of simvastatin, and sought to add the patent to the Patent Register maintained under the NOC Regulations. The Minister refused to do so.
Held: Appeal dismissed. Pursuant to s. 4(2)(b) of the NOC Regulations, for a patent to be added to the patent list in respect of simvastatin, it must contain "a claim for the medicine itself". The judicial review judge concluded that the patent did not contain a claim for the medicine itself, and therefore the Minister had correctly refused to add the patent to the register. The judge did not make any error in his decision. The patent cannot be construed as claiming simvastatin. In construing the claims of a patent, a court is not entitled to consider such extraneous matters as the content of a previously filed new drug submission. To disregard the terms of the NOC by treating Merck Frosst's tablets as containing both simvastatin and its metabolites could compromise the ability of the Minister to discharge the important statutory responsibilities for ensuring the effectiveness and safety of new drugs.
(b) Trade Marks
1. Vulcan Northwest and Vulcan Ventures Inc. v. Vulcan Ventures Corp., January 12, 2001, FCTD (Dubé J.) Interlocutory Injunction/Passing Off
Application for an interlocutory injunction restraining the defendant from representing itself as "VULCAN VENTURES" on the ground that it infringes the plaintiffs' trade name "VULCAN VENTURES". The plaintiff companies are U.S. venture capitalists owned by a well-known entrepreneur. The defendant is a Canadian penny stock mining company that recently adopted this name.
Held: Application allowed. The plaintiffs' evidence clearly satisfies the elements of passing off, namely the existence of goodwill, the deception of the public and actual or potential damage. Passing off legislation was enacted mostly to protect the public. The potential for confusion is obvious and much of it may never come to the plaintiffs' attention thus making damages unknown and irreparable. Actual damage need not be established. The defendant's website includes a series of "links" supposedly relating to the defendant but the links are to news stories about the plaintiff companies or their owner. While it is true that highly sophisticated investors may not be confused, it is the impression of the ordinary person that is relevant in a passing off action.
2. United Grain Growers v. Lang Michener, February 20, 2001, FCA (Rothstein, Sexton, Malone J.J.A.) Section 45 Appeal/ Distinctiveness/Purpose of Section 45
Appeal from Trial Division's order upholding a decision that the appellant's mark COUNTRY LIVING be expunged under s. 45. The mark was registered for printed periodicals, namely magazines, and used as the name of a section of a magazine entitled COUNTRY GUIDE. The Registrar held that the evidence did not show use of COUNTRY LIVING for magazines as it did not distinguish the appellant's magazines from those of others.
Held: Appeal allowed. The Registrar's duty under s. 45 is only to determine if the mark was in use in association with the registered wares, not whether the mark was used for the purpose of distinguishing the wares.
3. Ivy Lea Shirt v. 1227624 Ontario, March 27, 2001, FCTD (O'Keefe J.) Opposition Appeal/Seasonal Use
Appeal from Registrar's decision that rejected the appellant's opposition to the registration of the mark CHESTNUT CANOE CO.
Held: Appeal dismissed. The Court rejected the appellant's argument that seasonal use is not continuous use in the normal course of trade.
4. N.V. Sumatra Tobacco Trading v. Imperial Tobacco, March 27, 2001, FCTD (O'Keefe J.) Opposition Appeal/Representation of a Trade Mark/Section 30(h)/Trade Mark Drawing/State of the Register/Section 30(i)
Appeal from Registrar's decision that refused the registration of the mark HERO & Design pursuant to an opposition by the respondent. As its drawing, the applicant submitted a photocopy of an unfolded cigarette package with all six sides of the package visible.
Held: Appeal dismissed. The Opposition Board did not err when it ruled that the applicant had not met its legal burden in relation to s. 30(h) of the Trade-marks Act. The mark used by the applicant is wording and other matter applied to a three-dimensional, six-sided cigarette package whereas the trade mark applied for consists of wording and other matter contained within a two-dimensional 20-sided figure. It is important that the drawing accurately depict the trade mark. It matters not that there may be other marks on the Register that used drawings of this nature; the Opposition Board is not bound by the state of the Register if the earlier registrations were made in error or without an opposition being filed with respect to the "drawing". The Board also did not err in rejecting the application pursuant to s. 30(i) as the applicant could not have been satisfied that it was entitled to use the mark in the manner contemplated by s. 4 given that it does not intend to sell its cigarettes in an unfolded package.
5. Nature's Path Foods v. Quaker Oats, April 20, 2001, FCTD (Tremblay-Lamer J.) Section 57/Expungement/Confusion
Application to expunge the registration for HONEY PUFFS for breakfast cereal under s. 57(1) of the Trade-marks Act. The applicant claims prior long-standing use of MULTIGRAIN HONEY PUFFS for breakfast cereal.
Held: Application granted. At the material date, the marks were confusing. Consumers may well regard the differences between the marks as compounding rather than eliminating confusion.
(c) Practice
1. Oakley v. Shoppers Drug Mart, March 22, 2001, FCTD (Blanchard J.) Motion to Strike and for Particulars/Remedies for Copyright Infringement/Injunction Restraining Application to Register Infringing Mark/Proof of Title in Copyright
Motion to strike claims for, among other things, conversion damages for copyright infringement and for particulars of how title in copyright moved from the authors to the plaintiff.
Held: Motion granted, in part. The plaintiff agreed to amend its claim to delete a claim for an accounting of "all income" arising from the infringement of copyright. The 1997 amendments to the Copyright Act eliminated any right to damages for conversion so the proper claim is for an accounting of profits, not income. Sections 34(1) and 35 of the Copyright Act provide the remedies available for copyright infringement and that part of the profits that the infringer has made that were not taken into account in calculating damages may be awarded.
The defendant argued that its trade mark applications were irrelevant to the issues of passing off or infringement, relying on the decision of the Federal Court in Rothmans v. Imperial Tobacco [1997] F.C.J. No. 840. In that decision, a motion to strike paragraphs of a statement of claim seeking injunctive relief to restrain the defendants from registering certain trade marks was dismissed on the ground that the Court lacked jurisdiction to award such relief. It was held in the Rothmans case that the Registrar of Trade-marks is the first person who must decide whether a trade mark may issue. The Court may be engaged to review the matter only if the Registrar was alleged to have made a wrong decision. However, here the injunctive relief being sought deals with a registered trade mark. The pleadings relating to the trade mark applications are relevant as they set out issues which might be considered at trial and which will not prejudice the trade mark applications.
No particulars of how the title to the copyright moved from the original authors to the plaintiffs were required because the copyright was registered to the plaintiff and the registration had been produced. The production of the certificate created a rebuttable presumption of title and ownership. Absent evidence to the contrary, chain of title may be irrelevant (Circle Film Enterprises v. C.B.C. [1959] S.C.R. 602).
