Counterfeiting of Luxury Goods – Canada’s Federal Court Acts Again

The Federal Court of Canada has again signalled its willingness to act decisively in the case of the counterfeiting of luxury goods in the Canadian marketplace.

In the latest chapter of the saga involving the counterfeiting of CHANEL brand products, Lam v. Chanel S. de R.L., 2017 FCA 38 (CanLII), the Federal Court of Appeal was faced with an appeal from the Federal Court’s re-determination of a motion for summary trial.  In the original decision, the Federal Court had granted judgment in favour of Chanel, and had issued an award of $64,000 in damages $250,000 in punitive and exemplary damages, and $66,000 in costs.  This original award was confirmed by the Court on a re-determination from the Federal Court of Appeal, as well as providing confirmation that the individual defendant, Lam, was personally liable for all four infringements.  On appeal from this re-determination, the Federal Court of Appeal dismissed the appeal on all grounds.

The Federal Court also found a defendant in a case involving the BURBERRY brand in contempt of court. (See Burberry Limited v. Ramjaun (Laguna Trading), 2016 FC 1188 (CanLII)

These decisions send a clear message that the Federal Court is prepared to take a strong position against counterfeiting, and particular against repeated instances of counterfeiting.

TMOB By the Numbers – January 2017

As a regular ongoing feature of our blog, we intend to produce a quantitative summary of all of the decisions of the Canadian Trade Marks Opposition Board on a monthly basis.  As there is a delay between the issuance of decisions and the time they are publicly available, there will be a time lag each month before our analysis can be prepared.

This is our first edition, for the decisions of the TMOB for January 2017.  In January, the TMOB released a total of 13 decisions, 9 in Section 45 cancellation proceedings, and 4 in opposition proceedings.

Section 45 Decisions

Procedural Details:     Written Submissions Filed:  4

                                    Oral Hearing Conducted:     2

Results:                       Registration Amended:         2

                                    Registration Cancelled:         3

                                    Registration Maintained:       4

Decisions of Note: 

(1)  Smart & Biggar v CSM Bakery Products NA, Inc. 2017 TMOB 4 (CanLII)

  In this case, the trademark registration in question covered goods including jams, jellies, icing, and pie filling.  The evidence filed by the registrant established that the trademark registration was in use in association with pie fillings.  The trademark owner argued that the evidence should be considered to be acceptable as proof of use for related goods such as jams, jelly or icing.  However, the Board concluded that having distinguished between particular goods in its trademark registration, the owner must provide some evidence of use with respect to each of the listed goods.

(2)    Sharlene Loveless v Estee Lauder Cosmetics Ltd.  2017 TMOB 5 (CanLII) An important exeception to the requirement to provide evidence of use in response to a Section 45 Notice, in the absence of which the registration will be cancelled, is the filing of evidence of exceptional circumstances which excuse the non-use.  In this case, it was held that the non-use was due to nothing other than a voluntary business decision, which is not the sort of uncommon, unusual or exceptional circumstances that constitute special circumstances.

(3)  Miller Thomson LLP v Hilton Worldwide Holding LLP 2017 TMOB 19 (CanLII)  The Board pointed out in this decision that the interpretation of the goods and services must be a purposive construction rather than an academic interpretation.  The services in question in this case were “hotel services”, and since there was no hotel in Canada, any argument that the services were provided in Canada could not succeed.  With respect to the “special circumstances” defence, the Board held that it was key to consider the time period of the non-use.  Here, there had been over 26 years of non-use from the date of the registration.  No details were provided on the progress of the negotiations to open a hotel, and there was no real indication as to when use of the mark would actually commence.  *An appeal has now been filed from this decision with the Federal Court.

Opposition Proceedings

Procedural Details:   Opponent’s Evidence Filed:            4

                                   Applicant’s Evidence Filed:            3

                                   Reply Evidence Filed:                     1

                                   Cross-Examinations Conducted:    1

                                    Written Arguments Filed:             3

                                    Oral Hearing:                                 3

Grounds of Opposition:  Confusion-based Grounds:      4

Results:                       Application Refused:                   3

                                    Opposition Rejected:                   1

Decisions of Note:

(1)      Vitamin Health, Inc. v Santé Naturelle A.G. Ltée  2017 TMOB 8 (CanLII)  This decision sheds light on the scope of cross-examinationsin opposition proceedings, and in particular requests to have the Board draw negative inferences following refusals to answer cross-examination questions.  In its arguments before the Board, the applicant was attempting to attack the opponent’s use on the basis that the opponent’s sales contravened regulations regarding the sale of natural health products.  However, the question of non-compliance with these regulations had not at the time of the cross-examinations been indicated on the record.  Accordingly, the objections to the cross-examination questions were well-founded.  The opponent’s rights to use its trademark is not a question to be determined in the context of opposition proceedings, and so none of the questions were relevant.

