Recent Decisions October 2003
I. FEDERAL COURT DECISIONS
(a) Patents
1. Apotex and Bernard Sherman v. Merck et al., May 26, 2003 FCA (Sexton, Stone, Noel JJ.A.) Patent Infringement /Permanent Injunction/Contempt of Court /Remedies
Merck is the owner of the Canadian patent for a drug called enalapril maleate, issued October 16, 1990, which was the basis of the patent infringement action initiated by Merck against Apotex. Apotex has never sought, nor ever held, a license from Merck to import, manufacture, export or sell enalapril maleate for use or consumption in Canada. MacKay J. found that Apotex infringed the patent in suit and held inter alia that Merck was entitled to a permanent injunction restraining further infringement on the part of Apotex. On December 15, 1994, the day after the Reasons for Judgment were released, Apotex sold $9 million worth of the drug in issue. Apotex contended that it was the Court's intention to permit the continuation of sales activities until the terms of the judgment were settled. The judgment, which was issued on December 22, 1994, ordered the delivery up of the infringing drugs. Apotex applied for a stay of the judgment. The application was dismissed on January 9, 1995. On April 27, 1995, Pinard J. issued a Show Cause Order, charging Apotex with two acts of contempt: (1) selling and causing the infringing drug to be sold during the period between December 14 and 22, 1994; and, (2) aiding and abetting in the transfer, distribution and sale by third parties during the period of January 9, 1995 to the date of trial. After a number of preliminary motions brought by Apotex, on March 7, 2000 MacKay J. issued his Reasons for Judgment with respect to the contempt proceedings.
This action is an appeal and a cross-appeal from the original and supplementary judgment of MacKay J., which held that both Apotex and Dr. Sherman, then President and CEO of Apotex, were in contempt of court. MacKay J. imposed a $250,000 fine on Apotex and a $4,500 fine on Dr. Sherman personally in respect of the contempt. MacKay J. further held that Merck should be paid costs on a solicitor-client basis in a fixed lump sum in the amount of $1,500,000, for which Apotex and Dr. Sherman would be jointly and severally liable.
Held: Appeal allowed in part; cross-appeal dismissed. The Court found Apotex to be in contempt of court with regards to the December 14–22, 1994 sales. Apotex and Dr. Sherman understood that the Reasons were unfavourable to them, that their product had been found infringing Merck’s patent, and that a permanent injunction was part of the relief granted. However, the Court found that the Trial Judge erred in concluding that, by providing assistance to third parties in selling and distributing, Apotex had interfered with the orderly administration of justice with respect to post January 9, 1995 sales. The Court found that merely providing assistance does not put Apotex in contempt of court and set aside the finding of contempt relating to the post-January 9, 1995 time period with consequent reduction of the fine for Apotex to $125,000. The fine against Dr. Sherman was left unchanged, as this fine was only imposed with respect of the December sales. Merck was awarded the solicitor and client costs at trial and on the appeal on all issues, except for the second period of contempt, for which no costs were awarded. Merck’s cross-appeal to increase the fine relating to Apotex was dismissed.
2. 671905 Alberta et al. v. Q’Max Solutions, June 2, 2003 FCA (Stone, Noel, Sexton JJ.A.) Patent Validity/Declaration of Validity/Patent Construction/Right to Sue on the Patent /Remedies/Sections 52, 53 and 55 of the Patent Act
Appeal and cross-appeal from the judgment of the Trial Division dismissing 671905 Alberta's claims for a declaration of validity and for infringement by Q’Max Solutions of Canadian Patent 2,101,884 for a drilling mud used in well drilling operations. Drilling mud is used to lubricate and cool drill bits. The '884 patent disclosed the use of an ammonium calcium nitrate decahydrate (ACND) salt to minimize the environmental impact of the oil residue. Q’Max manufactured a "water-in-oil invert emulsion drilling mud" product known as the "Envirovert". This product also contained the ACND salt. The Trial Judge held that the inventors named on the '884 patent (namely James and Harold Fleming) were not correct. Thus, the court held that the '884 patent was void as between 671905 Alberta and Q'Max pursuant to subsection 53(1) of the Patent Act. 671905 Alberta appealed the Trial Judge's decision and argued the Trial Judge erred in construing the patent by failing to recognize the environmental benefit of the invention and the contributions of James and Harold Fleming as inventors. 671905 Alberta further argued that the appropriate remedy for an error in naming inventors is to correct the title pursuant to s. 52 of the Patent Act. The respondent asserted that the Trial Judge erred by failing to declare the patent void as against the whole world rather than merely as between the parties. The respondent also argued that the Trial Judge erred in finding that all of the claims of the patent, except claim 15, had been infringed by the respondent.
Held: Appeal was allowed in part; cross-appeal dismissed with costs. The Trial Judge's finding that Richard Smith, rather than James K. and Harold C. Fleming, was the true inventor was left undisturbed. However, the patent was found not to be void under s. 53(1) of the Patent Act as the Flemings did not intend to "willfully mislead" by naming themselves as inventors and the omission to name Mr. Smith as an inventor does not justify the "draconian" remedy provided for in this subsection. The Court denied the appellant's request to vary the records of the Patent Office pursuant to s. 52 of the Patent Act, so as to show Mr. Smith as the inventor and M-I Drilling Fluids Canada Inc. as the owner of the patented invention. The Trial Judge's finding that the appellant could not maintain the action for infringement was not interfered with. The cross-appeal on the issue that the patent is invalid for anticipation and obviousness and that no infringement by the respondent occurred was denied.
3. Apotex v. Merck et al., June 30, 2003 FCA (Stone, Evans and Sharlow JJ.A.) Patent Infringement/Remedies/Appeal from Order Granting Punitive Damages and an Accounting of Profits
Appeal by Apotex from an order concerning certain infringement remedies awarded against it. The motions judge allowed a summary judgment motion in Merck's favour, finding infringement by Apotex relating to its acquisition of a large quantity of enalapril maleate. Following the summary judgment decision, the motions judge ordered the matter of remedy to be dealt with at a subsequent hearing. Apotex appealed the order for punitive damages and the remedy of an accounting of profits.
Held: Appeal allowed in part. Apotex wished to make submissions on the matter of Merck's election of an accounting of profits versus damages, however, because the parties had proceeded by way of summary judgment no discoveries had been conducted. This case proceeded in an unusual fashion, since the merits of the infringement claim were dealt with in summary judgment motions by both parties. The motions judge was entitled to design a unique procedure for dealing with matters of remedy. However Apotex had valid objections to parts of the order. The Court found that Apotex should be entitled to examinations for discovery on issues relating to the accounting remedy, so that it could make submissions relating to Merck's entitlement to elect an accounting of Apotex' profits. The decision as to whether or not Merck should be permitted to make the election is for a judge, not a referee. Once the decision as to the election is made, a reference may be ordered to determine the quantum of damages or the accounting, as the case may be. The motions judge erred in deciding that Apotex is liable for punitive damages before the other matters are decided. The matter of punitive damages should be determined by a judge after all other remedies are determined, and was an inappropriate subject for a reference.