2. Johnson & Johnson et al. v. Arterial Vascular Engineering Canada, April 2, 2001, FCTD (Blanchard J.) Appeal from Prothonotary's Order/Filing Additional Evidence
Appeal by plaintiffs from a Prothonotary's decision requiring a co-inventor of the patent at issue to attend for a second three day round of discovery.
Held: Appeal dismissed. The Prothonotary had held that the plaintiffs had failed to show that the discovery would be "oppressive, vexatious or unnecessary" as set out in r. 243. On the appeal, the plaintiffs sought to file evidence of what had transpired at the hearing before the Prothonotary. This evidence was ruled inadmissible. The appeal was to be based on the record of decision of the Court below. Evidence of the proceedings below may be admissible to prove misconduct by the Prothonotary such as bias, failure to listen, etc. but not to supplement the factual record.
3. Canada Post v. Epost Innovations, April 6, 2001, FCTD (Hargrave P.) Motion to Strike/Constitutionality of Section 9(1)(n)(iii) of the Trade-Marks Act/Charter of Rights/Bill of Rights
Canada Post had claimed that Epost's use of CYPOST and EPOST as part of trade names or domain names was likely to cause confusion with Canada Post's official marks. In its defence, Epost claimed that the prohibition against adoption of marks likely to be mistaken for official marks which is found in s. 9(1)(n)(iii) of the Trade -Marks Act was unconstitutional on a number of bases and sought a declaration that by acting as it had in adopting the marks CYBERPOSTE and CYBERPOST, Canada Post acted contrary to honest or commercial usage in Canada, as prohibited by s. 7(e) of the Trade-Marks Act. Canada Post moved to strike the claims based on s. 7(e) and the claim that s. 9(1)(n)(iii) is unconstitutional.
Held: Motion granted in part. Epost's claims that by giving notice of the alleged adoption and use of the marks CYBERPOSTE and CYBERPOST, Canada Post had adopted a "business practice contrary to honest commercial usage in Canada" contrary to s. 7(e) were struck because the case law has clearly held that s. 7(e) is unconstitutional.
Epost's claims based on the argument that s. 9(1)(n)(iii) is ultra vires the federal government because the definition of public authority is so broad that the section constitutes an encroachment on the provincial powers in relation to property and civil rights were struck. The Prothonotary cited Hugessen J.A.'s reasons in Canadian Olympic Association v. Konica Canada (1992), 39 C.P.R. (3d) 400 to the effect that s. 9 rounds out and completes the scheme of the Act.
Epost's claims based on the protection of free speech in s. 2(b) of the Charter were permitted to proceed to trial. Epost successfully argued that while the Charter does not protect corporations, the Bill of Rights, which applies to corporations and protects corporate speech, retained its force and effect after the Charter was brought in (Sing v. Minister of Employment and Immigration, [1985] 1 S.C.R. 177). The Prothonotary held that reliance on the Charter was arguable and noted that in RJR-McDonald v. Canada, [1995] 3 S.C.R. 199, tobacco legislation restricting advertising was struck down on the grounds that it violated s. 2(b) of the Charter.
The Prothonotary found that the issue of whether s. 9(1)(n)(iii) deprives businesses and persons of their equality rights under s. 15(1) of the Charter had not been conclusively determined. Epost's claims that s. 9(1)(n)(iii) violates s. 15(1) and should be struck as unconstitutional were permitted to proceed to trial. Epost's argument was that s. 9(1)(n)(iii) discriminates against ordinary businesses. In addition, since the section extends protection to public authorities rather than protecting the good will of trade marks, the true objective of the Trade-Marks Act, there is no rational connection being the impugned section of the Act and its purpose. Therefore, there could be no justification under s. 1 of the Charter for the discrimination.
Epost claimed that its right under s. 1(a) of the Bill of Rights to "enjoyment of property, and the right not to be deprived thereof except by due process of law" had been violated since, contrary to s. 2(e) of the Bill of Rights, it had not been given the right to a fair hearing before the official marks were adopted. This claim was permitted to proceed to trial. The Prothonotary found that the tentative decision of the Trade Marks Opposition Board in I.C.B.C. v. International Commercial Bank of China (1994), 56 C.P.R. (3d) 555 doubting that a trade mark was the sort of property right contemplated by the Bill of Rights and finding that a trade mark application was more of a voluntary request to be granted additional rights flowing from trade mark registration, did not make it plain and obvious that the claim could not succeed. Canada Post argued that Madame Justice Reed's decision in Magnotta Winery v. Vintners Quality Alliance (1999), 1 C.P.R. (4th) 68, left open the possibility of a hearing in s. 9 cases, under s. 56 of the Act or by way of judicial review pursuant to s. 18.1 of the Federal Court Act. The Prothonotary noted that the possibility of appealing the decision to register an official mark does not detract substantially from the argument that the expropriation or appropriation of the mark was done without Epost having a chance to be heard.
4. Abbott Laboratories v. Lifescan Canada, April 9, 2001, FCTD (Muldoon J.) Motion to Strike/Pleading of Delay and Acquiescence in Patent Case
The defendant pleaded the defence of delay, acquiescence and estoppel based on allegations that the plaintiff had known of sales of products similar to those of the defendant and had taken no steps to enforce its patent rights and had thereby represented to the defendant that they did not regard the defendant's product to infringe. The plaintiff had brought motions to strike and the Prothonotary held that such a defence could proceed to trial. The plaintiff appealed.
Held: Appeal dismissed. The Court rejected the plaintiff's argument that in order to plead delay based on sales by a third party, the defendant must allege that the third party products were identical or at least not substantively different (when viewed in light of the patent claims) or that the third party product infringed the patent in suit. It was sufficient to plead that the third party products were similar to the defendant's product. The defence was to be amended to describe all of the defendant's products and the third party products in the same way as the plaintiff had described its own product in the Statement of Claim.
5. Caricline Ventures v. Farside Clothing et al., April 18, 2001, FCTD (O'Keefe J.) Solicitor Client Privilege/Extent of Waiver of Privilege
At trial, the defendants' witness adduced evidence in chief about communications with its solicitors regarding a trade mark application for the FARSIDE trade mark. The defendants agreed that there had been a waiver of privilege and the plaintiff sought production of the entire file relating to the trade mark application. The defendants' solicitors had kept a single file for several trade mark applications and the litigation and prior to producing the file removed documents that did not relate to the FARSIDE application.
