TM deck 1

johnsanche
Flashcards by johnsanche, updated more than 1 year ago
johnsanche
Created by johnsanche almost 6 years ago
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Flashcards on TM deck 1, created by johnsanche on 11/04/2014.

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Question Answer
Section 30(a) - Identity of Applicant An applicant must be a legal entity An Individual, for example, John Doe; A legal Partnership; An Association which is a legal entity; A Joint Venture; and A Corporation (can be foreign).
Where there has been use of a trademark in Canada, the application must list not only the name of the applicant, but any of its predecessors in title that have used the trademark Successful opposition for failure to identify predecessors-in-title: R.W.S. Hoists & Cranes, Inc. v. Richards- Wilcox Canada Inc. (2004), 41 C.P.R. (4th) 258 (TMOB)
16(2) basis of registration was invalid since the mark had not been used in a foreign country (i.e., the United States) prior to the material date, namely, the filing date of the Canadian application. The Thymes, LLC v. Reitmans Canada Ltd., 2013 FC 127
Description and drawings of a mark must of themselves clearly define what the trademark consists of and, although the TM Office may request that specimens be furnished, the description should not itself refer to specimens since specimens are not an integral part of an application Novopharm v. Bayer (1999), 3 C.P.R. (4th) 305 (FC)
2012 Federal Court decision ordered the Trademarks Office to approve for advertisement a (SOUND ONLY) DESIGN trademark application Metro-Goldwyn-Mayer Lion Corp v Attorney General of Canada (March 1 2012), Ottawa T-1650-10 (FC)
Requirements for requesting the publication of an official mark 1) must be a public authority in Canada (Canada Post Corporation v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (FC) affirmed (2007), 54 C.P.R. (4th) 121 (FCA)); 2) Two-part test: a significant degree of control must be exercised by the appropriate government over the activities of the body; and the activities of the body must benefit the public (Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 19 C.P.R. (4th) 417 (FCA); reversing (2000), 19 C.P.R (4th) 417 (FC)). [MORE DETAIL IN COURSE]
What must be supplied at the time a request for public notice of an official mark is filed? 1. Evidence of public authority status [Stadium Corporation of Ontario Ltd. v. Wagon-Wheel Concessions Ltd., [1989] 3 F.C. 132 (FC)]; 2. A copy of the enabling legislation; 3. Evidence of adoption and use of the mark. For the purpose of Section 9 of the Trademarks Act, "use" must involve a public display of the marks in question (See You In - Canadian Athletes Fund Corporation v. Canadian Olympics Committee, 2008 FCA 124). NOTE: Use of the official mark by a licensee is not considered use by the entity.
“distilled alcoholic beverages” are no longer considered sufficiently specific to meet the requirement of Section 30(a) of the Trademarks Act. Scotch Whisky Association v. Mark Anthony Group Inc. (1990), 31 C.P.R. (3d) 55 (TMOB)
services defined as "advertising and marketing relating to products of the applicant" do not constitute a service pursuant to Section 4 of the TMA. Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528 (TMOB)
No provisions in the Act restrict a service to one that is not merely incidental or ancillary to the sale of goods [case], but there is still a requirement that there be a service offered to some third party Kraft Ltd. v. Registrar of Trademarks (1984), 1 C.P.R. (3d) 457 (FC)
‘FIOR’ was a word invented by it for use as its trade mark in this connection. It follows, therefore, that ‘FIOR’ is not ‘merely’ the surname of a living person because it also has existence as a word invented by the appellant or persons working for it for trade mark purposes. Standard Oil Co. v. Registrar of Trademarks (1968), 55 C.P.R. 49 (Ex. Ct.)
