B – La marque enregistrée
La marque de « common law », c’est-à-dire non enregistrée est dans son essence identique à celle qui est enregistrée, seule change l’étendue de sa protection. La marque enregistrée bénéficie d’une protection nationale. L’enregistrement fait ainsi bénéficier au titulaire de la marque enregistrée d’un certain nombre d’avantages, tels les présomptions. L’enregistrement est une étape administrative durant laquelle la validité et la disponibilité de la marque sera testée. Le droit canadien des marques est un système dit « déclaratif » de droit. L’emploi de la marque suffit, l’enregistrement consacre et bonifie la protection du signe. Ailleurs la protection peut-être constitutif de droit : l’enregistrement est créatif de droit dans le signe : ici ce n’est plus le commerce « déloyale » qui est concernée, c’est le signe lui-même.
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1 – La définition d’une marque et l’enregistrement a – Les différents types de marque
Loi sur les marques de commerce, article 2 / Trade-marks Act
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S. 2
“trade-mark” means
(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade-mark
| i - Les marques non-traditionnelles Cadbury case, Opposition No. 97819 by Nestlé, (couleurs)
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Jurisdiction
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?
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Facts
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Cadbury wants to TM a shade of purple. Nestle opposes because: (i) it can’t distinguishing goods; (ii) the mark could take numerous forms; (iii) the sign cannot be graphically represented; (iv) the mark lacks distinctive character, only designates a character of the packaging of the goods, is common in the trade, and has not acquired distinctive character through use; (v) the application was made in bad faith.
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Issues
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Is “Cadbury purple” capable of being registered as a trade mark?
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Holding
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Yes.
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Reasoning
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Can a colour be a sign?
A colour can be a sign but cannot be presumed to be a sign. (Note a colour itself is not durable and is thus not a graphic representation within the terms of the Act, but this can be cured by a verbal description of the colour).
Purple is capable of being a sign if it is used as such.
Exception: a TM cannot represent a property of the good to which it is apposed. It does not in this case.
Variation in arrangement of colours is not a reason to say that TM applied for covers an infinite number of signs.
Language in application saying it will be the colour or predominant colour is not too vague.
Cadbury purple can constitute a sign, and this sign can be graphically represented.
Bad faith claims: rejected.
Lack of distinctiveness claims:
Colour per se not distinctive enough to allow for identification of product.
Exception: possible that a colour can acquire distinctiveness through usage.
Tests: look to public's percpetion of the use of the colour, the length of time it has been used, whether a significant proportion of a particular public can identify it. Balance against principle of not uduly restricing colours available to competitors.
There is an assoication btw the colour and Cadbury. (Rule: the association must be between the colour and products).
Taking into account long usage, usage intended to distinguish (purple patch), reserach showing evidence of distinctiveness and associations with chocolate products, and the scarcity of competing usages, Cadbury purple is a mark having acquired a distinctive character for: chocolate bars and drinks. Not a mark for chocolate assortments, confectionery, or cakes.
| ii - Les marques officielles
iii - Les marques de certification et les indications géographiques
Scotch Whisky Assn c Glenora Distillers International Ltd, 2009
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Jurisdiction
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?
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Facts
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Canadian whisky distiller wants to TM name of its product “Glen Breton.” Scottish association objects: Glen is a common part of the name of many products made by its members.
Commission concluded that “Glen” was not a word associated with the origin of whisky. Federal Court concluded that whisky had a wider reputation and that “Glen” should be protected.
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Issues
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Does the word “Glen” connote whisky of a certain kind that is/ought to be protected by a mark?
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Holding
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No.
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Reasoning
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“Scottish whisky” is a protected geographical indication. Glenora has, however, benefitted from the similarity of its products to Scottish ones.
Judge below failed to consider whether “Glen” is a mark under s. 10. Where this is the case, it cannot be taken as a TM.
TMs are not to be dissected. They must be examined in their entirety.
Opinion: it is part of a trademark but not a mark unto itself.
Clarification: authorities do not refer to article 10 in particular. Usually they refer to s.12. But the same logic should be applied to the integrity of TMs.
Conclusion: there is no protection for the word “Glen” on its own. Even if it was protected, the word “Glen” does not dominate the TM for wich protection is sought and the challenge would fail on this basis.
Prohibited trademarks:
S. 10 is to prevent adoption of marks meant to indicate standards, quality, or origin of product. This includes nature of the product sold.
A mark which is used communally in a sector of activity which is meant to indicate merchandise and services of a certain quality cannot be monopolized.
Application: the Association is trying to monopolize the word Glen, which is not intrinsically descriptive for its group of merchants.
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TM Act
S. 10: (types of prohibited marks)
Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.
S. 11.12 (1) There shall be kept under the supervision of the Registrar a list of geographical indications.
Statement of Minister
(2) Where a statement by the Minister, setting out in respect of an indication the information mentioned in subsection (3), is published in the Canada Gazette and
(a) a statement of objection has not been filed and served on the responsible authority in accordance with subsection 11.13(1) and the time for the filing of the statement of objection has expired, or
(b) a statement of objection has been so filed and served, but it has been withdrawn or deemed under subsection 11.13(6) to have been withdrawn or it has been rejected pursuant to subsection 11.13(7) or, if an appeal is taken, it is rejected pursuant to the final judgment given in the appeal,
the Registrar shall enter the indication on the list of geographical indications kept pursuant to subsection (1).
Information
(3) For the purposes of subsection (2), the statement by the Minister must set out the following information in respect of an indication:
(a) that the Minister proposes that the indication be entered on the list of geographical indications kept pursuant to subsection (1);
(b) that the indication identifies a wine or that the indication identifies a spirit;
(c) the territory, or the region or locality of a territory, in which the wine or spirit is identified as originating;
(d) the name of the responsible authority in relation to the wine or spirit and the address of the responsible authority’s principal office or place of business in Canada, if any, and if the responsible authority has no office or place of business in Canada, the name and address in Canada of a person or firm on whom service of any document or proceedings in respect of an objection may be given or served with the same effect as if they had been given to or served on the responsible authority itself; and
(e) the quality, reputation or other characteristic of the wine or spirit that, in the opinion of the Minister, qualifies that indication as a geographical indication.
Removal from list
(4) The Registrar shall remove an indication from the list of geographical indications kept pursuant to subsection (1) on the publication in the Canada Gazette of a statement by the Minister that the indication is to be removed.
| b - les bases d’enregistrement
2 – L’opposition, les recours en annulation et la radiation d’une marque enregistrée (18, 30, 37, 45 LMC) – pour de nombreux exemples voir les rapports de Marque d’Or.
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Loi sur les marques de commerce / TM Act
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WHEN APPLICATIONS TO BE REFUSED
S. 37. (1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that:
(a) the application does not conform to the requirements of section 30,
(b) the trade-mark is not registrable, or
(c) the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending,
and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed.
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