Held: Motion granted, in part. O'Keefe J. commented that solicitor client privilege is a most important part of our adversarial legal process and it should only be considered to be waived to the extent that will ensure the plaintiff is treated fairly. He cited Smith v. Jones [1999] 1 S.C.R. 455 at 474-476 in which Cory J. discussed how solicitor client privilege, while once a rule of evidence only, had now become a substantive rule. The waiver of privilege in respect of the FARSIDE trade mark application did not constitute a waiver of privilege in respect of other trade marks discussed in the same file. Similarly, the inclusion of litigation documents in the FARSIDE trade mark file did not constitute a waiver of privilege in those documents. The process by which the plaintiff was permitted to discover the documents in which privilege had been waived was for the defendant to file a supplementary affidavit of documents. If the plaintiff felt that further discovery was required after having further production, it was invited to make representations to that effect.
II. OTHER COURT DECISIONS
1. Molson Canada v. Oland Breweries, January 31, 2001 OSCJ (Kealey J.) Passing Off/Section 7(b) Trade-marks Act/Section 19 Trade-marks Act/Deception
Molson seeks injunctive relief and damages, claiming that the marketing of Oland's EXPORT brand beer in Ontario constitutes passing off and is contrary to s. 7(b) of the Trade-Marks Act. Molson has sold its EXPORT beer in Ontario for many years. Oland has sold its EXPORT beer in the Maritime provinces for many years but only recently introduced it into Ontario. Oland claims that s. 19 provides it with a complete defence because that section gives it the exclusive right to use its registered trade mark (its "Export" beer label) throughout Canada.
Held: Action dismissed. The mere fact of registration is no defence to a passing-off action but Molson has failed to substantiate its case. In a passing off or s. 7 action, the plaintiff has the onus regarding confusion. To succeed in the passing off claim, Molson must show that 1) there was "some unethical, underhanded surreptitious conduct on the part of Oland designed to capture an Ontario market share by misleading or deceiving the consumer into some confused state wherein they might consider Oland's "Export" to be a Molson's product" and 2) there was confusion or a likelihood of confusion as a result of the conduct. Confusion pursuant to s. 6 is insufficient to prove passing-off. Section 6 is stated to be "for the purposes of this Act"; it is not the standard applicable to the common law tort. Section 7 dictates consideration of confusion in the context of an unfair business practice. Oland did not imitate Molson's wares in some way in order to create confusion.
2. Polansky Electronics v. AGT et al., February 13, 2001 ACA (Fraser C.J.A., Conrad J.A. and Bielby J. (ad hoc)) Patent Infringement/Appeal/Claim Construction
Appeal from decision that held that two interface devices developed by the defendant Telus infringed Polansky's patent for an interface device.
Held: Appeal allowed, trial judgment set aside and the matter remitted for a new trial. The main question is whether the "hybrid circuit" used in Telus's devices is different from the "switch means" and "control means" described in the Polansky patent. The trial judgment failed to determine which elements are essential in the Polansky patent and did not consider or resolve the alleged equivalence of the "hybrid circuit" and the "switch means"/ "control means"; this constitutes reviewable error. A new trial is necessary because the appeal court is unable to rationalize the contradictions amongst the experts without a credibility assessment.
Dissent (Conrad J.A.): Although it is desirable to explicitly construe a patent, where a judgement does not expressly do so, one should examine the reasons and conclusions to determine whether the patent was implicitly construed in a manner that is sustainable. The trial judge implicitly construed the patent in the manner urged by Polansky and he was correct to do so.
3. Norigen Communications v. Ontario Hydro Energy, March 1, 2001 OSCJ (Blair J.) Costs/Assessment/Counsel Fees
Norigen's motion for an interlocutory injunction to restrain Ontario Hydro from using ONSOURCE was dismissed with costs. The parties could not agree as to costs and so they made submissions to the motions judge concerning costs.
Held: Given the considerable detail and minutiae supporting the costs claim, costs must be assessed, not fixed. It is not the function of a motions judge to assess costs. The Court was however willing to give directions to the assessment officer with respect to two issues that were in contention, namely whether the time spent by W. Lee Webster (a partner at Osler Hoskin & Harcourt LLP with expertise in intellectual property matters who helped prepare the case but who also was a witness) should be recoverable as part of the respondent solicitors' "preparation time"; and whether the respondent is entitled to recover more than one "counsel fee" at the hearing when only lawyer was gowned and presented argument. Mr. Webster's time spent as witness (preparing his affidavit and preparing for and at cross-examination) is not time which is properly included in preparation time for the motion. However, the balance of his time is properly included in "preparation time" for the motion. The respondent is only entitled to recover for one counsel fee on the motion. A "counsel fee" may not be awarded for solicitors who attend at Court to assist and give instructions, but who are not gowned.
4. Itravel2000.com v. J. H. Fagan, March 12, 2001 OSCJ (Chadwick J.) Domain Names/Cybersquatting/Interlocutory Injunction
Application for an interlocutory injunction to restrain the defendant from selling or otherwise encumbrancing or dealing with or using the Internet domain name "itravel.ca". The plaintiff, who is in the travel industry, has used ITRAVEL since 1998. The defendant, who is in the windshield repair industry, registered the domain name "itravel.ca". Both parties have Canadian trade mark applications pending. The defendant has offered to sell the domain name to the plaintiff for a large sum.
Held: Interlocutory injunction granted. There is a serious issue to be tried, namely the ownership of the Internet domain name "itravel.ca". The use or the sale to a third party of the domain name would cause the plaintiff irreparable harm and the balance of convenience favours the plaintiff.
5. Saskatoon Star Phoenix Group v. Steven Noton, March 28, 2001 SCQB (Laing J.) Cybersquatting/Damages/Passing Off/Domain Names
Request for an assessment of damages and an order for permanent injunctive relief. The plaintiff's claim of "passing off" brought against the defendant has been noted for default. The plaintiff operates a website under the domain name "www.thestarphoenix.com". The defendant registered the domain name "http:saskatoonstarphoenix.com" and created a website that was almost identical to that of the plaintiff but with different advertisements. The defendant used metatags aimed at misdirecting potential users of the plaintiff's site to its site. The defendant is in the business of selling domain names.
Held: Injunction granted; defendant ordered to transfer the domain name to the plaintiff. The plaintiff has established all three elements of passing off. Considering the short period of time the passing off occurred and the minimal damage to the plaintiff's goodwill and reputation, general damages of $5,000.00 were awarded. Punitive damages were not awarded because the defendant is young and thought that the purchase and resale of domain names was a legitimate business. Many others have thought this was the case and it is only recently that case law has issued making it clear that it is not. The plaintiff was awarded more than party and party costs ($7500) as the defendant should have determined his legal position after receiving the cease and desist letter rather than simply continuing his activities.
III. OPPOSITION BOARD DECISIONS
1. Credit Union Central v. Bank of Montréal, January 19, 2001 (Herzig) Confusion
Proposed-use application for ACCOUNTLINK for services in connection with brokerage accounts in the nature of banking, investment and securities. Opposition based, inter alia, on s. 16 due to confusion with the mark ACCULINK previously used for the provision of electronic funds transfer services, financial electronic transaction services and electronic provision of financial information.