4. GlaxoSmithKline et al. v. Canada (Minister of Health) and Pharmascience, July 18, 2003 FCTD (Noël J.) Application for Prohibition/Allegation of Invalidity /Anticipation /Obviousness/Improper Subject Matter /Patented Medicines (Notice of Compliance) Regulations
Application by GlaxoSmithKline to prohibit the Minister from issuing a NOC to Pharmascience for the medicine carvedilol prior to expiry of a patent owned by SmithKline Beecham. The SmithKline patent had claims for specific dosage regimens of carvedilol for the treatment of patients with congestive heart failure (CHF) and to decrease mortality resulting from CHF. In its NOA, Pharmascience alleged invalidity on the basis of anticipation and/or obviousness; and on the basis of improper subject matter by claiming results of a process, which they alleged were not covered by the definition of invention in the Patent Act.
Held: Application dismissed. The allegations of invalidity were not justified. The invention described in the patent was in the association made of the use of carvedilol for the treatment of CHF with the benefit of reducing mortality. Phase II clinical trials involving beta-blockers (the class of drugs to which carvedilol belongs) performed prior to the priority date showed that some beta-blockers possibly had a beneficial function in reducing mortality in CHF. The evidence showed that all that was needed were confirmation results. The final Phase III results were merely there to eliminate the uncertainty. The element of creativity, which is essential to an invention, cannot be found in test results. The SmithKline patent was rendered obvious by the prior art in existence at the filing date. The allegation of invalidity based on obviousness was justified. Based on this conclusion, the application was dismissed. The anticipation argument failed since not all information needed to produce the claimed invention was found in one publication. The improper subject matter allegation failed because the results of a process can be proper subject matter where it is directed to a novel or unobvious use of a known compound.
5. Procter & Gamble Pharmaceuticals Canada et al. v. Canada (Minister of Health) and Genpharm, July 24, 2003 FCTD (Snider J.) Motion to Vary Court Order/Second ANDS Filed and NOC Issued Despite Order of Prohibition Granted in Respect of First ANDS/Second ANDS Relied on Reference Product that had no Listed Patent/Patented Medicines (Notice of Compliance) Regulations /Federal Court Rule 399
Motion brought by P&G pursuant to r. 399, asking for a prohibition order to be varied to make clear to the Minister and Genpharm that it includes a newly approved NOC issued to Genpharm and that such NOC be quashed. P&G's patent is for the invention of a pharmaceutical regimen used to treat osteoporosis containing a combination of etidronate disodium with calcium carbonate (Didrocal). P&G also had a second drug called Didronel for etidronate disodium alone. Genpharm’s first ANDS, to which the order of prohibition was granted, referred to Didrocal as the Canadian reference product for exhibiting bioequivalence, whereas the second ANDS referred to Didronel. Since no patent was listed for Didronel, the Minister determined that Genpharm was not required to notify P&G or provide a NOA. P&G asserted that the second ANDS was for the same drug as the first ANDS and therefore should be caught by the first prohibition order.
Held: Motion dismissed. To set aside an order or vary an order under r. 399(2), P&G had to meet a stringent threefold test: see Annacis Auto Terminals (1997) v. Cali (The), [1999] F.C.J. No. 1579 (T.D.). First, there must be a new matter arising or discovered subsequent to the Order; second, P&G must establish that they could not with reasonable diligence have discovered the new matter sooner; and third, P&G must establish that if the new matter had initially been brought forward it would probably have resulted in a different original order. The Court emphasized the importance of the third part of the test. The prohibition order did not address the issue of whether the manufacture and sale of a Didronel-type product would lead to patent infringement. The prohibition order was issued because of concern for Genpharm’s plan to market the tablets for use in the management of osteoporosis and the lack of warning in the product monograph that it should not be used for this purpose was cited as evidence of the plan. The Genpharm NOC based on the second ANDS explicitly stated that the drug should not be used in the management of osteoporosis. As a result, it was not clear on the evidence that the prohibition order would have been granted for Genpharm’s Didronel-type product. Whether the issuance of a NOC for this product should have been prohibited should only be determined after a full hearing based on a complete record and not on the basis of r. 399.
(b) Trade Marks
1. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Boutiques Cliquot et al., January 30, 2003 FCTD (Tremblay-Lamer J.) Trade Mark Infringement/Passing Off /Confusion/Brand Extension/Use of Marks on Promotional Items/Luxury Marks/Section 22
Action for infringement of registered trade marks, unfair competition and passing-off. In the alternative, the plaintiff asks that the defendants' trade mark registrations be struck. The plaintiff manufactures and sells champagne. The defendants operate retail women's clothing stores. The defendants have registered the trade marks CLIQUOT and CLIQUOT "UN MONDE À PART" for their services. The plaintiff has registered VEUVE CLICQUOT, VEUVE CLICQUOT PONSARDIN, CLICQUOT ROSÉ & Design, and V. CLICQUOT P. WERLE & Design for champagne. The plaintiff claims that it has also used its marks for the distribution for promotional purposes of a vast range of products including jackets, scarves and dresses. The plaintiff argued that its CLICQUOT mark should be given broader protection in areas beyond champagne, based on the "brand extension" theory. It claimed that the defendants were not only infringing its registrations but were also depreciating its goodwill, contrary to s. 22.
Held: Action dismissed. The Court found that there was no evidence of an intention by the plaintiff to extend its mark in to the fashion field; the scarves and other items sold by the plaintiff were promotional articles and nothing more. "The plaintiff's evidence did not establish any connection with the fashion world, simply that women were a market targeted by the plaintiff." Although the opponent's CLICQUOT mark "is well known and unique, and deserves extensive protection", the activities of the parties are so different that there is no risk of confusion.
Regarding s. 22, the Court noted that "the wares offered for sale in the defendants' boutiques bear no label or other identification mentioning the name of the store, and so are not in any way identified with the word 'Clicquot'." In the Court's view, "a consumer who saw the word "Cliquot" used in the defendants' stores would not make any link or connection to the plaintiff. Consequently, there will be no association between the 'Clicquot' luxury mark and the defendants' 'non-luxury' wares." The Court acknowledged that confusion is not the test laid down in s. 22, but considered it "still necessary for there to be an association between the two marks."
2. Kirkbi and Lego v. Ritvik Holdings, July 14, 2003 FCA (Rothstein, Sexton, Pelletier JJ.A.) Passing Off/Section 7(b)/Functionality /Distinguishing Guise/Section 13(2) /Unregistered Trade Marks/Evergreening /Monopolies
Appeal from decision that dismissed the appellants' passing off action under s. 7(b) of the Trade-marks Act, because the appellants' "LEGO Indicia trade mark" was not a valid mark due to functionality. The "LEGO Indicia trade mark" is an unregistered trade mark that the appellants say is a distinguishing guise. The issue to be decided on appeal is whether a mark that is primarily functional can support a s. 7(b) action.
Held: Appeal dismissed. The doctrine of functionality applies in this case and the LEGO Indicia is invalid as a trade mark because it is primarily functional. The appellants unsuccessfully argued that when Parliament removed the language about functionality from the definition of a distinguishing guise in the current Trade-marks Act, it indicated that a distinguishing guise may have utilitarian features. Sexton J. agreed that the fact that a trade mark has some functional aspect is not sufficient to render the trade mark invalid. However, a trade mark that is primarily functional is invalid, else one could indirectly achieve the status of a patent holder through the guise of a trade mark, i.e. achieve perpetual protection. The appellants did not contest the Trial Judge's finding that the LEGO Indicia are purely functional. The appellants did however misconstrue s. 13(2) when they submitted that the reference to functionality in s. 13(2) means that functionality has been eliminated as a factor from the analysis of trade mark validity and only applies to registration and expungement. Rather, s. 13(2) "reinforces the concept that the doctrine of functionality invalidates a mark which is primarily functional. It makes clear that the public is not constrained from using any utilitarian features of a distinguishing guise. It follows that if a distinguishing guise is wholly or primarily functional, then the public is not constrained from using the distinguishing guise in its entirety." The mere fact that the s. 2 definition of distinguishing guise does not expressly refer to functionality "is not a clear enough indication to warrant the removal of the well established doctrine of functionality with respect to trade-mark analysis." The Court did not accept the appellants' argument that the doctrine of functionality applies only to registered trade marks, not to unregistered trade marks. The owner of an unregistered trade mark may have a monopoly and therefore the policy of the functionality doctrine, i.e. to avoid monopolies and the obtaining of patent protection through the guise of a trade mark, applies to unregistered trade marks. Sexton J.A. concluded that "this action was just another attempt to extend patent protection through the guise of a trade-mark."