(2) AIL International Inc. v Canadian Energy Services L.P. 2017 TMOB 2 (CanLII)  This case involved the applicant’s trademark SUPERCORR, for chemicals, and the opponent’s trademark SUPER-COR covering corrugated drain pipe.  The Board held that the evidence was insufficient to establish that the applicant had established that there was use of its mark under license.  There was no evidence of quality control or of public notice.  However, the Board held that there was no likelihood of confusion in this case.  The Board pointed out that the result might have been different if the ground of opposition based on non-distinctiveness had been broadened.  This ground as pleaded was based solely on the opponent’s activities in association with its mark.  The Board stated that the opponent could have requested leave to amend its Statement of Opposition after seeing the deficiencies in the applicant’s evidence.  They noted that this is quite a common practice and that such leave is regularly granted.  If the opponent had then alleged that the trademark was not distinctive in Canada owing to the activities of the applicant’s licensee, the opposition might well have succeeded.

Walking the High Wire

No task is as complex in the preparation of trademark applications in Canada as the specification of goods and services.  This may involve the translation of extremely technical goods or services into language which accurately and specifically describes the goods and services in language which will be understood by the Examiner, but which are broad enough to allow for future innovations.  The goods and services must meet the requirements for reflecting the “ordinary commercial terms” test set out in the Trade-marks Act, and at the same time meet the requirements set out in the Manual of acceptable goods and services.  It is also important not to include any goods for which there will not be actual use of the trademark in Canada.  Finally, if the trademark is successfully registered, it will be vulnerable to cancellation proceedings after a grace period of three years following registration, and at that time it will be necessary to satisfy the Registrar that use has been made on all of the listed goods and services set out in the trademark registration.

The difficulties presented in such a case are illustrated in a recent decision of the Trade Marks Opposition Board, Gowling Lafleur Henderson LLP v Banks DIH Ltd., 2016 TMOB 128 (CanLII).  In that case, the registration covered “beer, ale and lager”, but during the relevant time period, only a “Caribbean lager” was being sold in Canada.  Having distinguished in the registration between beer, ale and lager, the Opposition Board held that the goods could not be read as being interchangeable and thus maintained for all, and therefore beer and ale were struck from the registration.

The description of goods and services must therefore be carefully considered, both with a view to obtaining a registration, and to looking ahead to the protection of the registration over the long term.

Trademarks and Geography

In order to obtain a trademark registration in Canada, a trademark cannot be a mark which is clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services (absent a finding of acquired distinctiveness or secondary meaning, through affidavit evidence).  While this has been the law in Canada for many decades, it has been the subject of a great deal of inconsistency and uncertainty, and the policy for interpreting this provision was recently updated by the Canadian Intellectual Property Office on November 9, 2016 in a Practice Notice, in order to clarify how trademarks which have geographic significance will be treated in the future.

The Practice Notice was precipitated by a 2016 decision of the Federal Court of Appeal in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, dealing with the trademark LINGAYEN for use in association with Filipino food products.

The first step in the process is to determine whether the trademark in question is a geographic name.  The Examination Manual provides that a geographic name can include a street name, a neighbourhood, a city, region, province, state, country or continent.  Either the sole meaning of the mark can be a geographic name, or if there are multiple meanings, then the primary or predominant meaning must be as a geographic name, if the prohibition is to apply.  In order to make this determination, the perception of the ordinary Canadian consumer of the associated goods or services must be taken into account.

If the trademark is a geographic name, and the associated goods or services originate from the location, then the trademark will be deemed to be clearly descriptive and therefore prohibited.  In such a case, it is immaterial whether consumers make this connection.

If the trademark is a geographic name, and the associated goods or services do not in fact originate from the location, then the trademark will be prohibited as being deceptively misdescriptive, but only once the perception of the ordinary consumer has been considered, and only if that consumer would be misled into the belief that the goods and services originated from the location of the geographic name in the mark.

Accordingly, when adopting a trademark which may have a geographical significance, it will be useful to consider the ramifications of this Practice Notice and the jurisprudence in order to determine the degree of protection which may be available for the trademark.

Watch Out for that Demand Letter!

Different types of intellectual property rights often intersect, in sometimes unexpected ways.  In the latter part of 2016, the Federal Court in Canada issued decisions in two different cases involving the application of Section 7(a) of the Trade-marks Act to allegations relating to patent and industrial design rights in one case, and to patent rights in the other case.