Held: Opposition rejected. Confusion not likely particularly because purchasers of ACCOUNTLINK services are sophisticated clientele who have already chosen to purchase the applicant's INVESTORLINE brokerage services; they would therefore be fully aware that ACCOUNTLINK services emanate from the brokerage discount provider, namely the applicant.
2. Metro-Goldwyn-Mayer v. Stargate Connections, January 29, 2001 (Bradbury) Confusion
Use-based application for STARGATE for internet services namely, web site development, web site publishing, namely: design for web sites, internet marketing assistance and internet connection. Opposition based, inter alia, on s. 16 due to confusion with the mark STARGATE for which an application had previously been filed for the production, distribution and screening of a feature film and a variety of wares.
Held: Opposition rejected. The fact that both parties operate web sites to promote their wares/services is not a significant factor given the differences between the parties' businesses/services. The opponent's computer-related wares, e.g. computer screens and interactive CD ROM storybooks, are not particularly related to the applicant's services.
3. The Investment Centre Financial Group v. Direct Line Insurance, January 29, 2001 (Bradbury) Confusion
Making known application for Telephone Design for insurance services, loan services, income protection services, and various insurance services. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s marks PHONECODE, CITIPHONE, PHONE 'N PAY and ALARM CENTRAL & Telephone Design registered for financial institution services, banking services and insurance services.
Held: Opposition rejected because of the inherent weakness of all of the marks, the lack of evidence of acquired distinctiveness, and the low degree of resemblance between the marks.
4. Saramar v. V.D.K. International, February 1, 2001 (Partington) Confusion/ Average Bilingual Canadian
Application for KADO based on use and registration abroad for confectionary; preparations made from cereals, chocolate, citrus; dried and cooked fruits and on proposed use for confectionary products, namely chocolate bars and energy bars containing cereals, chocolate, citrus and dried and cooked fruits. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark KAYO registered for chocolate syrups and powders convertible into food beverages and also used as foods and food flavorings.
Held: Application refused. The Chairman was left in doubt as to the likelihood of confusion because there is some similarity in appearance between the marks as applied to wares that are generally food products that could travel through the same channels of trade. The average bilingual Canadian might be just as likely to sound KADO in a manner similar to the sounding of KAYO as to sound it differently.
5. Advance Magazine Publishers v. Victoria Vogue, February 16, 2001 (Partington) Confusion/Coexistence as Surrounding Circumstance
Use-based application for VICTORIA VOGUE for cosmetic applicators, pads and brushes, namely brushes, powder puffs, sponges, cleansing pads and cotton swabs. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark VOGUE registered for magazines and patterns.
Held: Opposition rejected despite the fact that the opponent's mark has become well known in Canada in association with magazines. The marks only bear some similarity in appearance and sound and the evidence of more than 20 years coexistence without evidence of confusion is a relevant surrounding circumstance.
6. Molson Breweries v. Anheuser-Busch, February 16, 2001 (Partington) Confusion
Applications based on proposed use and use and registration abroad for MICHELOB GOLDEN DRAFT and MICHELOB GOLDEN DRAFT & Design for beer. GOLDEN and DRAFT disclaimed. Oppositions based, inter alia, on s. 12(1)(d) due to confusion with the mark GOLDEN registered for alcoholic brewery beverages.
Held: Oppositions rejected. There is very little similarity between the marks. The evidence of use of the word GOLDEN on two other parties' beer in Canada is a relevant surrounding circumstance, whereas evidence of use of the word GOLD on beer is of little relevance. The opponent's mark is inherently weak and has only been shown to have become well known in Canada in combination with the house mark MOLSON.
7. Amway v. Nutravite Pharmaceutical, February 16, 2001 (Martin) Confusion/ Admissibility of Trade Mark Searches
Proposed-use application for NUTRAVITA for vitamins, minerals and herbs for retail sale through drug stores, pharmacies and health food stores. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark NUTRILITE registered for vitamin and mineral food supplements etc.
Held: Opposition rejected in view of the inherent weakness of the marks and the common adoption of similar marks by third parties, and notwithstanding the reputation associated with the opponent's mark. The opponent objected to the admissibility of evidence concerning a trade mark search because the search was conducted of a database owned by a third party; the Board Member nevertheless admitted the results as being reliable because the Trade-marks Office provides the information for the third party database and relies on it itself in its own public search room.
8. Canada Post v. IBAX, February 20, 2001 (Martin) Section 30/Ordinary Commercial Term/Descriptiveness/Canada Post Corp-oration Act/Confusion
Proposed-use application for COMPUMAIL for computer software; software designed to assist people who targets [sic] and delivers [sic] addressed and unaddressed mail to specific homes and/or geographical locations. Opposition based, inter alia, on s. 30 (b) and (e) because the applicant used the mark prior to the filing of its application, s. 30(a) because "computer software" is not an ordinary commercial term, s. 12(1)(b) because the mark is clearly descriptive of a computer application for use in association with mail, s. 30(i) because use of the mark is contrary to the Canada Post Corporation Act, s. 12(1)(d) due to confusion with the mark MAIL POSTE & Design registered for postal services, and s. 9(1)(d).
Held: Application refused. The s. 30(b)/(e) ground succeeded because the applicant's evidence suggested that the mark had been previously used. The s. 30(a) ground of opposition succeeded with respect to "computer software" because that description is not meaningful in the absence of more specifics such as the type of software or the purpose for which it has been designed. The s. 12(1)(b) ground failed because the mark only suggests that the software allows users to computerize their mailing operations; it does not clearly describe the function of the software, i.e. to assist in targeted mailings. The s. 30(i) ground succeeded because the applicant's use would contravene s. 58 of the CPCA given that the parties provide similar wares and services under similar marks. The s. 12(1)(d) ground succeeded because the opponent's mark is well known whereas the applicant's mark is not, the wares and services overlap, there is a fair degree of resemblance between the marks, the opponent owns a family of marks and the applicant's evidence of third party use of the word MAIL in trade marks or trade names was largely inadmissible. The s. 9(1)(d) ground succeeded because the opponent established that it is a Crown corporation, that consumers often associate the word "mail" with it, and that consumers are aware that one of its functions is the provision of volume mail services and customized mailing services.
9. Tundra Knitwear v. Reltec, March 26, 2001 (Bradbury) Confusion
Proposed-use application for RTEC for telephone, cable TV and multi-media transmission and loop electronic products and systems for narowband [sic], wideband and broadband requirements… Opposition based, inter alia, on s. 12(1)(d) due to confusion with the trade mark R-TEC registered for manufactured wool fabric.
Held: Opposition rejected. Confusion not likely despite the high degree of similarity between the marks because of the huge differences between their associated wares.