The Trial Judge incorrectly interpreted s. 7(b) when he considered the common law definition of distinguishing guise, rather than the statutory definition. However, this error of law did not affect the results of the case.
Dissent (Pelletier J.A.): Although the LEGO Indicia are primarily functional, they are still trade marks. The doctrine of functionality does not apply to unregistered trade marks because the concern about monopolies does not extend to unregistered trade marks; the owner of an unregistered trade mark cannot insist that a respondent cease using an unregistered trade mark, they can only insist that such party takes steps to ensure that its use of the unregistered mark does not lead consumers to believe that the respondent's wares are the owner's. "The cases which proscribe functional trade-marks arise in the context of registered trade-marks, and proceed from a concern that trade-mark law not be used to acquire monopoly rights with respect to functional elements. Since one only acquires monopoly rights by registration, there is no need to apply the policy against monopolies to unregistered trade-marks." Pelletier J.A. could not "agree that the mere fact of functionality should deprive the owner of a distinguishing guise of recourse to a passing off action when the public is misled by the use of its distinguishing guise by another." All three elements of passing off have been established, the Trial Judge having erred in concluding that misrepresentation "had not been proved simply because he could find no evidence of a deliberate intention to deceive."
3. Boston Pizza International and Boston Pizza Royalties v. Boston Market et al., July 17, 2003 FCTD (Tremblay-Lamer J.) Summary Judgment/Counterclaim/Section 57 Expungement/Descriptiveness/Issue Estoppel /Acquiescence/Limitation Period
Motion for an order that the defendants' counterclaim be dismissed. The plaintiffs have claimed that the defendants are infringing their trade mark registrations for BOSTON PIZZA, BOSTON'S THE GOURMET PIZZA, BOSTON PIZZA QUICK EXPRESS, BP & Design, BP'S LOUNGE, and BP'S BISTRO. The defendants, who are using the name BOSTON MARKET, counterclaimed for expungement of the plaintiffs' registrations on the basis that they are not distinctive of the plaintiffs by reason of use by others of marks containing the word 'Boston' and because the first three of the plaintiffs' marks have at all times been clearly descriptive of a style of pizza that is associated with the city of Boston.
Held: Motion granted in part. Counterclaim dismissed with respect to the plaintiffs' BP & Design marks because they are inherently distinctive and with respect to the marks BP'S LOUNGE and BP'S BISTRO because they do not use the word 'Boston'. There is a genuine issue as to whether third party use of other BOSTON trade marks has rendered the remaining marks non-distinctive. The plaintiffs tried to show that their marks are distinctive by means of a telephone survey, but whether or not that survey was conducted properly is an issue to be decided at trial. The plaintiffs also argued that the question of whether the BOSTON PIZZA marks had ceased to be distinctive due to third party use had been conclusively and finally decided in Boston Pizza International Inc. v. Boston Chicken Inc. (2001), 15 C.P.R. (4th) 345. Although that case considered evidence of third party users of BOSTON marks, it did so for the purpose of deciding if the public could distinguish between the BOSTON PIZZA trade mark and the BOSTON CHICKEN trade mark. The distinctiveness of the BOSTON PIZZA trade mark was not at issue there and therefore issue estoppel does not exist.
The defendants' "evidence raises the question of whether there exists a style of pizza called a Boston pizza, and as such, whether an ordinary purchaser of [the plaintiffs'] wares and services would find that the trade-marks at issue are clearly descriptive." This is an issue that needs to be decided at trial.
The plaintiffs also claimed that the counterclaim should be dismissed because the defendants have acquiesced in that they delayed in raising the validity of the plaintiffs' registrations. The plaintiffs claim that they were led to believe that the defendants would not contest the registrations and that the plaintiffs relied on the defendants' delay to the plaintiffs' detriment. Such a finding can only be made at trial on full evidence.
The plaintiff's final attack on the counterclaim was that it was made outside the limitation period set out in s. 39 of the Federal Court Act. However, there is no limitation period with respect to expunging trade mark registrations, because any such limitation would protect what otherwise would be invalid trade marks.
4. Royal Roads University v. Her Majesty the Queen, July 25, 2003 FCTD (MacKay J.) Summary Judgment/Prior Use of Official Mark
Applications by both parties for summary judgment. The plaintiff complains that the defendant has used the plaintiff's official mark and seeks an injunction against such use. The defendant seeks a dismissal of the plaintiff's claim. The plaintiff began using "You can get there from here" to promote its university in 1999. In 2001, the defendant began using "You can get there from here" to promote the sale of Canada Savings Bonds. In 2002, the Registrar of Trade-marks gave public notice of the plaintiff's adoption of the official mark "You can get there from here". The defendant does not intend to use the tag line in its 2003-4 marketing campaign.
Held: Plaintiff's application dismissed; defendant's application allowed. The defendant's use prior to the publication of the plaintiff's mark did not offend s. 9 - the issue is whether the defendant's use of the mark after publication was in relation to the same product that it sold before the date of publication. Both before and after the publication of the plaintiff's mark, the defendant carried on the same business. The fact that the defendant's bonds might change in interest rates and identification numbers does not mean that the defendant re-adopted the tag line each time a new series of bonds was issued.
5. Bacardi v. Havana Club Holding, July 31, 2003 F.C.T.D. (Martineau J.) Opposition Appeal/Error in Title of Registered Mark /Validity of Registered Mark
Appeal from the Registrar of Trade-marks' decision that rejected Bacardi's opposition to an application to register the mark HAVANA CLUB Design for rum based on use in Canada since at least 1990. The Registrar had rejected the opponent's claims: i) that the mark had not been used since the date claimed; ii) that the mark was not distinctive; iii) that the applicant could not have been satisfied it had the right to use the mark; and iv) that the opposed mark was confusing with the opponent's HAVANA CLUB mark.
Held: Appeal dismissed with costs. The decision of the Registrar seemed reasonable under the circumstances. The opponent claimed that the applied for HAVANA CLUB & Design mark was confusing with a prior registration for HAVANA CLUB. Although the applicant was listed as the current owner of the registration on the Trade-marks Register, the opponent claimed that it had acquired this registration through an agreement with a prior owner. However, the opponent did not present any proof in this regard. The applicant in this proceeding was listed on the Register as the third successive owner of the registration. No further corrections of the Register had been requested, and no s. 45 proceedings were before the Registrar in respect of the registration. No appeal or action had been taken against the Registrar's decision to accept the transfer of ownership in favour of the applicant or the renewals of the registration by the applicant's predecessors. The Registrar was correct to conclude that it could not rule on the validity of the registration, except to recognize that the applicant is the current owner of the prior HAVANA CLUB registration and that the marks at issue in this proceeding are associated marks.
