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johnsanche Inglês 43 flashcards

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  1. 1Re/Max International, Inc. v. Metro/Max Realty Inc. (1997) 82 C.P.R. (3d) 110 (T.M.O.B.)- advertising dated after its claimed date of first use
    - not approved to perform real estate services until its claimed date of first use "difficult to imagine that they would have been performed by the end of the…first day of operations"
  2. 2Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974) 16 C.P.R. (2d) 97 (F.C.T.D)evidence showed date of first use was actually EARLIER than date of first use claimed
    - “I can see no reason why the applicant may not, out of an abundance of caution, select a later date of which he has no doubt as to the confirmed use as of that date particularly when it is to the disadvantage of the applicant to forego the advantage of an earlier date in the interest of greater certainty”
  3. 3Goodall Rubber Co. v. Goodyear Tire and Rubber Co. (1999) 3 C.P.R. (4th) 393 (T.M.O.B.)“The trade-marks register is a public record…I would think that the Registrar has at least some duty to ensure that entries on the register are as accurate as may be reasonably expected…I am doubtful whether the instant case, wherein the applicant has disregarded about 30 years of use of its marks, falls within the type of exception permitted by Marineland, above”
  4. 4Tone-Craft Paints Ltd. v. Du-Chem Paint Co. Ltd. (1969) 62 C.P.R. 283 (T.M.O.B.)Opponent alleged that the application did not conform to the requirements of section 30, in the applicant was using the mark since 1965, but filed the application based on proposed use on January 7, 1966
    - “It is clear that the application should have been filed on the basis of the use of the mark in Canada…and not on proposed use…It follows that I have no alternative but to refuse the application on the grounds that the application does not comply with the requirements of s.29 (now s.30) of the Trade Marks Act”
  5. 5Scotch Whisky Assn. v. Mark Anthony Group Inc. (1990), 31 C.P.R. (3d) 55 (TMOB)- Application filed for “distilled alcoholic beverages” based on proposed use.
    - Allegations supported by applicant’s own evidence.
    - Applicant’s affiant stated under cross-examination that applicant sells variety of alcoholic beverages. Provided representative sampling of advertising materials describing goods using specific terms such as vodka, gin, rum, etc.
  6. 6International Stars S.A. v. Simon Chang Design Inc. (2012) 2012 TMOB 113- Application contained wares described as “exercisewear”.
    - Opponent introduced evidence of 12 registrations where exercisewear was further specified to name specific items (e.g., jogging pants, etc..)
    Applicant did not file evidence or argument.
    Opposition successful only in respect of 30(a) ground.
    Application refused in respect of “exercisewear”.
  7. 7Molson Cos. Ltd. v. Andres Wines Ltd. (1989), 23 C.P.R. (3d) 544 (TMOB)- Application for GOLDEN GLOW based on use since 1944 in association with “wine”.
    - Opposition based on non-compliance with 30(e), mark not used since date claimed.
    - Application amended during opposition to recite wares as “wine, namely, cider”.
    - Opponent added non-compliance with 30(a) as ground of opposition.
    - Applicant’s evidence did not establish that cider is a type of wine.
    - Application refused.
  8. 8Kraft Ltd. v. Canada (Registrar of Trade-marks) (1984), 1 C.P.R. (3d) 457 (FCTD)- Application for BREADWINNERS for services of providing coupon programs pertaining to line of food products.
    - Application refused by Registrar because services as described did not fall within meaning of “services” as contemplated by the Act.
    - Fed. Ct. nothing in the Act to suggest that services are limited to those which are not “incidental” or “ancillary” to the sale of goods.
    - “services” should not be interpreted restrictively.
  9. 9Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528 (TMOB)- Application for services of advertising, marketing and promotional services relating to pet food products of the applicant.
    - Opposed on basis that statement of services is not set out in ordinary commercial terms and does not describe a service within the meaning of Section 4 of the Act.
    - Opp. Board considered decision in Kraft and other cases and concluded that while Act does not restrict a service to one that is not merely incidental or ancillary to sale of goods, there must still be a third party benefit.