Section 7(a) provides that no person shall make a false or misleading statement that tends to discredit the business, goods or services of a competitor.  At issue in both of the cases were communications to customers in the form of cease and desist communications containing allegations of intellectual property rights which were later found to have been unfounded, since the patent or industrial design rights which had been asserted were adjudged to be either invalid or not infringed. 

Both Justice Hughes in E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2016 FC 986 (CanLII) and Justice Manson in Excalibre Oil Tools Ltd v. Advantage Products Inc., 2016 FC 1279 (CanLII) took care to emphasize the point that not every assertion of intellectual property that is subsequently found to be invalid will breach this provision.  The communication must in addition be threatening, rather than being merely informative.  Care must be taken not to cross this line, since the threat in question can be either an explicit threat or a veiled threat to take action.  Once that characterization has been satisfied, there is then a three-part test which must be met in order to make out a claim under Section 7(a).

First, there must be a false and misleading statement; secondly, the statement must tend to discredit the business, goods or services of a competitor. And finally, there must be damages which result from the statement.

In the Mishan decision, it was determined that there were no damages, since the decision not to sell the Plaintiff’s products did not have a causal link with the statements which had been made.

In contrast, this causal link was found to exist in the Excalibre case, although it was held that the damages were restricted to the precise products about which the statements had been made, and not to other products. 

The Use of French on Signs in the Province of Quebec – Mise en Garde

Amendments to the Province of Quebec’s Charter of the French Language regarding signage in French came into force on November 24, 2016.

All new outdoor signs installed after November 24, 2016 will thus have to comply with the new regulatory requirements.  Existing businesses will have a 3 year grace period within which to comply.  Accordingly, by November 24, 2019, all outdoor signage in Quebec must comply with the new rules.

The regulations apply to all public signs outside a building, inside a building if they can be seen from outside, or on independent structures.

The aim of the modifications is to ensure that all signs include “a sufficient presence of French”. French-language words must be added to any non-French trademarks on outdoor signage by adding: a generic term, a description of the products or services of the business, or a slogan.  Businesses with proper names or the name of a place in their name are exempt from these requirements.

Furthermore, the Regulation provides that the French elements of the sign must have a similar permanent visibility and be readable in the same visual field as compared to the non-French trademark. The French words do not have to be bigger than the non-French trademark.  But they must be integrated into the existing sign, and they must be well-lit if the trademark is well-lit.

Businesses can be fined up to $20,000 for non-compliance, assuming that it is a first offence.

Trademark Interlocutory Injunction Denied – Industrial Rentals Edition

The Federal Court in Canada recently dealt with a relatively rare example of a party seeking an interlocutory injunction in a trademark case, inHertz System Inc. v. Herc Equipment Rentals 2016 FC 1085, and the Court made it clear that such injunctions will not be granted lightly.

The Federal Court decision made it clear that unless there was clear evidence of irreparable harm, an application for an interlocutory injunction would fail.

The case also demonstrates the reality that a key element of an interlocutory injunction application is the evidence which both parties are  able to produce.  In this case, the party seeking the injunction was able to establish that it had operated a construction and industrial equipment rental business in Hamilton and Mississauga, under the name HERC, since 2000.  It was further able to establish that the parties, one using the name HERC and the other using the name HERTZ, had had business dealings for 15 years, including both operating businesses on the same street.  Finally, the applicant for the interlocutory injunction established that in March 2014, Hertz announced plans to operate a separate equipment rental business under the name HERC Rentals.

However, the key piece of evidence which the responding party was able to provide was a letter stating that it would only be using the HERC trademark in the United States, and not in Canada.  The applicant for the injunction did not appear to have any answer to this evidence, or any proof that the letter was not accurate.  There was no evidence of even one lost sale or rental.  In the circumstances, confusion was considered by the Court to be unlikely.  There was therefore no urgency to warrant the granting of an interim injunction, and no finding that there would be irreparable harm if the injunction were not granted.

I Saw that Blade Somewhere

A recent decision of Canada’s Federal Court in The Black & Decker Corporation v. Method Law Professional Corporation 2016 FC 1109 serves as a reminder of the non-use procedure outlined in Section 45 of the Canadian Trade Marks Act, and of the low burden of proof required to satisfy the test set out in this provision.

The case dealt with a trademark registration for PIRANHA, which covered both power saw blades and circular saw blades.  The Registrar held that the evidence of the registered owner in association with the power saw blades was ambiguous, and that there was no proof of actual sales having been made, and ordered that this part of the registration was therefore to be deleted.