6. Gillette v. Dynamic Toy Imports and Chor Y Hung, August 6, 2003 FCTD (Hargrave P.) Particulars of Invalidity/Traverse
In a trade mark infringement action, the defendants' response included an allegation that the plaintiff's trade-mark registrations are invalid under s. 18 because the trade mark was not registrable on the date of registration and the trade mark was not distinctive of the plaintiff's goods. The plaintiff seeks particulars of the pleas of non-registrability and non-distinctiveness.
Held: Particulars ordered. The defendants' defence is not merely a traverse. It is clear on the face of the pleading that particulars are lacking and so the plaintiff was not required to file an affidavit explaining the need for particulars. The defendants' recital of general statements amount to assertions and conclusions of law that require particulars in order to prevent the plaintiff from potentially being ambushed.
7. WWC Containers Sales and WCC Refurb v. Haul-all Equipment, August 26, 2003 FCTD (Kelen J.) Section 57 Expungement/ Distinguishing Guise /Functionality/Section 13(1)(b)/Section 30 /False Statements/Effect of Previous Industrial Design Registration
Application under s. 57 for the expungement of the registration for Slope Bin Container Distinguishing Guise Design. The mark is the shape of an animal-proof garbage can. The respondent owned an industrial design registration for the can, which expired in 1994. In 1995, the respondent applied to register the shape of the can as a trade mark, based on use. In 1996 and 1997, the federal government issued requests for tenders for cans shaped like the respondent's industrial design. The respondent expedited the issuance of its trade mark registration in 1997 in order to force the government to award contracts to it, as the owner of the exclusive trade mark rights, rather than to the lowest bidder.
Held: Application allowed. The Court found the trade mark to be invalid because it is primarily functional. The applicant made out a prima facie case that the purpose of the respondent's sloped design is primarily functional and the respondent's affiants did not disagree that the design is functional. The Court also ordered the registration to be expunged because it unreasonably limits the development of the art or industry, contrary to s. 13(1)(b). The federal government's call for tenders "specified the respondent's design for a functional purpose, not an aesthetic purpose, and the respondent used its design trade-mark to limit the development of the art or industry."
The registration cannot be invalidated on the basis of non-compliance with s. 30, namely the failure to name the predecessor who used the mark. Such an error is not the type of false statement that has been found by the jurisprudence to invalidate registrations. In addition, the Court rejected the applicant's argument that a party ought not to be allowed to register as a distinguishing guise a design that it had previously registered as an industrial design. The Trade-marks Act does not set out such a prohibition and it has been the long-held position of the courts to not prohibit such registrations.
8. Fiesta Barbeques v. General Housewares, September 4, 2003 FCTD (Russell J.) Opposition Appeal/Descriptive When Sounded/Material Date re Descriptiveness/Effect of Disclaimers
Appeal from an opposition decision that refused an application to register the trade mark GRILLGEAR & Design for barbeque accessories. The Registrar held that the mark was clearly descriptive when sounded. The appellant filed additional evidence in support of its appeal. The respondent did not participate in the appeal.
Held: Appeal allowed. The Registrar erred in placing reliance on the applicant's disclaimer of the words "grill" and "gear" - disclaimers are filed under s. 35 without prejudice. The Registrar also erred in considering the material date with respect to s. 12(1)(b) to be the date of decision. In so doing, "the Registrar ignored the decision in Lightning Fastener Co. v. Canadian Goodrich Co., [1932] 1 D.L.R. 297, [1932] S.C.R. 189 (delivered under previous legislation) and applied in Association of Professional Engineers v. Registrar of Trade-marks (1959), 31 C.P.R. 79 (Ex. Ct.), at pp 87-88 (delivered under the current version of the legislation), that the applicable date is the date of the application." As a result of applying the wrong date, the Registrar improperly considered examples of use of the words "grill gear" that occurred after the material date. As of the date of application, the evidence showed only a few sporadic examples of use of the words "grill gear". This is countered by the appellant's new evidence confirming that none of its competitors had employed the words "grill gear", which indicates that allowing this application would not deprive traders of the right to describe their wares in a way that they might wish to do. "Also, as a design mark, it is not accurate to say that, when sounded, it is either clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used. At most, it is only the verbal component of the Subject Trade-Mark that could be sounded in this way."
(c) Copyright
1. Neighbouring Rights Collective of Canada ("NRCC") v. SOCAN et al. and The Copyright Board, July 10, 2003 FCA (Evans, Linden, Malone JJ.A.) Judicial Review /Neighbouring Rights/Certification of Tariff /Standard of Review
Application by NRCC for judicial review of the Copyright Board's decision to certify a single joint tariff for payment of royalties by providers of digital pay audio services ("DPA") to composers/authors of musical works represented by SOCAN and to performers and record producers represented by NRCC for the right to telecommunicate to the public published sound recordings by digital means. The grounds for review were that the Board erred in (a) allocating a 50/50 split between SOCAN and NRCC of the total royalties to be paid by DPA providers and (b) certifying only a single tariff for the two collectives when SOCAN and NRCC had each filed a separate draft tariff.
Held: Appeal dismissed. The Court held on the first ground that the Board had not erroneously held that the performers and record producers did not each hold separate neighbouring rights under the Copyright Act or disregarded NRCC's evidence supporting a one third each split between authors, performers and record producers as a more appropriate allocation model. Rather the Board chose not to accept it, preferring as its allocation model an earlier tariff that had approved a 50/50 split between these two collectives in respect of another use of the public telecommunication right. In respect of the second ground, the Court examined the powers granted to the Copyright Board under s. 68(3) to approve tariffs and "alterations to the royalties and the terms and conditions related thereto" and found them to be broad in the discretion they granted to this administrative tribunal. The Court adopted a standard of review of "patent unreasonableness" instead of one of "correctness" on the basis that the Board was expert in a highly technical area, in which it had greater knowledge than the Court. Therefore, the Court would not interfere in the decision to adopt a single tariff which the Board, in its discretion, chose for legitimate policy purposes of administrative ease and transactional costs savings for the DPA providers.
(d) Practice
1. Iris, le groupe visuelle (1990) v. Trustus International Trading, May 15, 2003 FCTD (Morneau P.) Trade Mark Infringement /Addition of Parties in Personal Capacity
Plaintiff sought to amend its statement of claim: a) to add three individuals as defendants in their personal capacity; b) to claim against them for punitive damages and costs; and c) to claim that the defendant made illicit use of the IRIS trade mark.
Held: Amendment c) granted, amendments a) and b) refused. The facts presented by the plaintiff were insufficient to justify engaging the responsibility of the individuals in their personal capacity. The plaintiff's evidence did not include any reference to title of these individuals within the defendant company, and did not put into evidence any business plans of the individuals or the defendant company. The only evidence offered in this regard was a magazine article quoting one of the individuals as having stated: "The name took a while for us to decide because it required not only our collective consent but the name had to clear all trademark restrictions." Such evidence was insufficient to support the proposition that the individuals had knowledge of the plaintiff's trade marks and had adopted a line of conduct which effectively appropriated the plaintiff's rights.
2. AB Hassle et al. v. Apotex and Canada (Minister of Health), July 21, 2003 FCTD (Lafreniere P.) Reply Evidence/Admission of Expert Evidence in Reply/Scope of Cross-examination on Affidavit /Patented Medicines (Notice of Compliance) Regulations
Motion by Apotex for an order to require an affiant to re-attend for cross-examination on an affidavit, and to answer certain refusals given during his cross-examination. AB Hassle had sought to file a reply affidavit after receiving Apotex's affidavit evidence in a proceeding brought by AB Hassle to prohibit the Minister from issuing a NOC to Apotex in respect of omeprazole magnesium tablets.