    - Advertising/marketing services do not provide a benefit to the public.
  10. 10Sharp Kabushiki Kaisha v. 88766 Canada Inc. (1997), 72 C.P.R. (3d) 195 (FCTD)- Appeal of order of Registrar in S. 45 proceeding to delete “watches and clocks” from statement of wares in registration.
    - Registrant submitted evidence of use of mark in association with talking clocks and electronic calculators with clock function.
    - It is the Appellant who gave “talking clocks” its commercial description and who amended its trademark registration by adding thereto the use which this description spells out. If it did so, it must be because it considered the use of its trademark with respect to “talking clocks” to be different from such use with respect to “clocks and watches”.
  11. 11Thorold Concrete Products Ltd. v. Registrar of Trade Marks (1961) 37 C.P.R. 166 (Exchequer Court of Canada)- Applicant filed for trade-mark THOR-O- MIX for use in association with ready made concrete.
    - The application was refused by the Registrar of Trade Marks on the grounds that it was clearly descriptive of the character or quality of the goods.
    - Applicant appealed to the Exchequer Court of Canada.
    - Justice Kearney for the Court held that THOR-O-MIX was the phonetic equivalent of THOROUGH-MIX.
  12. 12Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978) 40 C.P.R. (2d) 25 (F.C.T.D)- Applicant filed for the trade-mark SUPERWASH for use in association with yarns or fabrics, used in men’s and
    women’s sweaters and men’s hosiery.
    - The application was refused by the Registrar of Trade Marks on the grounds that it was clearly descriptive of the character or quality of the goods.
    - Applicant appealed to the Federal Court, Trial Division.
    - Justice Collier for the Court held that SUPERWASH was a coined word made up of two dictionary words (“super” and “wash”). Said the Court: “The fact that it has no dictionary status does not, in my view, remove it from the ambit of para. 12(1)(b).”
  13. 13Provenzano v. Register of Trade Marks (1977) 37 C.P.R. (2d) 189 (F.C.T.D.)- Applicant filed for the trade-mark KOOL ONE for use in association with beer.
    - The application was refused by the Registrar of Trade Marks on the grounds that it was clearly descriptive of the character or quality of the goods.
    - Applicant appealed to the Federal Court, Trial Division.
    - Justice Addy for the Court held that KOOL ONE was not clearly descriptive or deceptively misdescriptive of “beer”, and allowed the appeal of the decision of the
    Registrar of TradeMarks.
    - “The adjective ‘cold’, when applied to a beer is not in any way descriptive of the intrinsic character or quality of the product…"
  14. 14Registrar of Trade Marks v. Provenzano (1978) 40 C.P.R. (2d) 288 (F.C.A.)- The Registrar of Trade Marks appealed to the Federal Court of Appeal.
    - Justice Heald for the Court upheld the decision of the Federal Court, Trial Division that KOOL ONE was not clearly descriptive of the intrinsic character or quality of the product.
  15. 15Pizza Pizza Ltd. v. Registrar of Trade Marks (1982) 67 C.P.R. (2d) 202 (F.C.T.D.)- Applicant filed for the trade-mark PIZZA PIZZA for use in association with pizza and other food products, and take out restaurant services.
    - The application was refused by the Registrar of Trade Marks on the grounds that it was clearly descriptive of the goods and services.
    - Applicant appealed to the Federal Court, Trial Division.
    - Justice Rouleau for the Court held that PIZZA PIZZA was a coined phrase that was capable of distinguishing the wares and services of the Applicant from the wares and services of others.
    - “The expression ‘pizza pizza’ is not a linguistic construction that is a part of normally acceptable spoken or written English. The words ‘pizza pizza’ together do not go together in a natural way and the court is satisfied that they do not have a descriptive meaning. The words are capable of acquiring the specified
    meaning as a trade-mark.”
  16. 16Clarkson Gordon v. Registrar of Trade Marks (1985) 5 C.P.R. (3d) 252 (F.C.T.D.)- Applicant filed for the trade-marks THE
    AUDITCOMPUTER and AUDITCOMPUTER for use in association with examining and testing bookkeeping records by computer and consulting with respect to such examination and testing.
