In Curb v. Smart & Biggar, the applicant — a well known American record producer — successfully petitioned the Federal Court to set aside the Registrar’s decision to strike certain wares and services from his registration of the mark CURB RECORDS. The Court found that the additional evidence the applicant had filed on appeal was sufficient to establish use for the purposes of § 45 of the Trade-marks Act (the “Act“). In particular, the Court held that under the circumstances, evidence that the applicant’s multimedia website was accessible from Canada was sufficient to show use with respect to the provision of “entertainment services provided by pre-recorded music,” even though the site was hosted abroad. However, the Court disregarded evidence that the applicant had sold t-shirts and caps bearing the mark in Canada “and/or” the United States for lack of specificity, affirming the Registrar’s decision to strike those wares from the applicant’s registration. (more…)
Archive for the ‘Canada: Trademarks’ Category
FC Accepts Evidence that Extraterritorial Website Was Accessible from Canada for Purposes of Section 45 of the Trade-marks Act
Posted in Canada: Trademarks 
Tags: evidence of use, extraterritorial website, Section 45 
No Comments »FC Rules TM Applications Not to Be Dissected by Sound, Confirms Patients Perspective Plays a Role in Confusion Analysis of Pharmaceutical Marks
In NPS Pharmaceuticals v. Biofarma (2009 FC 172), the Federal Court upheld the Trade-marks Opposition Board’s (“the Board”) decision to dismiss NPS Pharmaceuticals’ (“NPS”) application to register the mark PREOS based on proposed use in association with pharmaceutical preparations for the treatment of certain bone diseases. Biofarma, Société par Actions Simplifiée (Biofarma), whose proposed marks PROTOS and PROTELOS had been accepted, but not yet registered, in association with nearly identical wares, opposed the application. (more…)
FC Finds New Invoices Correlating Wares to Previously Meaningless Product Codes Demonstrates Use (II)
In Loro Piana S.P.A. v. Canadian Council of Professional Engineers (2009 FC 1096), the Federal Court reversed a Hearing Officer’s decision to delete certain wares from Loro Piana’s mark, ING. LORO PIANA & C. (“the PIANA mark”), for non-use. On appeal, Loro Piana was able to show that invoices that had been before the Hearing Officer, which referred to the wares in question by code in fact established use, by filing additional exhibits explaining the meaning of those codes. The Court also held that, by adding the text “FABRICS MADE IN ITALY” and “Super 120’s,” Loro Piana had not deviated from the registered form of its trademark as the text would not have been perceived as forming part of the PIANA mark itself. Similarly, cautious variations can be made from a mark, in this case, Loro Piana used a script version of the PIANA mark, so long as the same dominant features of a mark are maintained and the differences are not so unimportant as not to mislead an unaware purchaser. (more…)
Posted in Canada: Trademarks Tags: New evidence, non-use, Section 45, standard of review, Variations No Comments »FC Finds New Invoices Correlating Wares to Previously Meaningless Product Codes Demonstrates Use (I)
In Loro Piana S.P.A. v. Canadian Council of Professional Engineers (2009 FC 1095), the Federal Court reversed a Hearing Officer’s decision to delete certain wares from Loro Piana’s mark ING. LORO PIANA & C. & DESIGN (the “Mark”), for non-use. On appeal, Loro Piana was able to show that invoices that had been before the Hearing Officer, which referred to the wares in question by code, in fact established use by filing additional exhibits explaining the meaning of those codes. The Court also held that by adding the text “FABRICS MADE IN ITALY,” Loro Piana had not deviated from the registered form of its trademark as the text would not have been perceived as forming part of the mark itself. (more…)
Posted in Canada: Trademarks Tags: New evidence, non-use, Section 45, standard of review No Comments »FC Finds trade-mark nonuse while waiting for unrelated legal dispute Not a “Special Circumstance” under S45
In Jose Cuervo S.A. de C.V. v. Bacardi & Company Ltd. (2009 FC 1166), the Federal Court dismissed an appeal of the expungement of trade-mark Reg. No. #341290 CASTILLO for non-use. The Court found that neither “special circumstances” nor sufficient evidence existed to justify what the “voluntary non-use” of the mark. (more…)
FCA Confirms Present Time Frame Perspective for Confusion Analysis in Expungement Proceedings
In Masterpiece Inc. v. Alavida Lifestyles Inc. (2009 FCA 290), the Federal Court of Appeal dismissed an appeal from the Federal Court (2008 FC 1412) where they had denied Masterpiece’s application for expungement of Alavida’s trade-mark “Masterpiece Living.” The Court of Appeal held that the trial judge had properly considered whether Alavida’s trade-mark was confusing at the date of registration, rather than whether it would be confusing in future. (more…)
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