Archive for the ‘Canada: Trademarks’ Category

FC Finds ornamental mark embossed on bathroom tissue hidden by packaging not S.4 “use”, unlikely to be recognized as indication of source by consumer

By Matt Jerome and Arif A. Mahmood on June 24th, 2010 in Canada: Trademarks

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. (more...)

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FC Upholds Striped Toothpaste Design Mark, Rejecting Non-Distinctiveness and Functional Arguments

By Heather Michel and Arif A. Mahmood on June 2nd, 2010 in Canada: Trademarks

In Procter & Gamble Inc. v. Colgate-Palmolve Canada Inc. (2010 FC 231), the Federal Court of Canada (FC) upheld a decision of the Trade-marks Opposition Board ("the Board") rejecting the Applicant Procter & Gamble's appeal under section 56 of the Trade-marks Act (the Act) opposing the registration of the Respondent Colgate-Palmolive's trade-mark Application for a Striped Toothpaste Design.

The FC addressed the appropriate standard of review and questioned whether the Board had erred in rejecting the Applicant's opposition to trade-mark Application No. 760,655 on six grounds. (more...)

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Federal Court Finds Sudden, Unexpected Changes in Ownership Excuse Non-use Under S45 of TMA

By Ilan Mints and Arif A. Mahmood on April 25th, 2010 in Canada: Trademarks

In Cobalt Brands LLC v. Gowling Lafleur Henderson LLP (2010 FC 260), Cobalt Brands LLC ("Cobalt") appealed the Registrar of Trade-Marks' ("Registrar") expungement of its USQUABEACH trade-mark Reg. No. 219,908 from the Trade-Mark register ("register") due to Cobalt's failure to file evidence of use pursuant to subsection 45(3) of the Trade-marks Act ("the Act"). Cobalt had acquired the USQUAEBACH mark in order to produce, market, import, and export a blended Scotch Whiskey which had been absent from the market since 2001. The Federal Court of Canada ("Federal Court") allowed the appeal, setting aside the decision of the Registrar and ordering it to reinstate Cobalt's USQUAEBACH mark. (more...)

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Federal Court Holds s50(1) Satisfied Where Registrant Maintains Control Through Chain of Sub-Licenses

By Arif A. Mahmood on April 14th, 2010 in Canada: Trademarks

In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP (2010 FC 267), Tucumcari Aero, Inc. ("Tucumcari") appeals the Registrar of Trademarks' ("Registrar") expungment of its MOTO MIRROR Trade-mark Reg. No. 496,171 due to lack of control of character as required by section 50(1) of the Trade-Marks Act ("the Act"). While the Registrar was satisfied as to use with truck and automobile mirrors, it found Tucumcari's affidavit ambiguous as to the control Tucumcari had maintained and ordered the mark expunged under section 45 of the Act. (more...)

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FC Declines to Apply Official Mark Prohibitions to Traditional Chinese Medicine Designations, Grants Summary Judgement Finding Designation Acronyms Descriptive, Recognized

By Matt Jerome and Arif A. Mahmood on March 31st, 2010 in Canada: Trademarks

In College of Traditional Chinese Medical Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada (2009 FC 1110), the Federal Court ("FC") granted the College of Traditional Chinese Medical Practitioners and Acupuncturists of British Columbia's ("Chinese Traditional College") motion for summary judgment. Registered and application marks of the Council of Natural Medicine College of Canada ("Natural Medicine College") were expunged for being descriptive under section 12(1)(b) of the Trade-Marks Act (the "Act"), not distinctive under section 18(b), and invalid for registration and in fine under section 18(1). A permanent injunction was issued against Natural Medicine College on two grounds: its marks had previously been commercially usaged under section 10 and mislead the public under section 7(d) of the Act. (more...)

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FC Accepts Evidence that Extraterritorial Website Was Accessible from Canada for Purposes of Section 45 of the Trade-marks Act

By Reed Taubner on February 4th, 2010 in Canada: Trademarks

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...)

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