    - The application was refused by the Registrar of Trade Marks on the grounds that it was clearly descriptive of the services.
    - Applicant appealed to the Federal Court, Trial Division.
    - Justice Reed for the Court held that AUDITCOMPUTER was a coined word and that the mark did not remove from the vocabulary available to others any of the commonly descriptive words by which those services might be described.
    - “It is an awkward and cumbersome… combination of two words…But, the coined word does not clearly describe a ‘computer-assisted audit’. This becomes obvious when one considers that to get from the prospective trade-mark the meaning contended for, one has to separate the two words of which it is formed, reverse them and add a verb between.”
  17. 17Effigi, Inc. v. Canada (Attorney General) (2005), 41 C.P.R. (4th) 1 (FCA),the Registrar no longer considers the dates of first use or making known as a relevant consideration when considering which application is entitled to advance to approval.
  18. 18GSW Ltd. v. Great West Steel Industries Ltd. (1975), 22 C.P.R. (2d) 154 (Fed. T.D.)- Appeal of the decision of the Registrar rejecting the appellant’s opposition to the mark GWS & Design for structural steel.
    - Appellant’s mark is G.S.W. for same wares.
    - Marks consisting of letters or initials are inherently weak marks. “where a trader has appropriated letters of the alphabet as a design mark without accompanying distinctive indicia, and seeks to prevent other traders from doing the same thing, the range of protection to be given that trader should be more limited than in the case of a unique trade mark and comparatively small differences are sufficient to avert confusion and a greater degree of discrimination may fairly be expected from the public in such instances.”
    - “in the case of weak marks or of marks possessing little inherent distinctiveness, small differences may be accepted to distinguish one from the other”.
    - Appeal dismissed.
  19. 19Cartier Men’s Shops Ltd. v. Cartier Inc. (1981), 58 C.P.R. (2d) 68 (Fed. T.D.)- Appeal of decision of Registrar refusing application to register CARTIER & Design for use in association with haberdashery based on confusion with CARTIER for jewellery and leather goods.
    - Presumption that date of first use in registration is correct and can be used to prove length of time the mark has been in use.
    - Length of time favored the Opponent (respondent)
    - Appeal dismissed.
  20. 20Clorox Co. v. E.I. du Pont de Nemours & Co. (1995), 64 C.P.R. (3d) 79 (Fed. T.D.)- Du Pont filed application to register IMPACT for use with “chemicals for treating swimming pool and spa water”.
    - Clorox opposed on basis of registration for IMPACT for use with “insecticides”.
    - Registrar rejected opposition because wares were intrinsically different.
    - On appeal, court was of the view that wares were not intrinsically different, because they were marketed in close proximity.
    - Applicant (Du Pont) did not establish that there was no reasonable likelihood of confusion.
    - Appeal allowed. Application refused.
  21. 21Eminence S.A. v. Canada (Registrar of Trademarks) (1977), 39 C.P.R. (2d) 40 (Fed. T.D.)- Applicant (Eminence) applied to register EMINENCE with “perfume, eau de cologne for men and aftershave lotions
    - Registrar refused application on grounds of confusion with registration for EMINENCE by Fabergé for “hairspray, hair setting lotions, shampoo”
    - Decision of Registrar appealed to Fed. Court.
    - Appellant contends Registrar erred in concluding that wares will be offered for sale in the same type of establishment.
    - Appellant submitted affidavit evidence showing that the hair products were sold to professional hair salons and not to drugstores and pharmacies where Appellant’s wares were sold.
    - Court dismisses Appellant’s argument stating “Even if Fabergé does not sell its products in the same places as appellant, it is legally entitled to do so. It matters little that at the present time Fabergé's wares are sold in hairdressing salons rather than in drug stores”
    - Appeal dismissed. Application refused.
  22. 22Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (Fed. T.D.)- Applicant (respondent) sought to register MLLE AGE TENDRE for “magazines and periodicals”
    - Opponent (appellant) opposed on basis of registration for MADEMOISELLE for “magazines”
    - Registrar rejected opposition
    - On appeal, Court disagreed with the conclusion of the Registrar.