On appeal, new evidence was filed which relieved any ambiguity in the evidence and which clearly established that there had been use of the trademark on both of the listed goods.  However, Justice Diner went further and explicitly held that it was not necessary to provide invoices in Section 45 cases, and that the failure to provide invoices should not have been determinative in this case.  He also stated that ambiguities in the evidence should be resolved in favour of the registered owner. 

This case therefore serves as a reminder to parties facing Section 45 challenges to their trademark registrations that while a simple statement that the trademark is in use is not sufficient, there is a low evidentiary threshold to show that the trademark is in use in Canada.

Spirits of Bison

The Federal Court of Canada (in CEDC International SP. Z O.O v Underberg KG and Underberg AG, 2016 FC 1172 CanLII) recently had the opportunity to consider a relatively rarely invoked prohibition against the registration of certain trademarks, namely that a trademark cannot be registered if it is the name of the goods or services.  This prohibition, set out in Section 12(1)(c) of the Trade-marks Act, is broader than the Section 12(1)(b) prohibition on the registration of trademarks which are clearly descriptive or deceptively misdescriptive, in that the latter only covers words in the English and French languages, whereas the Section 12(1)(c) provision covers the name of the goods in any language.

In this case, the applicant was attempting to register the trademark Zubrówka in association with a flavoured vodka product, and the Trade Marks Opposition Board determined that it was not satisfied that the mark did not comprise a generic Polish word denoting a vodka flavoured with a particular type of grass known to be favoured by bison, and thus the name of the goods in the Polish language.

On appeal to the Federal Court, Justice Barnes determined that it was appropriate for the Court to review the complete evidentiary record, including evidence not referred to or addressed in the reasons of the Board.  Having regard to the totality of the evidence, the Court held that the Board’s finding was reasonable, and the Court determined that the appropriate standard of review was reasonableness, since the new evidence was merely repetitive of the evidence which was adduced before the Board.  The Court therefore held that if the outcome fell within a range of alternatives, or was not clearly wrong, then deference would be owed to the decision made by the Opposition Board.

The Court characterized the applicant’s evidence as being very weak, particularly when contrasted with the contrary and superior evidence of the opponents.  In particular, the fact that the trademark was registered in other countries was not considered to be determinative, and the fact that a design mark had been registered in Canada was likewise not determinative as to whether registration of the word mark was prohibited. The decision of the Board was therefore affirmed, and the trademark Zubrówka was therefore denied registration in Canada.

The Pinnacle of Pizza

As a result of two decisions released a month apart by the Canadian Federal Court of Appeal, trademark owners now have significant insight with respect to the issue of the likelihood of confusion between a registered word mark and a pending design mark, and the importance of owning a word mark trademark registration when facing a conflicting trademark.

The two cases are Pizzaiola Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. 2016 FCA 265 and Domaines Pinnacle Inc. v. Constellation Brands et al. 2016 FCA 302 .

In the PIZZAIOLA case, the applicant filed two trademark applications, one for the word mark PIZZAIOLO, and the other for the design mark shown below:

The opponent filed an opposition based on confusion with its registered trademark LA PIZZAIOLLE, which had been used by the opponent in Canada prior to the applicant’s claimed date of first use. The Trademarks Opposition Board allowed the opposition and refused the application for the word mark in its entirety. However, the opposition was refused with respect to the design mark application. On appeal, the Federal Court held that the Board should have recognized that the opponent was authorized by virtue of its trademark registration to use the words LA PIZZAIOLLE in any size and with any style of lettering, color or design, and therefore could have depicted the words in a manner identical to or very similar to that of the PIZZAIOLO design mark with the same style and color of lettering as well as the same background color. Since it was clear that the word PIZZAIOLO was the dominant element of the design mark, it was ruled that there was no question that the marks would have been confusing.

The Court concluded that the Opposition Board had failed to consider all the ways in which the opponent could have used its registered trademark, even though it had not used any of these possible designs previously. Accordingly, this case illustrates the power of a word mark registration when dealing with competing applications. The Court of Appeal agreed with the Federal Court that the Board's analysis of the opposition was lacking in that the Board had failed to consider the full scope of protection afforded by the registration of the trademark.

The second case, which was delivered a month later, provides some limitations to the conclusions reached in the PIZZAIOLO case. In this case, the Federal Court of Appeal restored a decision of the Trademark Opposition Board,  which had held that an application for a word and design mark for the trademark DOMAINE PINNACLE was unlikely to cause confusion with the registered trademark PINNACLES.