10. General Housewares v. Fiesta Barbeques, March 28, 2001 (Bradbury) Descriptiveness/Material Date
Proposed-use application for GRILLGEAR for barbeque accessories. Opposition based, inter alia, on s. 12(1)(b).
Held: Application refused. The opponent's evidence shows that others have used the words "grill gear" to describe barbecue equipment. The Hearing Officer did not accept the applicant's argument that the material date ought to be the date of filing of the application, as opposed to the decision date, but in any event noted that the outcome would be the same as of either date.
11. Lotte Confectionery v. Tong Yang Confectionery, March 28, 2001 (Bradbury) Descriptiveness/Deceptively Misdescriptive
Proposed-use application for CHOCOPIE & Design for chocolates, ice-creams, wafers, caramels, candies, breads, cakes, chewing gums, cookies, pies, puddings, pastries. PIE disclaimed. Opposition based, inter alia, on s. 12(1)(b) because a corresponding application in Korea was refused on the ground that the mark was descriptive, the word CHOCO is recognized in English as an abbreviation of the word CHOCOLATE, and the mark does not involve any distinctive component.
Held: Application refused with respect to "pies"; opposition rejected with respect to remaining wares. The opponent filed a dictionary entry listing CHOCO as an abbreviation for CHOCOLATE and the applicant filed no evidence that enabled the Hearing Officer to be satisfied that an ordinary pie consumer would not respond to CHOCOPIE as describing a "chocolate pie". The mark is not deceptively misdescriptive of the remaining wares because at most the mark suggests that such wares have a flavour reminiscent of chocolate pie.
12. Champagne Moët & Chandon v. Chatam International, March 28, 2001 (Partington) Confusion
Application for CANTON for liqueur based on use and registration abroad. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks MOËT & CHANDON and CHANDON registered for champagne, sparkling wine and wine.
Held: Opposition rejected because confusion is unlikely. The applicant's mark possesses a fair degree of inherent distinctiveness with respect to liqueurs even though it has a dictionary meaning in both French and English and may suggest to some consumers a connection with Cantonese-style food. The opponent's marks possess little inherent distinctiveness because they are the surnames of the individuals involved in the development of the champagne house. Only the opponent's MOËT & CHANDON mark has become known to a significant extent in Canada. There is no similarity between MOËT & CHANDON and CANTON and only a little similarity between CHANDON and CANTON. The parties' wares differ even though they may travel the same channels of trade.
13. Molson Breweries v. Anheuser-Busch, March 28, 2001 (Partington) Confusion/Section 30(e)
Proposed-use application for MICHELOB GOLDEN DRAFT for wearing apparel and other merchandise. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks GOLDEN registered for beer and MOLSON GOLDEN & Design registered as a certification mark for a variety of wares and s. 30(e).
Held: Opposition rejected. The opponent's GOLDEN mark is clearly descriptive of beer but has become well known in combination with the house mark MOLSON. Although beer differs from the other wares, they may share channels of trade because the applicant's wares are intended to be merchandising wares related to its beer. There is little similarity between MICHELOB GOLDEN DRAFT and MOLSON GOLDEN & Design. There is more similarity between MICHELOB GOLDEN DRAFT and GOLDEN but state of the register evidence shows that there has been relatively common adoption of GOLDEN as a mark for wares similar to those applied for by the applicant. Confusion therefore not likely. Re s. 30, the fact that the mark may appear on the front of a t-shirt, as opposed to on its label, does not clearly show that the applicant does not intend to use its mark as a trade mark.
14. George Payne v. Top Star Distribution, March 28, 2001 (Partington) Confusion/Sufficiency of Evidence
Use-based application for ALWAZAH TEA & Swan Design for tea. Opposition based, inter alia, on s. 16 due to confusion with the mark Swan Design previously used for tea.
Held: Opposition rejected. The opponent's evidence was insufficient to meet its evidential burden. In particular, the opponent failed to establish that any use of the Swan Design mark was by it.
15. D.J. Enterprises v. One Stop Vacuum Centre, March 30, 2001 (Folz) Section 30(b)/Confusion
Use-based application for ONE STOP VACUUM CENTRE LIMITED for operation of a retail outlet for the sale of vacuum cleaners and sewing machines and parts and accessories therefor and related repair and maintenance services. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since the date claimed and s. 16 due to confusion with the mark 1 STOP previously used with similar services.
Held: Application refused. The s. 30(b) ground succeeded because the opponent filed evidence showing that the incorporation of the applicant occurred after the date of first use claimed and the applicant did not file any evidence concerning its first use of its mark. The s. 16 ground of opposition succeeded because the Board Member was left in a state of doubt respecting the issue of confusion.
16. Saskatoon Blades Hockey Club v. KC Holdings, March 30, 2001 (Folz) Confusion
Application based on use and registration abroad for KC BLADES & Design for playing uniforms, sports equipment, namely hockey sticks and pucks, and entertainment services in the form of professional ice hockey games and exhibitions. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark BLADES Design registered for similar wares and services.
Held: Application refused primarily because of the resemblance between the parties' marks and trades and the applicant's apparent lack of interest in the proceedings. Although the applicant's mark includes the letters KC, such letters are so stylized as to be unobvious to the public. Although the applicant's services pertain to professional ice hockey while the opponent's services pertain to a junior hockey team, the league in which the opponent's team plays is a feeder to the NHL.
17. Tundra Knitwear v. Reltec, April 4, 2001 (Partington) Confusion
Proposed-use application for OASIS & Design for customizable computer software… point of service and automatic teller machine software for the financial, retail and government industries; consulting services, namely plastic (card) processing, online transaction processing and customizable computer software consulting to financial, retail and government industries. Opposition based, inter alia, on s. 16 due to confusion with a previously filed application for OASIS for a broad range of wares and services including "business consultation services".
Held: Application refused with respect to the services; opposition rejected with respect to the wares. The applicant's consulting services appear to be somewhat similar to the opponent's business consultation services and there could be a potential overlap in the channels of trade associated with these services.
18. Yves Saint-Laurent International v. Comité Saint-Laurent des Joailliers Créateurs, April 9, 2001 (Herzig) Section 30/Lawful Association/Self-serving Services/ Confusion
Proposed-use application for COMITÉ SAINT-LAURENT & Design for jewellery made of precious metals and fine stones and distribution, production, design in the field of jewellery. Opposition based, inter alia, on s. 30 because the applicant is not a legal entity that can apply for a trade mark registration and because the services are not stated in ordinary commercial terms, and on s. 12(1)(d) due to confusion with the mark YVES SAINT-LAURENT registered for inter alia jewellery.
Held: Application refused. Both s. 30 grounds succeeded. It is entirely unclear if the committee that has applied to register the mark is a lawful association, that is whether it is a legal entity capable of suing and being sued in its own name, capable of entering into contracts and capable of holding title to real and personal property. The services are intended to benefit the applicant, not a third party. The Board Member was left in a state of doubt with respect to the issue of confusion, resulting in the s. 12(1)(d) ground succeeding given that the onus lies on the applicant.