    - Court felt that marks were more similar in appearance than did the Registrar, particularly given the similarities in the first word of the respective marks.
    - Cattanach J: It has appropriated the appellant's mark in its entirety and added thereto as a suffix the words "age tendre". It is axiomatic that the first word or the first syllable in a trade mark is far the more important for the purpose of distinction. Here the first and most important word in the mark which the respondent seeks to register is identical to the mark registered by the appellant.
    - Appeal allowed.
    - Application refused.
  23. 23Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (TMOB).- The Applicant filed for trade-mark THE PURPLE TURTLE for use in association with chewable vitamins.
    - The Opponent alleged confusion with its prior marks and pleaded grounds of non-registrability, non-entitlement and non-distinctiveness.
    - Opponent also opposed on the basis of section 30(i), i.e. that the Applicant could not have been satisfied that it was entitled to use the trade-mark THE PURPLE TURTLE, in view of the prior use by the Opponent of its three marks.
    - The Registrar of Trade Marks offered its views on the appropriate way in which to plead s. 30(i).
    - “Unless there is evidence of bad faith on the part of the applicant, there would appear to be no case in which the allegation of confusion could not be more directly and more appropriately raised under either s.37(2)(b) or (c)...Whatever is the correct view of the application of s.29(i) there is no doubt that it is commonly resorted to in oppositions in circumstances where it serves no purpose other than to clutter up the proceedings.“
  24. 24Co-Operative Union of Canada v. Tele-Direct (Publications) Inc. (1991), 38 C.P.R (3d) 263 (TMOB).- Applicant filed for the trade-mark CO OP & Design for use in association with classified advertising services.
    - The Opponent opposed on the basis of section 30(i), i.e. that the Applicant could not have been satisfied that it was entitled to use the trade-mark CO-OP & Design.
    - The Opponent alleged that the adoption of the word “CO-OP” as a trade mark by an entity that wasn’t in fact a “co-operative” was prohibited by sections 37(2) and (3) of the Canada Cooperative Associations Act, R.S.C. 1985, c. C-40.
    - “The proposed use by the applicant of a trade-mark which includes the word “co-op”…does raise the suggestion that the applicant may be holding itself out as carrying on business on a co-operative basis…It is clear from the Seguin affidavit, however, that the applicant is not a co-op…I consider that the applicant has failed to satisfy its onus on it to show the truthfulness of the statement in its application that it was satisfied that it was entitled to use the trade-mark Thus, the first ground is successful.”
  25. 25House of Edgeworth Inc. v. Barrons (1992), 42 C.P.R. (3d) 463 (TMOB).- The Applicant filed an application to register the trademark EXECUTROID for use in association with organization of competitions, and various tobacco products and smoking accessories.
    - The Opponent opposed on the basis of section 30(i), i.e. that the Applicant could not have been satisfied that it was entitled to use the trade-mark.
    - The Opponent alleged that the use of the trade-mark in association with both tobacco products and non-tobacco products was prohibited by section 8 of the Tobacco Products Control Act, R.S.C. 1985, c.14.
    - “Thus, the applicant’s application appears to include both tobacco products and non-tobacco products and she is precluded from using her trade mark with both classes of goods. She could therefore not have been satisfied that she was lawfully entitled to use her trademark with both classes of goods. Consequently, I find that the opponent’s first ground of opposition is successful.”
  26. 26Institut National des Apellations d’Origine v. Brick Brewing Co. (1995), 66 C.P.R. (3d) 351 (TMOB).- The Applicant filed for the trade-mark THE COGNAC OF FINE BEER for use in association with beer.
    - The Opponent opposed on the basis of section 30(i), i.e. that the Applicant could not have been satisfied that it was entitled to use the trade-mark.
    - The Opponent alleged that the use of the term “COGNAC” was prohibited by section 5(2) of the Food and Drugs Act, R.S.C. 1985, c.F-27, and by section B.02.054 of the Food and Drug Regulations, C.R.C. 1978, c.870.