The Federal Court had originally adopted the approach taken by the Court in the PIZZAIOLO case and held that the Opposition Board had erred in not considering the potential uses that the opponent might have made of its registered trademark. However, a distinction was drawn by the Federal Court of Appeal in that the full scope of the rights granted for the registered trademark PINNACLES would not have permitted the opponent to use the distinctive graphic elements, namely an apple and snowflake design, that the Opposition Board had identified as being central to the distinctiveness of the applicant's trademark. The Federal Court of Appeal in the PINNACLE case further noted that it was not the task of the Board to consider all potential and unidentified uses of a registered word mark. The Court of Appeal also noted that the term PINNACLE was a commonly used term with little distinctiveness.

Both of these decisions by the Federal Court of Appeal therefore dealt with the extent to which the Opposition Board is required to consider possible uses of a registered trademark in determining the issue of confusion with a trademark application for a design trademark, with different results in each.  It is noted that an application for leave to appeal in the Domaines Pinnacle case was filed with the Supreme Court of Canada on January 27, 2017. Accordingly, further developments with respect to this critical issue may still be forthcoming. 

The Tiled Tale

A recent decision of the Federal Court (Caesarstone Sdot-Yam Ltd. v. Ceramiche Caesar S.P.A. 2016 F.C. 895) sheds light on the law relating to appeals in Canada in trademark cases arising from decisions of the Trademarks Opposition Board.

In most cases, the Federal Court will defer to the expertise of Board, but this case illustrates that there are limits to such deference. The case is also important in clarifying the role of a pre-existing trademark registration to a later filed application by the same party which is then subject to a trademark opposition by a third party.

The opposition was brought by the opponent with respect to some of the services covered by the application, and in particular wholesale and retail store services relating to slabs and tiles formed of composition stone for building panels, floors, stairs and walls, against an application for the trademark CAESARSTONE & Design, on the basis of the opponent’s trademark CAESAR & Design.

The Board held that there was a likelihood of confusion and the application was therefore refused. On appeal, 10 new opposition affidavits were filed on behalf of the applicant. However, the Court held that this new evidence would not have materially affected the Board’s findings or the exercise of its discretion. The reasoning given was that the evidence was considered to be supplemental to and simply more of the same as that which had previously been filed. Accordingly, the Court held that the appropriate standard of review in this case was that of reasonableness, rather than that of correctness.

However, despite adopting this standard, the Court held that the decision of the Board was not reasonable, and therefore reversed the decision with respect to some of the services.

What was most striking to the Court was the existence of the applicant's prior trademark registration. Although the registration was considered by the Board, its decision to afford no weight to that registration and its conclusion that the opposed services were a “departure from" as opposed to an “extension of" the goods covered by the earlier CAESARSTONE registration were held to fall outside of a range of possible, acceptable outcomes which are defensible in respect of the facts and law. The court further held that the finding with respect to the prior registration impacted the further assessment of the lack of actual confusion in the marketplace where both marks have co-existed.   The matter was therefore referred to a different member of the Board for re-determination in light of the reasoning of the Court with respect to this issue.

Even in cases where new evidence is unlikely to be determinative, this case illustrates that the Federal Court will exercise its own discretion in evaluating the determinations made by the Board in opposition matters, and will in appropriate circumstances hold such conclusions to be unreasonable. The findings of the Court with respect to the applicant's prior trademark registration may also be particularly helpful to trademark owners who find their new applications opposed by third parties.

Left with a Sour Taste

A recent decision of the Federal Court may leave a sour taste in the mouths of trademark owners wishing to use the summary provisions of Section 45 of the Canadian Trade-marks Act to cancel trademark registrations on the basis of non-use.

The case of Heather Ruth McDowell v. Laverana GmbH & Co. KG2016 FC 1276 illustrates the scope of use which is necessary to satisfy the non-use requirements set out in the Act. The case was an appeal from a decision of the Registrar of Trademarks, dealing with a trademark registration for the trademark HONEY & Design, in which the Registrar had maintained the services covered by the registration, but had ordered that the description of goods be cancelled.

This decision is particularly relevant for trademarks registered for use in association with goods sold by retailers. The Registrar had rejected the evidence of use on the goods, which the Registrar characterized as “essentially price tags". On appeal, the registrant filed additional evidence covering more of the goods, but the evidence was not qualitatively different in any material respect from the evidence which had been filed at the first instance. However, the judge was of the view that hang tags and labels would ordinarily be sufficient to demonstrate use on goods, even in cases where the registrant was a retailer selling the goods of other parties. This finding is at odds with a significant amount of prior case law from the Trademarks Opposition Board in Section 45 proceedings.

The Court further noted that the type of inquiry in which the Opposition Board had engaged was on “contentious matters that were unsuited to resolution under the summary process envisaged by section 45 of the Trade-marks Act".

