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...)
Posts Tagged ‘non-use’
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...)
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