October 12, 2016
Author: Cynthia Rowden
Bereskin & Parr’s litigation practice includes acting in trademark and copyright matters before provincial and federal courts in cases involving trademark and trade dress infringement, passing off and trade secrets, originating opposition and cancellation cases before the Trademark Opposition Board, and Opposition Board appeals. The trademark litigation team includes partners Scott MacKendrick, Jonathan Colombo, Mark Robbins and François Larose, all of whom are also well-versed in trademark prosecution issues.
Several of our partners have been involved in cases decided in the last few months. Mark Robbins, who has been with the firm since being called to the bar in 1994, regularly appears before both the Opposition Board and the Federal Court. François Larose, who joined the firm in 2007, has similar experience, plus also acts in Quebec Superior Court cases. In June, the Federal Court issued a decision on a case in which both Mark and François teamed up to successfully defend an appeal of the Opposition Board’s decision finding that the INOA mark of L’Oréal is confusing with the opposer Cosmética Cabinas’ AINHOA mark, for similar cosmetic products. The appeal decision deals with complex issues of the standard of review, the impact of new evidence filed on appeal, the definition of “use” of a trademark, continuous vs. interrupted use, evidence of use, vs. reputation, and the extent of commercial activity to support a finding of “use”, vs. mere “token” use. There is a helpful list of decisions with example of unacceptable evidence of use (single sale to a subsidiary, order but not proof of delivery, samples given away), and decisions accepting proof of small sales as suitable evidence of use. The appeal decision also considered evidence of alleged non-compliance with food and drug regulations and its impact on a “use” claim, finding non-compliance relevant only if unlawful use is clearly established. Ultimately, the Court agreed with the Opposition Board on confusion, and the appeal was dismissed. [case link] (A further appeal has been filed.)
Mark also successfully defended an appeal of an Opposition Board decision rejecting an opposition to the mark MARCHÉ & Wave Design, filed by Movenpick for restaurant services. Movenpick already owned a registration for MARCHÉ, alone. The Opposition Board rejected the argument of opposer Richtree Market Restaurants that MARCHÉ was descriptive and non-distinctive, and filed evidence that other food service industry businesses used “marché” or “market” in their names. In the Federal Court’s decision in September, new evidence on appeal was reviewed, but found not likely to have impacted the Opposition Board’s findings, particularly since “marché” for restaurant services per se was not shown to be common. As with the INOA mark, above, technical issues regarding the standard of review and the impact of new evidence were fully canvassed in this decision. [case link]
Scott MacKendrick, who, along with the current head of the litigation group Don Cameron, joined the firm in 2012, recently handled an opposition appeal also dealing with a new design of an existing word mark. Caesarstone SDOT-YAM Ltd. applied for a design version of its well-known CAESARSTONE mark, for engineered quartz slabs, including countertops, and other related goods and services, to supplement its existing CAESARSTONE work mark registration. Despite the existing registration, which coexisted with the opposer’s CAESAR design mark, plus that the new application covered goods that overlapped with the original registered goods, the Opposition Board found that there was a reasonable likelihood of confusion of the CAESARSTONE Design mark with the opposer’s CAESAR design mark, claimed to be used before the new design mark. On appeal, the Federal Court allowed the appeal in part and referred the matter back “to a different member” of the Opposition Board, holding that the original Opposition Board decision reached an “unreasonable conclusion” on the likelihood of confusion in regarding the overlapping goods/services in the new application as a departure from, rather than an extension of, the registered goods/services . Similarly, that there was no evidence of confusion for the overlapping goods/services was seen by the Federal Court to be a factor the Opposition Board should have considered. [case link]
François Larose acted for Revlon in a complex multi-party dispute in the Québec Superior Court involving licensed trademark rights. Georges Marciano, claiming rights in the GEORGES MARCIANO mark, noted goods with that mark on several websites, and sued several companies, including Revlon who had, decades ago, been a sub- licensee of the GEORGES MARCIANO mark, as well as others allegedly involved with the online sales. The defendants disputed everything from the jurisdiction of Québec courts and statute limitations on the action, to the ownership of the GEORGES MARCIANO mark, whether or not the online goods were licensed, responsibility for supervising alleged counterfeits, and extent and scope of damage. Relying heavily on the evidence filed by Revlon, at the end of September, the Québec Superior Court confirmed that it did not have jurisdiction over the dispute and dismissed, outright, Mr. Marciano’s claims against all defendants.
Bereskin & Parr’s team offers the skill and experience to help you and your clients succeed. Don’t hesitate to contact any of the trademark litigation team for questions about Canadian cases and practice.
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