Held: Motion dismissed. The parties agreed that the matters at issue must be determined by reference to the test for admitting reply evidence. The test for admitting reply evidence gives the Court discretion to allow reply evidence where it will serve the interests of justice, will assist the Court and will not seriously prejudice the other party. Apotex argued that the questions that were refused to be answered at the cross-examination prevented Apotex from testing the affiant's qualifications and were relevant to the issue of whether the evidence would be of assistance to the Court: see Bayer AG. v. Canada (1994), 58 C.P.R. (3d) 377 (FCTD). Apotex seeks to question the affiant with respect to his qualifications and his criticism of Apotex's expert witness regarding sample preparation, raman spectroscopy, fluorescence microscopy and the use of an acetone wash. A number of questions regarding the affiant's credentials were answered, while the above-mentioned questions were refused. The Prothonotary concluded that the objections to the questions were entirely proper. The questions do not relate to the affiant's qualifications, and are not relevant to the issues in the present motion or to the qualifications of the affiant. Apotex has confused the threshold issue of whether the affiant's evidence will assist the Court with the issue of weight to be attributed to the evidence on the merits. The latter issue is reserved for determination by the trial judge. The questions raised by Apotex are wholly irrelevant to the issue on the motion, namely whether AB Hassle ought to be permitted to file further evidence.
3. AstraZeneca Canada v. Apotex et al., August 25, 2003 FCTD (Layden-Stevenson J.) Motion to Strike Paragraphs of Memorandum of Fact and Law/Reliance on Scientific References as Authorities/Whether Scientific References Constitute Evidence
Motion by Apotex to set aside the prothonotary's order dismissing Apotex's motion to strike a portion of AstraZeneca’s memorandum of fact and law. Apotex objected to the inclusion of extracts of two scientific references in the “Authorities” section of the memorandum of fact and law and AstraZeneca's reliance on those references. Apotex argued that AstraZeneca was relying on the references as evidentiary support, and that to do so it required leave of the court. The prothonotary disagreed and stated that the court’s intervention at this stage of the proceeding was not required and that the matter should be determined by the applications judge. Apotex appealed.
Held: Motion dismissed. Discretionary orders of a prothonotary should not be disturbed on appeal unless they are clearly wrong, in the sense that the exercise of discretion by the prothonotary was based on a wrong principle or upon misapprehension of the facts, or they raise questions vital to the final issue of the case. AstraZeneca maintained that the references did not constitute evidence, but were authoritative reference texts akin to dictionaries of which the applications judge could take judicial notice. The Court concluded that Apotex did not establish that the prothonotary was clearly wrong. While Apotex may properly request that the applications judge disregard the authorities, it cannot succeed in having them struck at this stage of the proceeding.
II. OPPOSITION BOARD DECISIONS
1. Professional Pharmaceutical v. Procter & Gamble, April 30, 2003 (Martin) Confusion/State of the Marketplace
Proposed-use application for ACTIVE HYDRATING for skin lotions and creams. HYDRATING disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark HYDRACTIVE registered for various toiletries and cosmetics.
Held: Opposition rejected. Confusion not likely because both marks are inherently weak, there is not a high degree of resemblance between the marks and there is common use of similar marks by other traders.
2. Plan B Strategies v. Women's Capital, April 30, 2003 (Herzig) Confusion /State of the Marketplace
Proposed-use application for PLAN B for emergency contraceptive tablets. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark PLAN B & Design registered for advertising services and marketing communications services.
Held: Opposition rejected because of the disparity in the nature of the parties' wares, services and channels of trade.
3. Yao Tsai v. Anstey Yat Cho Chan, May 23, 2003 (Martin) Confusion/Chinese Characters Design Marks
Use-based application for Chinese Characters Design for the operation and management of a sit down Chinese restaurant serving northern Chinese dishes and cuisine. Opposition based, inter alia, on s. 12(1)(d) due to confusion with a Chinese Characters Design mark registered for similar services.
Held: Application refused. The marks are virtually identical when viewed - both consist of three particular Chinese characters, which in one case are aligned vertically and in the other are aligned horizontally. The Board Member assumed that the two marks would be sounded identically by those fluent in Cantonese.
4. Amethyst Investment Group v. Everlast World's Boxing Headquarters, June 4, 2003 (Herzig) Confusion
Proposed-use application for EVERLAST Design for various items of men's personal body care products including hair preparations. Opposition based, inter alia, on s. 12(1)(d) due to confusion with EVERLASTING registered for hair permanent kit whose components are curling lotion, gel reformer and neutralizers; a curl/wave activator cream; moisturizing spray; vitamin-enriched hair lotion and curl activator mousse.
Held: Application refused. The opponent did not file any evidence of use of its mark. The applicant's evidence supported a conclusion that its mark has a minor reputation in Canada in association only with boxing wares and equipment. Given the resemblance between the wares, trades and marks of the parties, the applicant has not met the onus on it with respect to the issue of confusion.
5. Reach Equality and Justice for People with Disabilities v. Regional Cable Systems, June 12, 2003 (Herzig) Confusion
Use-based application for REACH for sponsorship and funding of community capital projects. Opposition based, inter alia, on s. 16(1) due to confusion with REACH previously used by the opponent for, inter alia, the provision of consultation and legal referral services to persons with disabilities.
Held: Application refused. At the applicant's date of first use, "the balance of probabilities favours the finding that the public would have assumed that the applicant's philanthropical undertakings were approved, licensed, or connected with the opponent." The nature of the parties' services overlap to the extent that some of the community projects sponsored by the applicant are directed to persons with disabilities. The nature of the parties' trades also overlap to the extent that the opponent is a charity and the applicant's services are philanthropic.
6. Toshiba Canada v. Chenel, June 12, 2003 (Folz) Confusion/State of the Register /Co-existence Abroad
Proposed-use application for MAXTECH for network communication products… teleconferencing equipment … computer multimedia devices … and personal computer printed circuit boards and components. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark MAXTIME registered for hardware and software components of lap top and notebook computers that extend the battery life of the computer.
Held: Opposition rejected. The parties' wares do not overlap although they are related. Neither mark is inherently strong given the laudatory connotation of the prefix MAX. The applicant's state of the register evidence shows that MAX has been adopted as a prefix for at least 21 marks registered for computer related wares and services, the average consumer would be accustomed to making distinctions between trade marks containing MAX. Evidence of co-existence in the United States was not a determinative factor because the lack of evidence of each parties' sales in the U.S. made it unclear if their sales were significant enough that the absence of instances of actual confusion is a particularly relevant circumstance.
7. Les Ressorts Primeau v. Park Avenue Furniture, June 27, 2003 (Herzig) Confusion
Use-based application for SENSAFLEX for mattresses. Opposition based, inter alia, on s.12(1)(d) due to confusion with SENSOFLEX registered for springs for mattresses. The opponent filed neither evidence nor written argument.
Held: Opposition rejected. The applicant's evidence showed "that the parties deal with different clientele, the applicant serving the person who buys a mattress while the opponent serves the manufacturer who constructs a mattress." In view of "the relatively low inherent distinctiveness of the opponent's mark, the differences in the parties' wares and in their channels of trade, and that the opponent has not evidenced any acquired reputation for its mark… the balance of probabilities slightly favours the conclusion that the marks in issue are not confusing."