    - Previous oppositions based on non-compliance with s. 30(i) of the Trade marks Act, have been successful where an opponent has made out a ‘prima facie’ case
    - “It is at least arguable that the applicant’s proposed use of its trade mark THE COGNAC OF FINE BEER for beer would be in contravention of s.5(2) of the Food and Drugs Act…Since the applicant has filed no evidence, I am left in a state of doubt regarding the applicant’s compliance. I must, therefore, resolve that doubt against the applicant and find that the first ground of opposition is successful.”
  27. 27Canadian Bankers’ Assn. v. Richmond Savings Credit Union (2000), 8 C.P.R. (4th) 267 (TMOB)- The Applicant filed an application for the registration of the trade-mark WE’RE NOT A BANK. WE’RE BETTER for use in association with financial services.
    - The Opponent opposed on the basis of section 30(i), i.e. that the Applicant could not have been satisfied that it was entitled to use the trade-mark.
    - The Opponent alleged that the use of the term BANK was prohibited by section 564 of the Bank Act, S.C. 1991, c.46.
    - “Certainly, the evidence of record does not show that the applicant considered that its trade-mark offended the provisions of Subsection 564…of the Bank Act when it filed its present application. Furthermore, it is doubtful as to whether the applicant’s mark offends the provisions of Subsection 564…of the Bank Act…I have therefore rejected the first ground of opposition”.
  28. 28Cadbury Confectionery Canada Inc. v. Valliant-Saunders (2002), 22 C.P.R. (4th) 388 (TMOB)- The Applicant filed an application for the registration of the trade-mark CANNABIS CRUNCH for use in association with chocolate bars containing cannabis seeds.
    - The Opponent opposed on the basis of section 30(i), i.e. that the Applicant could not have been satisfied that it was entitled to use the trade-mark.
    - The Opponent alleged that the application failed to comply with section 30(i) of the Trade-marks Act on the basis that the applicant could not have been satisfied that he was entitled to use the trade-mark applied for since the proposed wares could not lawfully be sold in Canada.
    - “…it is apparent that the applicant can make legal use of certain types of cannabis seeds in his proposed chocolate bar. Nothing in the Valliant Saunders affidavit suggests that the applicant intends to use illegal or prohibited cannabis seeds in his wares. In such a circumstances, I consider that it is reasonable to assume that the applicant will comply with relevant statutes, regulations and guidelines in manufacturing and selling his proposed product.”
  29. 29Park Avenue Furniture v. Wickes Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)- The applicant applied to register the mark POSTUREBEAUTY in association with beds, mattresses and furniture.
    - Opponent opposed on basis of confusion with its registered marks comprising BEAUTY, including BABYBEAUTY for crib mattresses and children’s furniture.
    - Registrar stated that the material date for assessing the issue of confusion was the date of filing the statement of opposition.
    - Registrar refused application on basis of assessment of all surrounding circumstances.
    - Trial judge agreed with Registrar re the material date but said that same result would flow if material date was date of filing application.
    - Trial judge also held that applicant bore the burden of proving that there would be no reasonable likelihood of confusion.
    - Court of appeal – Act contains no indication as to material date for determining confusion. General rule that material date is date on which matter disposed of (i.e., the date of the decision)
  30. 30General Housewares Corp. v. Fiesta Barbeques Ltd. (2003), 28 C.P.R. (4th) 60 (FCTD)- Application to register GRILL GEAR & Design based on proposed use with barbecue accessories.
    - Registrar refused application on basis that mark when sounded, was clearly descriptive.
    - Appellant alleges that material date should be filing date – significant because most of Opponent’s evidence was after filing date.
    - Appellant contends:
    - Registrar relied on decisions where material date was stated in obiter (Lubrication Engineers);
    - Registrar ignored SCC case Lightning Fastener;
    - Registrar’s decision in direct contradiction to express wording of 12(1)(e), s. 9, s.10, s. 12(2), etc.;
    - Makes more business sense for material date for 12(1)(b) to be date of filing.
    - Court of Appeal held that Registrar erred in ignoring the decision in Lightning Fastener that the applicable date is the date of the application.