“...the two characters of the word ‘elder’, one as a surname and the other as a dictionary word, are each of substantial significance and therefore it cannot be said that the word is ‘primarily’ a surname.” Elder’s Beverages (1975) Ltd. v. Registrar of Trade-Marks (1979), 44 C.P.R. (2d) 59 (FC)
SCC approved the test of the hypothetical person in the FIOR case. In the COLES case, Judson J. found that COLES is a surname well-known to the general public in Canada. He also found that the dictionary meaning of the word “cole” and its plural form “coles” are largely obsolete. Refusing registration, he stated: “My only possible conclusion in this case is that a person in Canada of ordinary intelligence and of ordinary education in English or French would immediately respond to the trade mark ‘Coles’ by thinking of it as a surname and would not be likely to know that ‘Coles’ has a dictionary meaning.” Registrar of Trade-Marks v. Coles Book Stores Ltd. (1972), 4 C.P.R. (2d) 1 (SCC)
Opposition Board held that the word “Jurak” was not primarily a surname, even though there was evidence that it was a surname, and there was no evidence that it had any other connotation. The Board nevertheless held that the average Canadian would be as likely, if not more likely, to respond to the mark by thinking of it as the brand of some business than as a surname. This suggests that a word that is only a surname may nevertheless be registrable if it is a rare surname, or for any other reason is not readily recognizable as a surname. Jurak v. Matol (2006), 50 C.P.R. (4th) 337 (TMOB)
Registrar found the trademark SIR WINSTON to constitute a combination of words by which the late Sir Winston Leonard Churchill was regularly known and designated, and was therefore primarily merely the name of an individual who had died within the preceding 30 years. Baroness Spencer-Churchill v. Cohen (1968), 55 C.P.R. 276 (Reg. T.M.)
in allowing registration of the mark MARCO PECCI: “What is precluded by para. 12(1)(a) from registration as a trade mark is the ‘name or surname of an individual who is living or has died with the preceding thirty years’ and the name of a fictitious person is not precluded thereby from registration except when by chance the fictitious name coined by the applicant for registration thereof coincides with the name of a living person or a person who bore such name and has been dead for less than thirty years.” Gerhard Horn Investments Ltd. v. Registrar of Trademarks (1983), 73 C.P.R. (2d) 23 (FC)
Words that describe the character of the wares or services are not likely registrable. As to what constitutes “character”, Cattanach J. in [case] stated that “...the word 'character' as used in Section 12(1)(b) must mean a feature, trait or characteristic of the product.” Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 (FC)
Moreover for a word to be clearly descriptive, the feature, trait or characteristic of the product that the word describes (or misdescribes) must be intrinsic or material to the composition of the product Provenzano v. Canada (Registrar of Trademarks) (1977), 37 C.P.R. (2d) 189 (FC)
Words that are laudatory, such as BEST, SUPER and EXCELLENT are typically unregistrable because they clearly describe or deceptively misdescribe the quality of the wares or services. In [case], the trademark SUPERSET was found to be clearly descriptive of telephones and therefore registration was denied. Mitel Corporation v. Registrar of Trademarks (1984), 79 C.P.R. (2d) 202 (FC)
To be clearly descriptive of the place of origin, it is necessary that the trademark is the place from which the wares or services originate, that is, the applicant’s place of business; an area, region or country which has an established reputation as a source of production for wares and services of that nature; or if the place is recognized as a manufacturing, trading or industrial centre and therefore would be a likely source for a wide variety of products Atlantic Promotions Inc. v. Registrar of Trademarks (1984), 2 C.P.R. (3d) 183 (FC)
Conditions of production refer to the manner in which the goods are produced. For example, in [case], the application for KILNCRAFT was refused on the grounds that it was clearly descriptive of tableware which was produced through a kiln process. If the wares were not produced in such a manner then the mark would have been found to be clearly misdescriptive. If the mark in the above case had been POTTER’S CRAFT for the same wares, it would likely have been found clearly descriptive of the persons employed in the production of the goods and would likewise have been refused. Staffordshire Potteries Ltd. v. Registrar of Trademarks (1976), 26 C.P.R. (2d) 134 (FC)
Test for Descriptiveness First, the word must be considered as to its meaning in the common parlance and not its etymological meaning. Dictionaries may be relied on for this purpose but examiners should not rely on the obsolete, archaic or unusual meaning of a word. Second, the meaning of a word is not to be considered in isolation but rather in association with the wares and/or services with which the mark is proposed to be used. By way of example, the word TRACTION may not be clearly descriptive when considered in association with beer but would be clearly descriptive when considered in association with tires. The third element to consider is what first impression the word would create upon the ordinary, everyday dealer in or purchaser or user of the wares or services. If the ordinary person, as a matter of first impression, considers that the word describes a character or quality of the wares or services, then the mark is clearly descriptive and unregistrable.