8. Zeneca v. Raymond Junior Courtemanche, July 4, 2003 (Carrière) Confusion/Sufficiency of Applicant's Evidence
Application for BONZAI & Design based on use for certain wares and services and proposed use for other wares and services. Opposition based on s. 16 due to confusion with BONZI, which is the subject of a previously filed application for plant growth regulators.
Held: Application refused in part, namely with respect to a long list of wares and services including fertilizers, insecticides, manure, vegetables and herbs, and landscaping, fertilization and horticultural services. The applicant did not satisfy its burden of proof to demonstrate that its mark was not likely to cause confusion with the BONZI mark in respect of the above wares. The applicant's evidence was not clear with respect to whether the sales figures given related to wares or services, and/or to which of these. Also, it was unclear whether applicant's evidence showed use of the mark in the form applied for, and there was a lack of evidence regarding the period and distribution of advertising, or of use of the mark in association with wares. The factors of distinctiveness, channels of trade and length of use favoured neither party. Products of the applicant and opponent appeared to overlap in relation to horticultural and agricultural wares and services.
9. Culinar v. William Levene, July 4, 2003 (Carrière) Confusion
Proposed-use application for CULINAIRE HOT CAFÉTIÈRE & Design for coffee pots and cafetières. CAFÉTIÈRE disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CULINAR registered for food products and the preparation of food products. Neither party filed evidence; only the applicant filed a written argument.
Held: Opposition rejected. There is no likelihood of confusion because the parties' wares and services are different, there is no evidence concerning the nature of trade of either party, and the only resemblance between the marks "is the word CULINAR versus CULINAIRE, which is suggestive of <<culinary>> thus relating to food or the kitchen in general."
10. Marion Frederiksen v. Featherspring, July 4, 2003 (Carrière) Confusion/Use by Whom/Distributor/Agent/Ambiguous Evidence /Unlawful Use
Use-based application for LUXIS for shoe insoles. Opposition based, inter alia, on s.16(1) due to confusion with LUXIS previously used by the opponent for insoles. The opponent alleged that the applicant was acting as its distributor and therefore any use accrued to her benefit.
Held: Opposition rejected. The opponent's evidence consisted of an affidavit from the general manager of a German private company owned by Marion Frederiksen. The evidence was ambiguous as to who was being referred to as the opponent in the affidavit, the company or the individual. There was no evidence concerning whether the company was a separate legal entity or a trade name used by Marion Frederiksen. These ambiguities were resolved against the interest of the affiant. The evidence showed that a relationship had developed between the company and the applicant, not between Marion Frederiksen and the applicant. In any event, the relationship was tantamount to the company acting as a local manufacturing agent for the applicant, not as the applicant's principal. Moreover, there was evidence that the German Trademark Office had held that the applicant was the proper owner of LUXIS in Germany and the opponent had been ordered to transfer the German ownership to the applicant. Any use of LUXIS by the opponent in Canada would not be lawful use that could give her priority over the applicant.
11. Ivy Lea Shirt v. Muskoka Fine Watercraft and Supply, July 8, 2003 (Herzig) Confusion
Proposed-use application for CHESTNUT CANOE CO & Design for watercraft; sails; paddles; marine fittings; chinaware, brassware, table glassware, hobby kits; life jackets. CANOE, CANADA, CO, MUSKOKA and ONT disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CHESTNUT CANOE CO & Design registered for shirts, jackets, sweaters, caps and badges. The applicant filed neither evidence nor written argument but did attend an oral hearing.
Held: Application refused with respect to life jackets. A life jacket may be thought of as a form of wearing apparel and some stores that carry life jackets might also carry sports clothing. The marks are identical but for the addition of the words MUSKOKA ONT. CANADA in small print on the applicant's mark.
12. British Columbia Hydro and Power Authority v. Gallagher Group, July 15, 2003 (Bradbury) Section 12(1)(e)
Application for SMARTPOWER based on proposed use, as well as use and registration abroad, for electrical fence systems and parts therefor. Opposition based, inter alia, on s. 12(1)(e) because it so nearly resembles the opponent's official mark POWER SMART as to be likely to be mistaken for it.
Held: Application refused. An individual with imperfect recollection of the opponent's mark is likely to mistake SMARTPOWER for it, bearing in mind that the wares and trades are not relevant under s. 9. The marks have a high degree of resemblance visually, aurally, and with respect to idea suggested.
13. Canadian Inovatech v. Burnbrae Farms, July 15, 2003 (Bradbury) Descriptiveness
Proposed-use application for BARN EGGS for eggs, free run shell eggs and the packaging for shell eggs. Opposition based, inter alia, on s. 12(1)(b) because the mark clearly describes that the associated wares are natural or healthy eggs produced in old-fashioned barns.
Held: Opposition rejected. It was not clear to the Hearing Officer what the words "barn eggs" might mean and some mental exercise is required in order to try to reach a meaning. Although there was evidence that the term "barn eggs" is used in some other countries in a descriptive manner, there is no basis on which to conclude that the words are clearly descriptive. The mark may suggest that the eggs come from a barn but that suggestion is not a self-evident description of a feature, trait or characteristic of an egg.
14. La Senza v. Mike Aloneissi, July 15, 2003 (Bradbury) Confusion/Section 6(5)(e)
Proposed-use application for SENSEWEAR for shirts, hats, jeans, slacks, underwear, socks, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark LA SENZA registered for wearing apparel and the operation of retail outlets for the sale of such wares.
Held: Opposition rejected because confusion not likely. Although the opponent's mark has been used to a greater extent in association with wares similar to those of the applicant, it is the degree of resemblance between the marks that is the most important factor when considering the likelihood of confusion. The only resemblance between the marks is the letter sequences "sen" and overall a consideration of the s. 6(5)(e) factors favours the applicant.
15. Standard Candy v. Sugar Mountain Confectionery, July 16, 2003 (Herzig) Confusion/Typical Purchaser
Proposed-use application for KOO-KOO BAR for candy, toffee and taffy. BAR disclaimed. Opposition based, inter alia, on s. 16(3) due to confusion with GOO GOO previously used by the opponent for candy.
Held: Opposition rejected. Given the relatively low degree of inherent distinctiveness and the different ideas suggested by the marks, the balance of probabilities weighs slightly in favour of concluding that the marks are not confusing. The applicant's evidence is that its proposed candy is the reintroduction of a vintage candy and that customers of such candies know exactly what they want and are very selective. The applicant intends to sell the candy through its vintage candy stores. However, the application was not restricted to vintage candy or by any channels of trade and there is the potential that both parties' candy would compete for the same client base and through the same channels of trade. The opponent's candy is sold through major retailers, grocery stores and convenience stores and are typically consumed by children who, according to the opponent's affiant, "do not spend a great deal of time examining the packaging of products they intend to purchase."
16. Groupe Conseil Parisella et al. v. CPSA Sales Institute, July 18, 2003 (Carrière) Section 30/Confusion/Certification Mark/Use as a Trade Mark
Use-based application for PVA for services of a professional sales person, and sales manager, on behalf of others. Opposition based, inter alia, on s. 30 because the mark had not been used since the date claimed and s. 16 due to confusion with the trade mark PVA, previously used by the opponent for management consulting and educational services.