The most surprising part of the decision was the analysis by Justice Fothergill of the statement by the Board that any ambiguity in the evidence filed on behalf of the registrant must be resolved against the interests of the trademark owner. The Court held that this conclusion was clearly wrong, and that any ambiguity in the evidence should have been resolved in favor of the registered owner.  The leading Section 45 case decided in 1981 by the Federal Court of Appeal, in Plough (Canada) v. Aerosol Fillers Inc.  (1981) FC 679 had held that any “ambiguity must be resolved against the interests of the owner". This position had been universally followed by the Courts and by the Trademark Opposition Board in the years the following 1981, and it is therefore of some concern that this position may no longer hold true.

It is also noteworthy that the appeal in this case was not contested, and so no alternative view of the case law was provided to the Court in this instance.

Going the Extra Mile

The Federal Court recently released its decision (Cathay Pacific Airways Limited v. Air Miles International Trading B.V. 2016 FC 1125) in the latest chapter in the saga of the applications filed by Cathay Pacific Airlines Limited for the registration of its ASIA MILES trademarks, all of which were opposed by Air Miles. The Trademarks Opposition Board had originally refused the trademark applications, but the Federal Court allowed the appeal by Cathay Pacific, set aside the Board's decision, and returned the matter for re-determination by a differently constituted Board. Cathay Pacific then appealed on the issue of the remedy, and argued that it was entitled to have the Court allow the registration of the trademarks. Air Miles cross-appealed on the merits of the Federal Court's decision.

The Federal Court of Appeal concluded that the Federal Court had purported to apply a reasonableness standard of review, but had instead applied a correctness standard, and that there was no reason to believe that the Board's original decision was unreasonable.  Accordingly, the matter was returned to the Federal Court for the re-determination of Cathay Pacific's appeal.

On this re-determination, the Federal Court concluded that the Board did not err in concluding that there was a likelihood of confusion with the Air Miles trademarks. The Court concluded that, whether applying a standard of correctness or a standard of reasonableness, the analysis by the Trademark Opposition Board was compelling.

On the re-determination, Justice Southcott therefore refused all five of the trademark applications and concluded that although the new evidence assisted Cathay Pacific in arguing that the use by the licensee was use by the trademark owner, this was not sufficient to conclude that Cathay Pacific had met the burden of demonstrating that there was no reasonable likelihood of confusion. The use by Cathay Pacific was simply overwhelmed by the use of the Air Miles trademarks which had become very well-known, if not famous, and significantly more well-known than the Asia Miles trademarks.

This decision is noteworthy as an apt illustration of the fact that although there may be new evidence available to improve a party’s position in relation to one particular factor in the confusion analysis on appeal, the determination of the likelihood of confusion overall may be too great a burden to surmount.

CIPO Prepares for Nice- Stage 1

Beginning in late September, the Canadian Intellectual Property Office began to accept the filing of trademark applications in which the goods and services are grouped according to the Nice Classification.  We recently attended a webinar hosted by CIPO, in which the Office demonstrated and explained the many changes which have now been made to the application filing process and to the Manual of Goods and Services, in order to accommodate these changes.  There will be many more changes to come, as the new system moves from being voluntary to becoming mandatory, when the new trademark legislation comes into force.  Stay tuned for further reports as these new changes are unveiled.

What Do Trademarks and Branding Have to Do With My Cup of Coffee?

This picture is the delicious cup of coffee that I enjoyed at Roasting Plant in Detroit.  The coffee is called Jamaica Blue Mountain and it comes from the Blue Mountains in Jamaica, an area where the elevation, rainfall and soil make it uniquely suited to growing delicious coffee beans.  The quality of beans is distinct and viewed as superior to other coffee beans.

Consumers are willing to pay a premium price for these beans, and they know that they are receiving a quality product because Jamaica has been proactive in using IP mechanisms to protect their coffee.  In particular, JAMAICA BLUE MOUNTAIN and the accompanying design are registered, in Canada, the United States and elsewhere as a certification mark.  A certification mark is different from a trademark because it is designed to signal that a product displaying the certification mark meets a certain defined standard.  For example, the text for the JAMAICA BLUE MOUNTAIN certification marks read as follows:

“The use of the certification mark is intended to indicate that the specific wares listed above in association with which it is used are of the following defined standard: The certification mark, as used by persons authorized by the certifier, certifies that the coffee in respect of which the mark is used is grown in the Blue Mountain area of Jamaica by a person registered to grow coffee in that area pursuant to the Coffee Industry Regulations 1953 of Jamaica; processed or manufactured at a coffee works to which a license has been granted pursuant to the Coffee Industry Regulations 1953 of Jamaica; and in respect of which a certificate has been issued by or on behalf of the International Coffee Organisation.”