  31. 31Zorti Investments Inc. v. Party City Ltd. (2004), 36 C.P.R. (4th) 90 (Trade-marks Opposition Board)- Application to register DISCOUNT PARTY SUPER STORE for retail party supply store services.
    - Application claims benefit of Section 14(1) based on corresponding US registration and supporting affidavit evidence.
    - Opposed on basis mark is clearly descriptive.
    - Material date for assessing registrability under 12(1)(b) is date of filing application – relying on GRILL GEAR case.
    - Despite Examiner’s acceptance of affidavit evidence in support of Section 14 claim, the onus remains on the applicant to show that its mark is registrable.
    - “It would therefore seem to follow that the material time for considering the circumstances respecting Section 14(1) of the Act should be the same as that for Sections 12(1)(b) and (2) i.e., the filing date of the applicant’s application. To use a later date for Section 14(1) would not only be logically inconsistent but would also appear to unfairly advantage a foreign applicant over a domestic applicant who must evidence that his clearly descriptive mark has become distinctive as of the filing date of the application”.
  32. 32Andres Wines Ltd. v. E. & J. Gallo Winery (1976), 25 C.P.R. (2nd) 126 (FCA).- Application for SPANADA based on proposed use for wines.
    - Question as to whether mark was at the material time adapted to distinguish the wine of the respondent from the wine of others.
    - Material date for determining distinctiveness is date of filing st.of opp.
    - Appellant filed many affidavits attesting it had broadcast TV commercials advertising its mark which had been received by a substantial portion of CDN population.
    - Appellant argued this was sufficient to show that the Respondent’s identical mark actually distinguishes or was adapted to distinguish its wares from the appellant’s wares.
    - “our Trade-marks Act was not enacted to encourage in Canada the adoption of foreign registered marks, even if there were no user by the foreign registrant here. That would cause confusion and deception, just the thing that trade marks were supposed to avoid…”
    - The use by the respondent of the mark SPANADA would be calculated to deceive and mislead the public and it follows that the mark is not adapted to distinguish the wares of the respondent.
  33. 33Orkin Exterminating Co. v. Pestco of Canada (1985), 5 C.P.R. (3d) 433 (Ont. C.A.) Passing-off- US Co. Orkin began in 1901 – had expanded throughout US and was one of biggest extermination companies in world. Orkin had no operations in Canada as of date of action but did have some Canadian customers who used Orkin’s services for vacation properties in US.
    - Canadian Co. Pestco began using ORKIN name and trade-mark in 1967. Took name and mark from Orkin’s brochure. In 1976, applied to register ORKIN. Only used ORKIN name in telephone directory listings.
    - Questions on appeal:
    •did Orkin have a protectable reputation (goodwill) in Canada?
    •did Orkin suffer damage?
    - Courts should protect foreign traders whose trade-marks have become known in Canada, even though no business activity has actually been carried on here. The protection is against misrepresentation and deception.
    • A plaintiff does not have to be in direct competition with the defendant to suffer injury from the use of its trade name by the defendant. If the plaintiff's trade name has a reputation in the defendant's jurisdiction...defendant's use means plaintiff has lost control.
  34. 34Ciba Geigy Canada Ltd. v. Apotex, Inc. [1992] 44 C.P.R. (3d) 289 (S.C.C.)- Respondents had license to make and sell generic version of Appellant’s drug.
    •Respondents’ drug sold in tablets of same size, shape and colour as Appellant’s.
    - Parties’ drugs designated interchangeable pursuant to Prescription Drug Cost Regulation Act.
    - Who is the relevant public when considering confusion in relation to pharmaceutical products?
    Appellant -- ultimate consumer
    Respondent - dr. or pharmacist
    - Court recites three necessary components of passing-off:
    •existence of goodwill
    •deception due to misrepresentation
    •damage (actual or potential)
    - “There is no reason in law to depart from the well-established rule that the final consumer of a product must be taken into account in determining whether the tort of passing-off has been committed”.
