Posts from ‘Canada: Trademarks’
In Paul Cheung et al. v. Target Event Production Ltd. (2010 FCA 255), the Federal Court of Appeal (“FCA”) allowed in part an appeal made by Paul Cheung and Lions Communications Inc. (collectively “Lions”) and dismissed a cross-appeal made by Target from a decision rendered of the Federal Court (“FC”) (2010 FC 27). The FCA upheld the FC’s finding that Lions infringed Target’s copyright in certain documents and passed off its trade-marks contrary to s. 7(b) of the Trade-marks Act, and also held that there were no grounds for rejecting the FC’s findings with respect to the joint and several liability of Cheung. The FCA rejected Lions’ argument that Target had failed to fulfill the damage requirement set out in the test for the tort of passing off, holding that use of a trade-mark causing loss of control by the owner is sufficient to establish damage. In partially allowing the appeal, the Court amended the terms of the injunction issued by the FC and the form of costs granted. Continue Reading
In Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association (2010 FC 309), the Federal Court of Canada (“FC”) dismissed an appeal under s. 56 of the Trade-marks Act (“the Act”) by Worldwide Diamond Trademarks Ltd. (“Applicant”) from a decision of the Registrar of Trade-marks (sitting as the Trade-marks Opposition Board) dismissing the Applicant’s three applications under s. 12(1)(b) of the Act for being clearly descriptive of their wares and services.
In April 2004, the Applicant applied to register three trade-marks (CANADIAN DIAMOND REPORT, CANADIAN DIAMOND CERTIFICATE, CANADIAN DIAMOND APPRAISAL) in association with diamonds, diamond certificates and diamond appraisals; diamond cloths, magnifying loops; point of purchase countertop displays; posters; and pens; and diamond appraisal services. The Applicant disclaimed exclusive use of virtually all descriptive words as well as the phrase “A diamond that is mined, cut, and polished in Canada” apart from the mark. In September 2005, the Canadian Jewellers Association (“Respondent”) opposed. The issue was whether the addition of certain key words to the descriptive phrases rendered the marks non-descriptive.
In Jose Cuervo S.A. de C.V. v. Bacardi and Company Limited (2010 FCA 248), the Federal Court of Appeal (“FCA”) upheld a decision (2009 FC 1166) of the Federal Court of Canada (“Federal Court”) without providing additional reasons, dismissing an appeal from a decision of the Registrar of Trade-Marks (“Registrar”) to expunge Jose Cuervo S.A. de C.V.’s (“Jose Cuervo”) trade-mark registration # 341,290 CASTILLO for non-use.
Jose Cuervo markets alcoholic beverages, including Castillo rum. Jose Cuervo owned Canadian trade-mark registration No. 341,290 for its CASTILLO trade-mark. Bacardi & Company Limited (“Bacardi”) requested the Registrar issue a notice under S. 45 of the Trade-marks Act, which provides for the expungement of marks not used during a three-year period immediately preceding notice from the Registrar unless the non-use is due to special circumstances. Continue Reading
In Scott Paper v. Georgia-Pacific Consumer Products LP (2010 FC 478), the Federal Court of Canada (FC) set aside a decision from the Trade-Marks Opposition Board (TMOB) and reinstated applicant Scott Paper’s trade-mark application covering a daisy flower square pattern design for use with bathroom tissue.
Scott Paper had appealed under section 56 of the Trade-marks Act (the Act) against respondent Georgia-Pacific’s opposition on the grounds of confusion under 12(1)(d) and subsection 6(5), lack of entitlement under subsection 16(3) to register a confusing mark and lack of distinctiveness over the respondent’s own mark. Continue Reading
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