WIPO has some excellent information on how Jamaica has utilized traditional knowledge, geographical indicators and trademarks to help develop the country’s economy.

Jamaica is not the only country that has used trademark law to increase the profitability and value of their geographical assets.  One downside of using certification marks and geographical indications is that a costly regulatory scheme needs to be in place to maintain the quality and that coffee beans named after a particular region can only come from that region.   Ethiopia found the cost for a more extensive IP regime to be cost prohibitive in relation to their economic model for growing coffee, so their marks for HARRAR, YIRGACHIFFE and SIDAMO have been published as official marks, rather than certification marks in Canada, and owned by the government of Ethiopia.

An important feature of the certification marks regime to note is that currently, under the Canadian Trade-marks Act, a certification mark in Canada cannot be based on proposed use, but the under the forthcoming legislation, that will change.

Genericide

It is often said that fanciful or invented marks make the strongest trademarks.  These are marks that are words with no real meaning, such as Exxon.  Over time some fanciful marks can develop a very strong connection to a product in the minds of consumers.  Although that level of recognition is generally a positive for a brand, these marks can still be vulnerable to becoming generic marks.

A mark becomes generic when the mark becomes the description used by consumers to describe a whole category of products.  Examples of former trademarks that are now generic terms in some countries are: escalator, linoleum and aspirin.  When this happens, the mark is no longer valid because it is no longer used to differentiate the source of products by consumers.

It is difficult to imagine anything more detrimental to a brand than their most successful trademark being invalidated and opened up for use by their competitors to describe their products as well.

How can a mark be protected against genericisation?  Brand owners need to be conscious of the way that they are using the mark.  “I love band-aids” should be “I love Band-aid brand bandages”.  The text should be offset and a symbol should be used alongside the trademark to denote that it is a registered trademark.

Xerox famously took this one step further and designed an advertising campaign to inform consumers about other marks that had become generic and asked consumers to only use XEROX as a trademark.  Their campaign was successful, and asking someone to “Xerox” a document is no longer a common phrase.

This trademark protection can butt up against marketing wisdom, which can view customers’ referencing of their brand as a positive quality of a strong brand.  Knowing the ramifications in trademark law for using a brand as a verb is especially important in this age of social media when we are constantly being told to “google it”, “instagram it”, “facebook her” or “tweet him”.

Brand owners should also keep in mind that genericization happens on a country-by-country basis, as cases are brought in different courts in different countries.  The way that a particular trademark is used has to be monitored wherever that trademark is used and registered.

A word of caution comes from a recent case where a Canadian court took into account the fact that the mark FRENCH PRESS was denied registration in the US because it described a class of goods and was used by multiple companies.  In that case, the use of the term as a generic term in the United States helped to persuade the court to cancel Bodum’s registration for the mark FRENCH PRESS in Canada.

Trademarks and Geography in Canada

Trademarks and geography intersect in many ways in Canadian trademark  law.  Let’s look at my top 10 list of how geography is a relevant issue to be considered in the development and protection of brands in Canada.