  35. 35Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée. [2006] 49 C.P.R. (4th) 401 (S.C.C.) Depreciation of Goodwill•VEUVE CLICQUOT – famous brand for wines and champagne. Recently expanded to cover range of promotional items, including clothing (not available in Canada).
    •Respondents operate retail women’s clothing stores targeted at career women, under the trade-marks CLIQUOT and CLIQUOT UN MONDE A PART. Marks are registered.
    - Four elements:
    1) Use of Appellant’s registered mark
    2) Proof of goodwill
    3) Linkage between Plaintiff’s goodwill and Defendant’s use
    4) Likelihood of Depreciation
  36. 36Philip Morris Products S.A. v. Marlboro Canada Ltd. (2012), 103 C.P.R. (4th) 259 (F.C.A.) Infringement (Section 20)• PM owns MARLBORO mark worldwide except Canada.
    • ITL owns MARLBORO mark in Canada.
    •ITL claimed that PM infringed ITL’s registered trade-mark MARLBORO by selling ‘no-name’ product in Canada incorporation PM’s ROOFTOP Design.
    • PM did not use ITL’s mark on its packaging and expressly instructed retailers not to refer to product by MARLBORO trade-mark.
    •Yet judge proceeded to consider the factors in Section 6(5)(a) to (e).
    •No resemblance between the marks. However judge suggested “the need to adopt a purposive and contextual interpretation of paragraph 6(5)(e)”.
    • Adding a brand name to the no-name product would have severed the mental link.
    • customers will be using MARLBORO mark to refer to two different products offered by two different manufacturers. “This must necessarily result in confusion as to source since consumers expect that products of the same kind, which they can refer to by the same name and buy through the same channels, will come from the same source”.
  37. 37Molson Companies Ltd. v. John Labatt Ltd. et al. (1984), 1 C.P.R. (3d) 329 (F.C.T.D.)- Registrant owned the trade-mark registrations for CLUB SELECT and HUNT CLUB. In February 1980, section 45 notices were issued against the marks.
    - At the hearing, counsel for the Registrant submitted that the section 45 notices were void as they were not signed by the Registrar of Trade-marks (but by a Trade-marks Office employee acting on behalf of the Registrar).
    - The Trade-marks Office held that the trade-marks were not in use and ordered that they be expunged.
    - The Registrant appealed to the Federal Court of Canada, Trial Division.
    - “There is no evidence that the registrar did not in this case consider whether or not there was a good reason not to give notice. Section 45 affords a simple, summary proceeding to clean up the ‘dead wood’ from the register…the registrar ‘shall’ send a notice, unless the request is frivolous or for some other good reason.”
    - Registrant’s appeal is dismissed by the Court.
  38. 38Plough Canada Ltd. v. Aerosol Fillers Inc. (1979), 45 C.P.R. (2d) (F.C.T.D.) and (1980), 53 C.P.R. (2d) 62 (F.C.A.)- Registrant owned the trade-mark registration for PHARMACO. On September 7, 1978, a section 45 notice was issued against the registration.
    - The owner of the registered trade-mark filed an affidavit stating that it “is currently using and was on September 7, 1978 using the registered trade-mark PHARMACO in the normal course of trade in Canada in association with pharmaceutical preparations.”
    - "bare allegations"
    "should be evidence of use prior to the giving of the notice by the Registrar"
    "affidavit..susceptible of more than one interpretation...then the interpretation adverse to the interest of the party in whose favour the document was made should be adopted"
    - The Registrant appealed to the Federal Court of Appeal.
    The Federal Court of Appeal upheld the Federal Court, Trial Division decision, holding that section 45 requires “not merely stating but ‘showing’…
  39. 39Philip Morris Inc v. Imperial Tobacco Co of Canada (1987), 13 C.P.R. (3d) 289 (F.C.T.D.)- Registrant owned trade-mark registration for CAMBRIDGE. A section 45 notice was issued against the reg(...).
    - The Registrar maintained the registration and the requesting party appealed to the Federal Court, where the Registrant filed additional evidence.