Held: Application refused. The applicant's evidence showed that the applied for PVA mark was an acronym for "professionel de la vente agréé" and was used in the context of a certification program of the applicant whereby only sellers that met certain criteria of the applicant were allowed to use the certification mark. The applicant's evidence demonstrated use of the PVA acronym to identify a professional title, but not as a trade mark in association with services, within the meaning of s. 2, 4 and 23 of the Trade-marks Act. The s. 30 ground was therefore successful. Concerning confusion, the opponent's evidence showed use prior to the applicant's claimed date of first use and, considering all of the factors of confusion, on balance the applicant's PVA mark was confusing with the opponent's mark.
17. Ralston Purina Canada v. DML Foods Canada, August 10, 2003 (Carrière) Descriptiveness
Proposed-use application for MEDI CAL FELINE REDUCING FORMULA for dietary pet food. FELINE and FORMULA disclaimed. Opposition based, inter alia, on s. 12(1)(b) because the mark is clearly descriptive of the character or quality of dietary cat food which contains a reducing formula and medicine.
Held: Opposition rejected. The Hearing Officer held that the conclusions reached in Ralston Purina Canada Inc. v. H.J. Heinz of Canada (2000), 6 C.P.R. (4th) 394 applied equally to the present file and therefore found the present mark to not be clearly descriptive. The decision relied upon concerned an application for the trade mark MEDI CAL & Maple Leaf Design for pet food. The Hearing Officer held that the differences in the wares was not a distinguishing factor and that the additional words in the present mark did not render the present mark, when viewed in its totality, clearly descriptive. The Hearing Officer considered the use of MEDI CAL“ FELINE REDUCING FORMULA to be use of the applied for mark.
III. SECTION 45 DECISIONS
1. Borden, Ladner Gervais v. Honoré Destrempes, May 22, 2003 (Savard) Sufficiency of Evidence
OVIDE DESTREMPES & Design registered in association with ointment.
Held: Registration expunged. The registrant made a mere unsubstantiated allegation that the mark had been used during relevant period. The evidence "completely" failed to describe the registrant's normal course of trade and failed to show that there was a transfer or sale of the wares bearing the trade mark during the relevant period. No explanation was given concerning the affiant's relationship with the registered owner or his personal knowledge of the use of the trade mark by the registered owner.
2. Riches, McKenzie & Herbert v. Horizon Santé International, May 22, 2003 (Savard) Sufficiency of Evidence/ Whether the Use Shown Constitutes Use of the Registered Trade Mark/Canada Evidence Act
PHYTOMIN registered for "supplement de vitamines".
Held: Registration expunged. The registrant submitted labels showing use of the mark "PHYTOMIN-C". The issue was whether or not the use of "PHYTOMIN-C" on the label constituted use of the trade mark PHYTOMIN "per se". The Senior Hearing Officer held that the public as a matter of first impression would not perceive the word "PHYTOMIN" "per se" as functioning as a separate trade mark from the letter "C", even if the letter "C" was descriptive. Rather, the public would view the letter "C" as being tied to the word "PHYTOMIN" particularly due to the presence of the hyphen creating a composite mark. Additionally, the Senior Hearing Officer noted that the document furnished by the registrant was not a "statutory declaration" complying with the requirements of s. 41 of the Canada Evidence Act. The evidence contained in the document was nonetheless considered by the Senior Hearing Officer.
3. Swabey Ogilvy Renault v. The Hewitt Soap Company, May 22, 2003 (Savard) Evidence of Sales
KIRKO registered for use in association with soap.
Held: Registration expunged. Although evidence was submitted showing that products bearing the trade mark KIRKO were available for sale in Canada, no actual sales occurred in Canada during the relevant period. The evidence failed to show that a transfer of the property in or possession of the wares occurred during the relevant period.
4. 88766 Canada v. Imperial Tobacco Products, May 22, 2003 (Savard) Sufficiency of Evidence
CHANTECLER registered for tobacco and cigarettes.
Held: Registration amended. The registrant submitted packaging and sales figures showing use of the trade mark during the relevant period by a controlled licensee, but only in association with the wares "tobacco".
5. Molson Canada v. Pernod Ricard, May 27, 2003 (Savard) Sufficiency of Evidence/Whether the Use Shown Constitutes Use of the Registered Trade Mark
PACIFIC RICARD & Design registered for various beer, alcohol and liquor products.
Held: Registration expunged. The evidence failed to show that the trade mark as registered was the trade mark appearing on the wares. The registrant stated that at least 1300 bottles of "apéritifs anises sans alcool" bearing the "PACIFIC" trade mark were sold during the relevant period. The Senior Hearing Officer held that the word "PACIFIC" could not be regarded as use of the registered trade mark PACIFIC RICARD.
6. Ridout & Maybee v. A. Lassonde, May 28, 2003 (Savard) Special Circumstances /Absence of Use
OASIS registered for various food stuffs including pastries, desserts, ice cream and yogurt.
Held: Registration expunged. The registration was not used during the relevant period. The registrant claimed that the absence of use was attributable to the difficulty in finding suppliers, distributors and licensees. Although the registrant stated that certain business opportunities were presented during the relevant period, he provided no particulars concerning these business opportunities and failed to provide the reasons an agreement could not be reached. Thus, the Senior Hearing Officer was unable to determine whether the absence of use was due to circumstances within the owner's control or to obstacles beyond its control. The registrant did not provide any evidence (i.e. contract, distribution plan, purchase orders, etc.) to show that it intended to resume use shortly.
7. Cassels Brock & Blackwell v. Montorsi Francesco E Figli, June 5, 2003 (Savard) Special Circumstances/Sufficiency of Evidence/Issuance of Second Section 45 Notice
DANIEL & Design registered for San Daniele ham.
Held: Registration maintained but Registrar issued a second s. 45 notice. The registrant acquired the mark six years prior to the issuance of the first s. 45 notice. The registrant contended that the lack of sales during this period was due to the compliance requirements imposed by the Canadian Food Inspection Agency (CFIA) and an agreement between the European Community and the Government of Canada. The registrant was required to satisfy these requirements in order to export San Daniele ham into Canada. The registrant had made all of the necessary changes and adaptions to its facilities required by CFIA prior to the issuance of the notice. The Senior Hearing Officer held that the compliance requirements imposed on producers of San Daniele ham were beyond the registrant's control. Given that the registrant took all necessary steps so that its facilities would be in compliance with the requirements, the period of non-use in the present case was not unreasonable. The Senior Hearing Officer held that the registrant's evidence was vague concerning its ability to export San Daniele ham once approval is granted to the industry's governing body, the San Daniele Ham Consortium.
8. Purafil v. Purafil Canada, June 5, 2003 (Savard) Sufficiency of Evidence /Packaging/Discretion of Registrar to Check Register
PURAFIL & Design registered for "filters and permanganate impregnated pellets for use as an air deodorant".
Held: Registration maintained. The registrant submitted invoices evidencing sales of its filters and pellets in Canada in association with the mark PURAFIL. A portion of the sales for the filters and pellets included analysis services. In addition, the registrant provided representative photographs of the typical containers in which the wares were packaged, distributed and sold in Canada. The requesting party argued that registrant's furnished was imprecise, ambiguous and contradictory. The requesting party also argued that the container shown in the photographs featured the trade marks SKUNK & Design and ERADICATAIR, the registrations for which have been expunged. The requesting party contended that the container was out of date and, thus, was unlikely to have been used during the relevant period. The Senior Hearing Officer held that the affidavit together with the exhibit material showed use of the PURAFIL trade mark during the relevant period. Although a portion of the sales related to "services", the remaining portion of the sales was attributable to the wares. Regarding the SKUNK & Design and ERADICATAIR marks on the container, the Registrar may exercise his discretion to check the trade mark register to see if a registration has been expunged. However, the Registrar will generally not do so in a s. 45 proceeding. The Senior Hearing Officer held that the registrant ought to have provided an explanation as to the reason a photograph of a container having handwritten markings thereon was provided in evidence. Nonetheless, the Senior Hearing Officer accepted the affiant's statement that the photograph shows a typical container for the wares.