19. Teraoka Seiko v. Digi International, April 17, 2001 (Martin) Confusion
Proposed-use applications for DIGI INTERNATIONAL and DIGI & Design for microcomputer hardware for use in connection with multi-user systems and local area networks… and microcomputer software. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark DIGI registered for various scales, printers and computer peripheral equipment.
Held: Applications refused because the Board Member was left in a state of doubt concerning the likelihood of confusion. In general, the products of the parties are not the same but there is some potential overlap because the opponent's registered wares include computer-related items including a computer-based store automation system. There is also a potential connection between the goods of the parties as the applicant's wares could support some of the opponent's wares. If the applicant had been able to evidence common use of DIGI-prefixed marks in the trade, the outcome may have been different.
20. York Barbell v. ICON Health & Fitness, April 21, 2001 (Bradbury) Descriptiveness/Amendment to Claim the Benefit of Section 14
Application for SPACE SAVER for exercise equipment, namely treadmills, rider-style exercise machines and stationary cycles based on use. Opposition based, inter alia, on s. 12(1)(b).
Held: Application refused because the everyday user or purchaser of exercise equipment is likely to immediately respond to the words SPACE SAVER as indicating that the equipment takes up less space than traditional equipment. Other traders might wish to use similar terms to describe their exercise equipment. After an oral hearing was conducted, the applicant amended its application to claim the benefit of s. 14. Although the applicant is entitled to so amend its application, it is not appropriate to allow the applicant to rely on s. 14 as a defence in these proceedings, given the timing of the amendment.
21. Mutual Investco v. Knowledge is Power, April 23, 2001 (Partington) Confusion/Distribution of Wares Without Charge/Section 4(1)/Distinctiveness
Use-based application for KNOWLEDGE IS POWER for newsletters and written instructional material and conducting seminars, conferences, classes, workshops and the provision of educational materials relating to the insurance and financial services industries. Opposition based, inter alia, on s. 16 due to confusion with the mark KNOWLEDGE IS POWER previously used for printed and electronic publications and computer software dealing with financial services and non-distinctiveness.
Held: Application refused. The opponent distributed brochures bearing KNOWLEDGE IS POWER to its independent sales representatives who in turn distributed them to potential customers of the opponent's mutual funds, all without charge. The free distribution to the public of a publication in association with a trade mark arguably constitutes trade mark use within s. 4(1), but the distribution of the brochures to the opponent's licensed agents is not a distribution in the normal course of trade to the public. The opponent therefore failed to establish that it had used KNOWLEDGE IS POWER as a trade mark prior to the applicant's date of first use. However, the non-distinctiveness ground of opposition succeeded, both because it has a later material date and because the opponent's use need not necessarily qualify as use under s. 4(1) under such ground of opposition.
22. Aetna Life Insurance et al. v. S.N.J. Associates, April 23, 2001 (Folz) Section 30/Oral Licence/Certification Mark/ Descriptiveness
Application for HEALTH INSURANCE for vitamins and mineral supplements… snack foods… vitamins and dietary supplements. HEALTH disclaimed. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark in association with vitamins and mineral supplements and s. 12(1)(b).
Held: Opposition rejected with respect to all wares other than "vitamin and mineral supplements". Compliance with the Consumer Packaging and Labelling Regulations is not relevant with respect to the issue of whether the applicant has shown use of its mark pursuant to s. 30(b). The Board Member inferred that the mark was used under an oral licence because the president of the applicant is the president of the product manufacturer and he has stated that he has direct control of the character and quality of the wares. The application was refused with respect to "vitamins and mineral supplements" because those wares were based on use in Canada and the evidence of use related to herb and plant extracts, not vitamins and mineral supplements. The Board Member rejected the opponents' argument that the applicant's evidence demonstrates an intention to use HEALTH INSURANCE as an informal certification mark, rather than as an ordinary trade mark. The s. 12(1)(b) ground failed because HEALTH INSURANCE is at most suggestive of the result that the applicant's wares are intended to produce.
23. Smithkline Beecham v. Colgate-Palmolive Canada, April 23, 2001 (Folz) Descriptiveness
Proposed-use application for AH! for toothpaste and mouthwash. Opposition based, inter alia, on s. 12(1)(b).
Held: Opposition rejected. The opponent unsuccessfully argued that AH! indicates that pleasure or satisfaction will be derived from the use of the applicant's products, with the result that the first impression of the everyday user would be that the wares must be of high quality. The Board Member concluded that AH! would be suggestive of the pleasure that one might derive from using the applicant's wares, not clearly descriptive of the wares' character or quality.
24. Valenite v. Modern Coatings, April 30, 2001 (Partington) Confusion
Use-based application for MODCO for sealants, paints, stuccos, textured finishes, … building panels for cladding building exteriors, and decorative panels for building exteriors. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark MODCO registered for cutting tools, machine tools and tooling, and parts for all the aforesaid wares.
Held: Application refused because the marks are identical and, although the wares differ, there is a potential overlap in their channels of trade.
IV. SECTION 45 DECISIONS
1. Thomas Adams & Associates v. Visx, January 29, 2001 (Bradbury) Use on Invoices/Sufficiency of Evidence
VISIONKEY registered for opthomological surgical system, namely, a laser, optical path elements, control computer, patient data card reader (all sold as a unit).
Held: Registration maintained. The registrant need only show use of the mark on a component that is sold as part of its opthomological surgical system. Evidence was provided showing use of the mark on a card that contains software and patient data, without which the system cannot be operated. The Hearing Officer accepted that the invoices accompanied the wares because they indicated a shipping date identical to the date of the invoices and included customs information.
2. Riches, McKenzie & Herbert v. Adacel Technologies, March 7, 2001 (Savard) Sufficiency of Evidence/Special Circumstances/Issuance of New Notice
FLEXCOMM registered for "Flexcomm, a multi-channel, communications system, permits an instructor to monitor any position, and to stimulate communications events such as background noise, position failure or radio failure".
Held: Registration maintained. The original owner of the registration went bankrupt and the current owner purchased the mark 4 months prior to the issuance of the s. 45 notice. Invoices showing use of the mark by the predecessor in association with the repair of the wares were provided, as well as evidence of the current owner's activities after the notice. The evidence does not show use of the mark in association with the registered wares during the relevant time period. Because the present owner only acquired the mark shortly before the issuance of the notice, it need only show a serious intention to resume use of the mark in the near future and it has done so through the brochure that shows that it is promoting and marketing the registered wares. These special circumstances excuse the non-use. However, as the Senior Hearing Officer would have preferred more details concerning the marketing and promotion of the wares and the manner in which the registrant will use the mark, a new s. 45 notice was issued concurrently with the issuance of this decision.