    - Justice McNair for the Court dismissed the appeal: “The registrar’s decision is not one that finally determines substantive rights but only whether the trade-mark entry is liable to be expunged under s.45 or not.”
    - “Evidence of a single sale, whether wholesale or retail, in the normal course of trade may well suffice as long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived to protect the registration of the trade-mark. Evidence in response to a s.45 notice should be forthcoming in quality, not quantity, and there is no need nor justification for evidentiary overkill.”
  40. 40Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 C.P.R. (3d) 363 (F.C.T.D.)- Registrant owned trade-mark registrations for MOLSON’S GOLDEN ALE & Design, GOLDEN ALE & Design and MOLSON GOLDEN ALE & Design. Section 45 notices were issued against the registrations.
    - The Registrar of Trade-marks ordered the registrations to be expunged. On appeal to the Federal Court, Trial Division, the Registrant filed additional evidence in which more precise information was given relating to export sales relied upon by the Registrant.
    - The Federal Court, Trial Division allowed the appeal, and the registrations were maintained.
    - “s.4(3) requires that the wares to which a trade-mark is affixed in Canada, or to their containing packages on which it is affixed, be sent out of Canada to another country in a commercial transaction, if use of the trade-mark on exported wares is to be deemed use in Canada. I do not interpret the subsection as incorporating the condition of s.4(1), that the transaction be ‘in the normal course of trade’. I do not see this as necessarily a lower standard than that provided for use of a trade-mark by s.4(1), though it be a different standard."
  41. 41Bereskin & Parr v. Star-Kist Foods, Inc. (2004), 37 C.P.R. (4th) 61 (T.M.O.B.)- Registrant owned the trade-mark registration for PAMPER & Design. A section 45 notice was issued against the registration.
    The Registrant filed affidavit evidence purporting to show use of the trade-mark in Canada during the relevant period.
    - “The Dodd affidavit refers to sales of PAMPER brand cat food of Quaker Oats having been made by retailers in Canada in 1995, 1996 and 1997. It does not refer to PAMPER & Design brand cat food. Further, the affidavit does not include any physical exhibits showing the manner the trade-mark appeared in association with the wares at the time of sale.”
    - “…it cannot be concluded that the trade-mark as registered was the trade-mark used in association with the wares…” (my emphasis) because “…in the trade-mark as used the dominant features of the registered trade-mark have not been maintained.”
  42. 42Sara Lee Corp. v. Intellectual Property Holding Co. (1997), 76 C.P.R. (3d) 71 (T.M.O.B.)- Registrant owned trade-mark registrations for EXPERT EYES and EXPERT TOUCH. Section 45 notices were issued against the registrations.
    - The Registrant filed affidavit evidence purporting to show use of the trade mark in Canada during the relevant period, by an authorized licensee of the mark.
    - “In the instant proceedings…there is a licensing agreement in place that sets out the terms and conditions of the license. One of those terms is that the registered owner is entitled to exercise control over the character and quality of the wares.”
    - “…I am prepared to infer from the inclusion of such a provision in the license agreement that the owner has, under the license, direct or indirect control of the character and quality of the wares, in compliance with the provisions of s. 50 of the Act.”
  43. 43Xentel DM v. Office of the Commissioner of Baseball (2002), 23 C.P.R. (4th) 570 (T.M.O.B.)- Registrant owned trade-mark registration for ALL-STAR GAME for use in association with “the presentation and promotion of baseball games and exhibitions rendered live and through the media of radio and television broadcasts”. A section 45 notice was issued against the registration.
    - “Special circumstances must be taken to refer to circumstances which are ‘special’ in the sense of being peculiar or abnormal and which are experienced by persons engaged in a particular trade as the result of the working of some external forces as distinct from the voluntary acts of any trader.”
    - The Hearing Officer identified three important criteria for determining whether special circumstances exist: “First the length of time during which the trade-mark has not been in use; secondly, it must be determined whether the registered owner’s reasons for not using the trade-mark were due to circumstances beyond its control; thirdly, one must find whether there exists a serious intention to shortly resume use.”

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FlashCards sobre Caselaw, criado por johnsanche em 04-11-2014.
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