Descriptiveness - multiple words Where a mark consists of multiple words, it is the meaning of a mark as a whole that must be considered. it is not uncommon for marks to consist of words which independently would be clearly descriptive and unregistrable, but when combined present sufficiently distinctive character as to be capable of registration. A good example of such is the mark COFFEE CRISP for candy bars.
While corruptions to the spelling of descriptive words (e.g., LITE, STA-ZON) are typically not sufficient to confer registrability, unusual grammatical constructs such as the use of repetition (e.g., PIZZA PIZZA) or the placement of words in reverse order (e.g., THE AUDITCOMPUTER), can result in a finding that a mark is not clearly descriptive. Pizza Ltd. v. Registrar of Trade Marks (1982), 67 C.P.R. (2d) 202 (FC); Clarkson Gordon v. Registrar of Trade Marks (1985), 5 C.P.R. (3d) 252 (FC)
concluded the words were the dominant feature of the mark and, given that these words were clearly descriptive of the character or quality of the applicant’s services, the mark in its entirety, when sounded, was found unregistrable pursuant to Section 12(1)(b) of the Act. Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004), 30 C.P.R (4th) 110 (FC)
Composite marks which include design elements added to clearly descriptive words not registrable if design elements are mere embellishments of the letters comprising the words and cannot be dissociated from the words themselves. Canadian Jewish Review Ltd. v. Registrar of [TM] (1961), 37 C.P.R. 89 (Ex. Ct.); Ingle v. Registrar of Trade Marks (1973), 12 C.P.R. (2d) 75 (FC); John Labatt Ltd. v. Registrar of Trademarks (1984), 79 C.P.R. (2d) 110 (FC)
whether a trademark is clearly descriptive or deceptively misdescriptive, it must be determined what first impression the mark would create upon the everyday user or purchaser of the wares and/or services. Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202 (FC)
if the mark or portion of the mark applied for consists of a professional designation, apply the first impression test in light of the applicant's wares and/or services. If the prospective consumer, when faced with the applied for trademark would immediately, as a matter of first impression, conclude that the wares or services are produced by a professional from that designation, the Office has determined that the mark will be found to be clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services and, therefore, unregistrable pursuant to the provisions of paragraph 12(1)(b) of the Act. Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202 (FC) Life Underwriters Assn. of Canada v. Provincial Assn. of Québec Life Underwriters (1988), 22 C.P.R. (3rd) 1 (FC) and Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992), 41 C.P.R. (3d) 243 (FCA)
Deceptively Misdescriptive Marks may misdescribe the wares or services with which they are associated but such marks are not unregistrable unless an element of deception exists. To be deceptively misdescriptive, the mark must lead the ordinary, everyday dealer in or purchaser or user of the wares or services to believe that the wares or services with which the mark is associated possess the character or qualities described by the mark.