3. Sim & McBurney v. Renault, March 7, 2001 (Savard) Special Circumstances
ESPACE registered for automotive vehicles, land automotive vehicles and their component and spare parts.
Held: Registration expunged. Although the mark was registered in 1986, use has not yet commenced because of the drastic differences between European and North American automotive regulations. Although the affiant stated that significant progress has been made in re-engineering its European vehicle, it was unclear if any of these steps were taken prior to the issuance of the notice. In any event, a present intention to use the mark is not sufficient to excuse the long absence of use. The failure to take action for almost 13 years appears to have been a voluntary decision on behalf of the registrant and it is not clear when use is to commence.
4. Lapointe Rosenstein v. Atlantic Engraving, March 27, 2001 (Savard) Section 4(1)
AE & Design registered for various jewellery.
Held: Registration expunged. The registrant filed invoices and a copy of an advertisement but neither showed how the mark was associated with the wares at the time of transfer of the wares.
5. Bereskin & Parr v. Pizza Pizza, March 27, 2001 (Savard) Section 2
TEXAS BAR B QUE & Design registered for barbequed foods and restaurant and take-out food services.
Held: Registration expunged. The registrant argued that the display of the mark on the bottom of pizza boxes is use of the mark in association with the registered services. The Senior Hearing Officer held that such use did not satisfy s. 2 of the Trade-marks Act because it was not use of the mark to distinguish the registrant's services from the services of others. The trade mark is listed with 15 other marks; it does not stand out from the other marks and there is no clear evidence that the mark would come to the attention of the consumer during the performance or advertising of the services.
6. Imperial Chemical v. Timber Specialties, March 27, 2001 (Savard) Use with Each Ware
WEATHER SHIELD PRESSURE TREATED WOOD & Design registered for lumber and plywood and clear water repellants to be applied to lumber and plywood.
Held: Registration restricted to lumber and plywood. The mark on the repellants is simply WEATHER SHIELD, not the registered mark. Although the registrant applies the repellant to lumber and plywood that it then sells in association with the registered mark, this is not use of the registered mark with repellants because the registrant has not shown use of the mark in association with each of the registered wares. Moreover, as the repellants are described as "to be applied to lumber and plywood" in the registration, this implies that the repellant is a separate and distinct product that must be sold as a separate ware. It might be different if the statement of wares read "repellant applied to lumber and plywood".
7. Ridout & Maybee v. Hans Schwarzkopf GMBH, March 28, 2001 (Savard) Section 50
KALODERMA registered for various toiletry items.
Held: Registration expunged. Any use is by the registrant's parent company or "Scharzkopf & Henkel". No explanation has been provided concerning who the latter company is and it is not possible to conclude that it is merely a trading style of the registrant. Although the registrant claims that its parent company is licensed to use the mark, there is no indication that the registrant has control of the character or quality of the licensed wares and therefore the use does not satisfy s. 50. The fact that the registrant is a wholly owned subsidiary of the user is not sufficient to satisfy s. 50.
8. Bereskin & Parr v. Canadian Lung Association, March 28, 2001 (Savard) Section 50
MIEUX RESPIRER POUR MIEUX VIVRE registered for organizing and implementing fund raising programs related to respiratory diseases etc.
Held: Registration maintained. The registrant stated that Québec Lung Association has used the mark under licence since 1987. It provided a copy of an unexecuted licence agreement from 1998, which provided quality control provisions, and stated that although the licence agreement was only recently fully executed, the mark has always been used under licence. The Senior Hearing Officer was willing to infer that the agreement reflected the manner in which the mark had been used under licence and the use therefore satisfied s. 50.
9. Stikeman, Elliott v. Wm. Wrigley Jr., March 28, 2001 (Savard) Use of Word Mark
WRIGLEY'S ALPINE registered for chewing gum.
Held: Registration maintained. As the registered mark is a word mark, use of the words in any stylized form and in any colour can be considered as use of the registered mark. Although the word ALPINE is given much more prominence on the packaging, the words WRIGLEY'S ALPINE are clearly reproduced on the packaging. The public would perceive the registered mark as being used as well as the mark ALPINE per se.
10. Consumer Electronics v. Radio Shack, March 28, 2001 (Savard) Section 50(2)
NOVA registered for loud speakers and headphones.
Held: Registration restricted to headphones. Although the registrant stated that it licensed the use of the mark, it could not benefit from s. 50(1) because it did not indicate that it controlled the character or quality of the licensed wares. However, the instruction and warranty leaflet did trigger the presumption of licensed and controlled use. It read: Manufactured in China. Imported for InterTAN Canada Ltd., Barrie … REGISTERED TRADEMARK LICENSED BY RADIOSHACK.
11. Robert Frayne v. Tomex, March 28, 2001 (Savard) Sufficiency of Evidence
GALLIANO registered for various items of clothing.
Held: Registration maintained. It is clear from the evidence as a whole that the wares bearing the mark emanate from the licensee and therefore it is that entity that is using the mark. The licensed use satisfies s. 50. It would have been preferable if the registrant had explained who the name at the top of the invoices is but since the address is that of both the registrant and the licensee, the sales appear to have been in the normal course of trade. If the name on the invoices was in fact a third entity, the remaining evidence would lead to the conclusion that such party acted as a middleman.
12. Gowling, Strathy & Henderson v. Tundra Knitwear, March 30, 2001 (Savard) Sufficiency of Evidence
R-TEC registered for manufactured wool fabric.
Held: Registration maintained. Although the registrant sells finished garments, the registered trade mark is used to distinguish the manufactured wool fabric used in the finished garment.
13. Canadian Council of Professional Engineers v. Ardex, March 30, 2001 (Savard) Sufficiency of Evidence
ENGINEERED CEMENTS registered for modified cements.
Held: Registration maintained. Whether or not the words "engineered cement" are descriptive, the registrant clearly identifies them as a trade mark on its packaging and they would probably be perceived by the public as a trade mark. Whether or not the packaging conforms to the Consumer Packaging and Labelling Act is not relevant in s. 45 proceedings.
14. Gowling, Strathy & Henderson v. Karan Holdings, March 30, 2001 (Savard) Section 50/Use with Wares/Trade Name Use
NORTHWEAR registered for various outdoor wear and operation of a retail outlet for the sale of cold weather clothing and work, industrial, and safety wear.
Held: Registration amended to delete all wares and to delete "work, industrial, and safety wear" from the statement of services. An oral licence or an arrangement that is tantamount to an oral licence may be inferred where the individuals who own the registrant make all the decisions and control the business that uses the registrant's mark. The appearance of the mark on a sign in front of the store, on shopping bags and on boxes used to deliver the wares is use in association with the services not the wares (the clothing bore the trade marks of others). Although some of the clothing sold in the stores appears to have been "cold weather clothing", there is no evidence of any sales of "work, industrial and safety wear". NORTHWEAR is used as both a trade mark and a trade name.