9. McCain Foods v. Maxim Marketing, July 4, 2003 (Savard) Sufficiency of Evidence/ Section 4/ Whether Use Shown in Canada
POCKET PRETZELS registered for stuffed pretzels.
Held: Registration maintained. The registrant submitted a specimen package of the POCKET PRETZELS product and copies of invoices and waybills showing sales and shipments into Canada. The requesting party argued that it is unclear whether the registrant's normal course of trade includes "Canada" because the phrase "in Canada" has been omitted from several activities discussed in the affidavit. The Senior Hearing Officer held that the evidence of use was "not overwhelming" and 'barely sufficient' for the purposes of s. 45. However, it could be inferred that the registrant's description of its normal course of trade would include "Canada". The requesting party further argued that the actual transfer of the goods or possession in the goods took place in the United States, not in Canada. The Senior Hearing Officer held the placing of orders by retailers in Canada to the registrant in California, and the shipment of goods by the registrant to the retailers in Canada amounted to use of the trade mark in Canada.
10. Brouillette Kosie v. Andrés Wines, July 4, 2003 (Savard) Normal Course of Trade/Whether the Use Shown Constitutes Use of the Registered Trade Mark
VERITAS registered for use in association with wines.
Held: Registration expunged. Sales to different wine outlets in Canada, although not made directly by the registrant, constitute use of the trade mark VERITAS that accrues to the benefit of the registrant. The requesting party argued that the registrant had failed to show use of its registered trade mark VERITAS. The registrant's evidence showed the word "VERITAS" used in a banner design in the expression "IN VINO VERITAS". The Senior Hearing Officer held that the words "IN VINO VERITAS" appearing in the banner design in the same colour, and same size and style of lettering, and given that it is a foreign expression having French and English meanings, would most likely be perceived as forming a unitary expression. Accordingly, the word VERITAS "per se" would not be perceived as forming a distinct trade mark. In using the composite mark "IN VINO VERITAS" the registrant did not use the trade mark VERITAS.
11. Brouillette Kosie v. Andrés Wines, July 4, 2003 (Savard) Whether the Use Shown Constitutes Use of the Registered Trade Mark
IN VINO VERITAS registered for use in association with wines.
Held: Registration maintained. The registrant submitted sample labels showing the mark IN VINO VERITAS applied to a wide variety of wine products. Additionally, the registrant provided invoices showing sales of the registrant's wine products bearing the labels. The registrant's evidence showed that the trade mark has always been used with additional matter, namely in a coat of arms. The Senior Hearing Officer held that as a matter of first impression the words IN VINO VERITAS "per se" would probably be perceived as being used as a separate trade mark from the whole matter. The words IN VINO VERITAS would arguably be considered by the public as a slogan or motto used by the registrant in association with its wines and functioning as a trade mark.
12. Laboratoire Théramex v. E-Z-EM Canada, July 4, 2003 (Savard) Sufficiency of Evidence
THERAPEX registered for use in association with pharmaceutical preparations, namely, vitamins, tranquilizers, decongestants, antibiotics, analgesics, sedatives, hypnotics, antitussives, antitussive expectorants, sclerosing agents, and operation of a business for manufacturing on demand, sale and distribution of pharmaceutical and radiological products.
Held: Registration maintained. The registrant provided sales and advertising figures during the relevant period, as well as samples of invoices, flyers, brochures, business cards, letterhead, envelopes, boxes, stickers, labels, product packaging and invoices, all bearing the mark. Although the brochures and flyers were not dated, it was clear that they were included to demonstrate how the mark was used in the promotion of the services, and given the advertising expenditures provided for the relevant period, it could be inferred that these materials were representative of the type of materials used during that time. The word THERAPEX was used in some of these materials as a trade name, but also could be perceived as a trade mark, which was evident given the registrant's use of the symbol ®, or display of the word THERAPEX alone or in predominant lettering.
13. Markus Cohen v. Cheesecake Factory, July 9, 2003 (Savard) Sufficiency of Evidence/Special Circumstances/Ancillary or Incidental Services/ Scope of the Words "Restaurant Services"
THE CHEESECAKE FACTORY registered for use in association with the wares bakery products, namely cakes, and restaurant services.
Held: Registration amended. The requesting party argued that the evidence failed to show any use of the trade mark in Canada in association with "restaurant services". The registrant did not itself operate a restaurant in Canada. However, the registrant submitted that it has explored and continues to explore potential Canadian sites for restaurants through Cadillac Fairview, a Canadian developer. The registrant indicated that it has had difficulty in deciding on a Canadian location for a restaurant due to its operating model which mandates large restaurants. The Senior Hearing Officer held that the fact that the registrant is considering potential Canadian sites is insufficient to show a serious intention prior to the date of the s. 45 notice to commence use of the trade mark in the near future.
The registrant further submitted that the words "restaurant services" should be given a broad interpretation and that evidence of use of the trade mark in association with services that are ancillary or incidental to "restaurant services" should be sufficient. The Senior Hearing Officer noted that the registrant's evidence showed that cakes produced by the registrant were sold to restaurants in Canada. However, the Senior Hearing Officer held that more is required to support a conclusion that such an activity constitutes "restaurant services" or services incidental and ancillary to restaurant services. The mere fact that the registrant produces cakes as part of its operation does not amount to restaurant services or services incidental or ancillary to "restaurant services".
14. 2001237 Ontario v. Apache-Minnesota Thom Mcan, July 9, 2003 (Savard) Special Circumstances/ Corporate Reorganization
TEXAS STEER registered for footwear namely boots.
Held: Registration expunged. The registrant submitted that the absence of use of the mark TEXAS STEER was due to a corporate reorganization. Although the registrant had been actively pursuing potential distributors since 1999, it has not yet been able to reach an agreement with an appropriate distributor. The Senior Hearing Officer held that a change in ownership which has occurred less than three years prior to the date of a s. 45 notice could be considered in excusing a period of non-use. However, such a factor alone cannot excuse the absence of use of almost three years by the new owner in the present case. The registrant must explain fully the reason it has not been able to commence use of the trade mark since its acquisition. Lastly, the three-year relevant period specified in s. 45 should normally be considered as the maximum start-up time for a registrant to commence serious commercial use.
15. 2001237 Ontario v. Footstar, July 9, 2003 (Savard) Special Circumstances
THOM MCAN & Design registered for hosiery and wearing apparel.
Held: Registration expunged. The registrant submitted that the absence of use of the mark THOM MCAN was due to a corporate reorganization. The registrant stated that it has been actively pursuing a distributor for its product lines in various countries, including Canada. The efforts have included telephone conversations, e-mails and written correspondence with distributors in Canada, as well as sending catalogues to potential distributors. The Senior Hearing Officer held that the evidence was insufficient to support a conclusion that the absence of use of the trade mark was due to special circumstances. The registrant has owned the trade mark for more than three years and does not appear to be in a position to commence use in Canada. Although the registrant has been pursuing potential distributors, the affidavit is silent concerning the reason the registrant has not reached an agreement as of the date of the affidavit.