where an applicant is the inventor of a particular ware and has used a coined trademark, but registration of the mark is refused or cancelled where the mark had come into generic use as the name of the ware itself. In such a case, where the trademark owner has demonstrated that it diligently policed use of the mark, it may remain on the Register notwithstanding that a portion of Canadian consumers uses the mark generically. Tele-Direct (Publications) Inc. v. Canadian Business Online Inc., Tele-Direct (Publications) Inc. v. Canadian Business Online Inc. et al. (1997), 77 C.P.R. (3d) 23 (FC)
Section 9(1)(j) – Scandalous, obscene or immoral marks Miss Universe Inc. v. Bohna (1994), 58 CPR (3d) 381 (FCA) "MISS NUDE UNIVERSE" - "nude" has no "scandalous, obscene, or immoral" character
Section 9(1)(k) – falsely suggest a connection with any living individual It the mark falsely suggests a connection with that individual the mark cannot be registered Carson v. Reynolds (1980), 49 C.P.R. (2d) 57 (FC)
an official mark must first be adopted and used as a condition for publication. The courts have interpreted “adopted and used” in the context of an official mark as requiring some form of public display of the mark. Internal memos and discussions preceding a request for publication are not sufficient. See You In – Canadian Athletes Fund Corp. v. Canadian Olympic Committee (2007), 57 C.P.R. (4th) 287 (FC) [affirmed 2008 FCA 124]
adoption and use of an official mark must be by the public authority, finding that Section 50 of the Act, which deems use of a TM by a licensee to be use by the owner of the TM, is inapplicable to official marks. Canada Post Corp. v. Post Office (2000), 8 C.P.R. (4th) 289 (FC)
to be a “public authority” within the meaning of Section 9(1)(n)(iii) of the Act, the body must be subject to the control of a Canadian government [case]. Canada Post v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (FC); aff’d (2007), 54 C.P.R. (4th) 121 (FCA)
courts have considered whether official marks may be assigned or licensed, noting that while the Act is silent on this issue, official marks may be assigned to an entity that is entitled to use such marks, i.e., another public authority. Sullivan Entertainment v. Anne of Green Gables (2002), 24 C.P.R. (4th) 192 (FC)
Section 9(1) prohibits the adoption “in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for”, a series of things... The test applied for “likely to be mistaken for” is one of resemblance and imperfect recollection, having regard for the degree of resemblance in appearance, sound or in the idea suggested Big Sisters v. Big Brothers (1998), 75 C.P.R. (3d) 177 (FC); affirmed, 86 C.P.R. (3d) 504 (FCA)
The comparison (to Official Mark) is limited to the marks themselves, and is unrelated to marketplace consideration such as the wares, services or channels of trade involved Canadian Olympic Association v. Konica Canada Inc. (1990), 30 C.P.R. (3d) 60 (FC); reversed on other grounds 39 C.P.R. (3d) 400 (FCA)
various marks involving the letters D.T.C.M. and R.Ac., were found to be prohibited under Section 10 on the basis that these letters had been historically used to describe doctors of traditional Chinese medicine and acupuncturists. [also associated services of providing educational services in those fields] and the historical marks have had commercial usage. College of Traditional Chinese Medicine Practitioners & Acupuncturists (British Columbia) v. Council of Natural Medicine College (Canada) (2009), 80 C.P.R. (4th) 265 (FC)
Section 12(2) - Acquired Distinctiveness Accordingly, in order to support a claim of distinctiveness under Section 12(2), affidavit evidence demonstrating sales and advertising of the mark in every province of Canada is required. Failure to establish distinctiveness throughout Canada can result in the issuance of a registration with territorial restrictions as noted in Section 32(2).
Section 14 Section 14 - a trademark that is not registrable by reason of Section 12(1)(a) (b) or (c), may be registered if it can be shown that the trademark has been registered in or for the country of origin of the applicant and is not without distinctive character in Canada. Notably, unlike Section 12(2), Section 14 can be used to overcome a citation with respect to Section 12(1) (c). This gives foreign applicants an advantage over Canadian applicants.
key difference between Section 14 and Section 12(2) a Section 14 claimant only has to show that the trademark is not without distinctive character in Canada. This is a lower standard of proof in that it does not require evidence of use or advertising throughout Canada (W.R. Grace & Co. v. Union Carbide Corp. (1987), 14 C.P.R. (3d) 337 (FCA)) Moreover, it is not even necessary that the evidence show use of the trademark in Canada. Rather, evidence of extensive spillover advertising into Canada can be sufficient to establish that the mark is not without distinctive character (Supershuttle International Inc. v. Canada (Registrar of Trademarks)(2002), 19 C.P.R. (4th) 34 at ¶17 (FC))
Section 14 - Material Date The current practice of examiners in the Canadian Trademarks Office is to treat the material date as the filing date of affidavit evidence in support of the Section 14 claim. However, the Opposition Board has adopted the date of filing of the trademark application in Canada as the material date with respect to the registrability of a mark under Section 14 (Zorti Investments Inc. v. Party City Corp. (2004), 36 C.P.R. (4th) 90 (TMOB))
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