15. Canadian Council of Professional Engineers v. Jalcos Holdings, March 30, 2001 (Savard) Section 50/Sufficiency of Evidence
SOFTIRE CORE & Design registered for tires and tire related products, namely layered fill therefor.
Held: Registration maintained. The control required by s. 50 is satisfied when the same person is in charge of both the registrant and the licensed user. The use shown with "tires containing the layered fill product" amounts to use in association with the registered wares "tires and layered fill therefor".
16. Clark, Wilson v. Myrian Innovative Designs, March 31, 2001 (Bradbury) Use with Wares
MIND COMPUTER PRODUCTS and MIND registered for various computer products and operation of a wholesale and retail business selling computer hardware, etc.
Held: Registrations amended to delete certain wares. The appearance of the mark on store signage, invoices and address labels is use in association with services, not wares, particularly where the wares bear trade marks of others.
17. Joseph I. Etigson v. KPM Industries, April 18, 2001 (Savard) Sufficiency of Evidence
KING registered for cement mix etc.
Held: Registration amended to delete the wares with which the mark has not been used. The affiant clearly stated that the mark had been used with certain of the wares during the relevant time period and provided representative packaging, labelling and invoices. A registrant is not required to bring forward samples of packaging and invoices for each ware when the facts concerning the use are contained in the affidavit.
18. Ogilvy Renault v. Pacific Foods, April 18, 2001 (Savard) Use of the Registered Mark Per Se
MAN'S HEAD-CAPTAIN Design registered for imitation crab and surimi based seafood.
Held: Registration maintained. The registered mark does not include any words whereas the mark used has the words BARNACLE BILL'S superimposed over the bottom of the design. The registered mark remains recognizable and has not lost its identity. The fact that BARNACLE BILL'S may be perceived as the name of the sea captain and that a purchaser may order the product by referring to such words does not prevent the public from also perceiving the sea captain as one of the marks used on the packaging.
19. Sim & McBurney v. Stephen J. Cannell, April 18, 2001 (Savard) Use with Television Entertainment Services
THE A TEAM registered for various wares and television entertainment services.
Held: Registration maintained. The registrant's controlled licensee has produced a television series "THE A TEAM" that it has distributed to various Canadian television stations.
The registrant's television entertainment services are provided in the form of a program to be aired on television and when its licensee authorized its broadcast and the program was aired on a television network, the registrant/licensee provided the services. The television station is merely a conduit for the registrant's services.
20. Registrar of Trade-marks v. Freak Productions, April 18, 2001 (Savard) Sufficiency of Evidence
FREAK & Design registered for various items including clothing namely caps.
Held: Registration restricted to clothing namely caps. The evidence showed five versions of tuques, three of which bore the mark, and a representative invoice in respect of such. Although the evidence is barely sufficient, it appears that the mark was being used in Canada in association with this headwear during the relevant period. The definition for tuques identifies such as a type of cap and the affiant also refers to its "tuques" as "knitted woolen caps".
21. Sim & McBurney v. Rider Travel Group, April 25, 2001 (Savard) Interpretation of Services
ATTACHE registered for transportation of persons and goods by air.
Held: Registration maintained. Considering the purpose of s. 45, the registered services ought to be given their broadest possible interpretation. One of the services performed by the registrant is the arrangement for the transportation of persons and goods through an agent (i.e. an air carrier) and this supports the maintenance of the services.
22. Gowling, Strathy & Henderson v. Federated Co-operatives, April 25, 2001 (Savard) Sufficiency of Evidence
MEMBER OWNED TRULY CANADIAN registered for various services.
Held: Registration maintained. The registrant is a wholesaling, manufacturing, procurement and refining co-operative. It distributes a wide variety of products and services through its member retail associations whose use enures to its benefit. Some of the services are provided to the retail associations as end users.
23. G. Ronald Bell v. Lexxus, April 25, 2001 (Savard) Sufficiency of Evidence/Trade Name Use
LEXXUS registered for various financial investment and retail services.
Held: Registration restricted to those services evidenced. The registrant provided various letters to clients referring to services performed. LEXXUS appears at the top of the letters and the Senior Hearing Officer concluded that LEXXUS was used as both a trade mark and a trade name.
24. Canadian Council of Professional Engineers v. Syprotec, April 25, 2001 (Savard) Section 4(1)
ENGINEERED CARE registered for dissolved hydrogen analysers, etc., maintenance and repair of said wares.
Held: Registration maintained. The registrant provides customers with brochures that refer to both the trade mark and the wares at the time sales calls are made as well as when proposals are submitted for the supply of wares. In addition, the trade mark appears on invoices, resulting in further notice of association being given at the time of transfer of the wares. Section 4(1) is therefore satisfied.
25. McFadden Fincham v. McLane, April 26, 2001 (Savard) Special Circumstances/ Proving Intention to Resume Use
SMILEYS registered for sandwiches.
Held: Registration expunged. The current owner acquired the mark just 2 weeks before the s. 45 notice issued. The evidence included a reference to an outstanding offer to a potential purchaser but the lack of further details raised serious concerns about the probability that use will commence shortly. The registrant therefore failed to discharge the burden of showing a serious intention to commence use in the near future.
26. Metro-Goldwyn-Mayer Studios v. Zotos International, April 26, 2001 (Savard) Sufficiency of Evidence/Section 50
OUTER LIMITS registered for various hair care products.
Held: Registration restricted to permanent waving preparations. The Senior Hearing Officer would not indulge in speculation as to why only the front and back panels of the packaging were provided. The sworn statement that the activities of the trade mark user, including its use of the mark on packaging and the quality of the products sold, are closely monitored and controlled by the registrant was sufficient to conclude that an arrangement tantamount to an oral licence existed that satisfied the requirements of s. 50.
27. Smart & Biggar v. Gaberdine Clothing, April 26, 2001 (Savard) Deviation From Registered Mark
ARIZONA BLUES JEANSWEAR CO. registered for various items of clothing.
Held: Registration restricted to certain items. Hang tags bearing the mark ARIZONA BLUES JEANSWEAR constitute use of the registered mark because the omission of CO. is minor. However, hang tags that bear the mark ARIZONA BLUES separate from the words JEANSWEAR CO. show use of a trade mark that deviates substantially from the registered mark.
28. 88766 Canada v. Reader's Digest, April 26, 2001 (Savard) Sufficiency of Evidence
DES GENS COMME VOUS ET MOI registered for columns of literary excerpts published in periodical magazines.
Held: Registration maintained. The mark appears at the top of the page as a title of the column published in the Reader's Digest magazine.