1. At the most fundamental level, it is critical to remember that trademarks are territorial in nature, and that a trademark registration in Canada will not protect against infringements of the mark outside of Canada, and vice versa, so that if a United States entity has registered its trademark in the U.S. but not in Canada, they need to register their brands in Canada if they want to ensure that they are not appropriated in either country.
2. Geography also plays a very important role in the ability of applicants from outside of Canada to obtain trademark protection in Canada.  Where a trademark has been used in another country and an application has been filed in another country, that trademark owner can obtain a Canadian trademark registration based on that use and registration.  This gives them an advantage over Canadian trademark owners, who need to have use of the trademark in Canada before they can obtain a trademark registration here.
3. One of the key benefits of obtaining a trademark registration is tied to geography; Section 19 of the Trademarks Act provides that such a registration is entitled to the exclusive use of the trademark across Canada.  This is the case even if there has been use of the trademark only in a limited geographical area within Canada.
4. Geography also plays a role in determining whether a trademark can be considered to be eligible for registration under the Trademarks Act.  Trademarks which are considered to be clearly descriptive or deceptively misdescriptive of the geographical place of origin of the goods or services are not capable of being registered as trademarks, according to Section 12(1)(b) of the Act.   However, this does not mean that all geographical terms are out of bounds.  A geographical place name must have a known reputation as the source of the goods or services in question before the prohibition will come into play.
5. To be contrasted with the geographical protection afforded by  a trademark registration is the position of  a party claiming common law rights, which are restricted to the geographical territory in which a reputation has been established by the trademark owner, which, depending on the nature of the business, could be restricted to a city, a province or to a geographical region within Canada.
6. Where a trademark is held not to be registrable on the basis of Section 12 of the Trademarks Act, for example on the basis that the trademark is clearly descriptive of the character or quality of the goods, or that the mark is primarily merely a surname, it is possible to overcome such an objection based on evidence that the trademark has acquired secondary meaning in Canada, under Section 12(2) of the Act.  However, any such registration will be restricted to the province or provinces in which such secondary meaning is found to exist.
7. Geography also plays a role in a number of the prohibited marks set out in Section 9 of the Trademarks Act.  Certain uniquely Canadian terms and symbols are explicitly prohibited, including the Royal Canadian Mounted Police, the Royal Arms, Crest or Standard and the arms or crest of any member of the Royal Family or of the Governor-General of Canada.
8. With respect to wines and spirits, there is a special provision in the Canadian Trademarks Act , which protects “geographical indications” , which are defined as terms which identify the wine or spirit as originating in a particular geographical territory where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin, and provides special protection to such names, such as Champagne.
9. Geography is also important in considering the growth of Canadian brands.  Where the Canadian trademark application was the first application for the registration of the trademark, then applications filed within 6 months from the filing date of the Canadian application will be afforded the Canadian filing date for all applications filed in jurisdictions which are members of the international treaty called the Paris Convention, which includes the United States and Europe.  This can give applicants a significant advantage for trademark owners wishing to expand the protection of their brands.
10.   Finally, the province of Newfoundland and Labrador also enjoys special recognition in Canada as a result of its geography.  Trademarks which were registered in Newfoundland prior to April 1, 1949 (when Newfoundland joined Canada) have the same force and effect in Newfoundland had Newfoundland not become a part of Canada.

Story of a Brand—100 Years of Cartier Panther

Sometimes with companies that have stood the test of time, the imagery of the brand remains strong, but the origins and history have been forgotten.  This series aims to shed light on some of the history behind the brand.

The iconic Cartier panther was first associated with the brand in 1914.  The image of a panther was becoming quite popular at the time, connected with women, power, danger, and a feminine ferocity that was emerging in society.

The first hint of a panther was just a distinctive spotted pattern on the face of a watch.  Also in 1914, Jacques Cartier commissioned from George Barbier, the most famous illustrator at the time, a painting of a woman with a panther.  Cartier often got Barbier to work on fashion drawings, and this image appeared at a show, in a catalogue and on a business card.

The probable inspiration for Cartier using the panther was Jeanne Toussaint.  Toussaint, who is considered by many to have been Cartier’s muse and lover, was nicknamed La Panthere for her love of the animal and its furs, both as clothing and rugs.  Toussaint was also a powerful figure in her own right; she started in the accessories department and by the 1930s had become the director of Cartier’s jewelry department.  Toussaint is perhaps most famous for designing a brooch of a caged bird to acknowledge the Nazi occupation, which resulted in her interrogation by Nazi authorities.  At the end of the war, another piece was designed with the bird free from its cage.

In the late 1940s, Wallis Simpson received a panther brooch from her husband, the Duke of Windsor.  This was Cartier’s first 3-D panther, and Simpson’s notoriety with the public further cemented the link between Cartier and the panther.

For the past quarter century, Cartier has honoured the heritage and importance of the panther to the company with a special collection featuring panthers.  The Panthere de Cartier collection has been updated several times, but the panther remains the constant.

The connection between Cartier and the Panther remains strong to this day, as the image enters its second century.  In addition to the Panthere de Cartier collection, a panther was recently featured in the commercial L’Odyssee de Cartier.  The extra-long commercial features a panther travelling around the world.   Cartier recently launched a perfume called La Panthere, using the nickname of the founder’s original muse.

Miller IP Law- Our Brand Identity

This inaugural blog post is simply to announce that Miller IP Law is open for business as of July 1, 2015.

We will be practising exclusively in the areas of trademarks, copyright, domain names and contests, including trademark clearance and policing, licensing, trademark oppositions, litigation involving trademarks, copyright, domain names and rights of publicity, and the development and implementation of  international trademark blueprints and the management of global IP portfolios.

On this blog, we will be bringing you information and news about the latest developments in Canadian branding, IP law, opposition decisions, domain name disputes, re-branding news and the histories of well-known brands.

We see MILLER IP LAW as being analogous to any new brands being developed by your companies, and so we can relate to the challenges, as well as the excitement involved in introducing  a brand, and communicating your own message of excellence behind the brand,  to your customers and followers.

You can also find our thoughts on the branding news of the day @milleriplaw.

Please join us as we embark on this journey.