Contents of application
30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
(a) a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used;
(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application;
(c) in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which the applicant or named predecessors in title have made it known in Canada in association with each of the general classes of wares or services described in the application;
(d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant’s named predecessor in title on which the applicant bases the applicant’s right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant’s named predecessor in title, if any, in association with each of the general classes of wares or services described in the application;
(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;
(f) in the case of a certification mark, particulars of the defined standard that the use of the mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of wares or the performance of services such as those in association with which the certification mark is used;
(g) the address of the applicant’s principal office or place of business in Canada, if any, and if the applicant has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself;
(h) unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed; and
(i) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.
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3 M Company v Tape Specialty Ltd (2008) 70 CPR (4th) 138. |
Jurisdiction
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?
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Facts
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TS wants to TM shades of the colour green that it uses on types of masking tape. 3M opposes this.
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Issues
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Are the TMs sought by TS distinctive enough to receive protection under the Act?
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Holding
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No.
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Reasoning
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(a) rule: applicant has the burden of showing that the mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada.
The applicant demonstrates its sales data but this is not evidence of distinctiveness.
Not met. Who has first burden of proof?
(b) rule: burden on opponent to show that TM is not distinctice
3M has been selling similar green products for various purposes for around 10 years.
Burden is met.
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Institut national des appellations d'origine des vins v Vincor (Québec) Inc, Trademark Opposition Board, demande d'enregistrement No. 877,189 pour la marque de commerce SAVEUR DE PROVENCE, 2004. |
Jurisdiction
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?
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Facts
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Opposition to TM “Saveur de Provence” by a body which unites regional indications in France. Evidence from book stores, libraries, travel guides, etc.
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Issues
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Holding
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Opponent has to prove why TM shouldn't be granted (if opponent succeeds, the burden shifts).
TM cannot be granted b/c it is descriptive of a region (s. 12), resembles a name the use of which is recognized in Canada (s. 10), and is not distinctive.
S. 10: resemblance leading to likley confusion analyzed according to the test of “first impression.”
No contradictory evidence presented by applicant.
| ii - 37 (b) - La marque proposée est susceptible de créer de la confusion (s 6 LMC)
Masterpiece Inc c Alavida Lifestyles Inc, 2011 CSC 27. |
Jurisdiction
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??
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Facts
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M, holder of unreg'd TM and tradename, appeals against unsuccessful attempt to have reg'd trademark, providing the same service, expunged.
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Issues
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(a) is location where a mark is used relevant to the likelihood of confusion?
(b) how to assess resemblance of proposed TM and existing unreg'd TM?
(c) place of cost in confusion analysis?
(d) role of expert evidence in determining confusion?
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Holding
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TM should be expunged.
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Reasoning
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Intro
TMs are indications of provenance. Help consumer get what they want
Problem: confusion: law attempts to prohibit it b/c it impairs this objective
Location
TM protects nationwide (s. 19)
Test: there would be confusion between the marks if, hypothetically, they were in the same area. The basis for this test is inference drawn from language of s. 6 and s. 16(3) insofar as it relates to previous use in Canada leading to expungement.
The two companies were operating in different provinces.
Resemblance of proposed and existing unreg'd TM (why isn’t s.6(5) analysis sufficient?)
Clarification: Use of TM, not registration confers priority of title and exclusive right to TM.
Consider:
(a) relationship btw use and registration: CML rule and lasting ppe: use creates priority to TM. TMA rights are supplemental. demonstrations:
(i) s. 16: (i) priority to register if first use of mark
(ii) s. 16(3): 1st user has rts against applicant seeking to register. rt to oppose and to apply to expunge on grounds of likely
(b) test for confusion: “matter of first impresison in the mind of a casual consumer somewhat in a hurry who sees the mark, at a time when he has an imperfect recollection of prior TMs, and does not pause to give the matter any detailed thought nor to closely examine two marks.”
Objective of test: cure confusion problem. Set a standard that requires marks to be clear.
Finding: confusion is likely on facts of case.
(c) necessity to consider marks separately: ppe: want a good indication of provenance. Therefore: one instance of confusion in a series of marks is enough to invalidate a potential registration. “Overall circumstances” are an inappropriate guide for scrutiny. See s. 6(5) factors below. Overlap between analyses done for each mark is to be expected.
(d) approach to testing resemblance: clarification: degree of resemblance is the key factor in determining confusion.
(e) evaluation of TM by its name rather than its use: ppe: incorrect to limit analysis to post registration use of TM. clarification: single use of a mark may not capture rights conferred. Ability to manipulate TM'd words is part of rights granted under registration. Reason for clarifying: various ways TM'd words can appear heightens risk of confusion.
(f) requirement to assess unreg'd TMs according to actual use: statutory requirement: actual use is criterion for evaluating unreg'd TMs.
(g) and resemblance btw TMs: ppe: compare only characteristics which define TMs; look for its most striking aspects. This criterion tolerates some differences that may exist but do not prevent confusion.
Finding: strong resemblance.
Confusion analysis: cost?
Test: focuses on initial confusion encountered by consumer on first impression of TM. Trial judge was incorrect to consider cost and likelihood of research that consumers “would” do. Clarification: test is flexible enough to tolerate the approach consumers would likely take to buying more expensive items (more research, etc).
Finding: where there is a strong resemblance btw marks and factors like those in s. 6(5) are present, cost is unlikely to be a big factor.
Expert evidence
Perspective of casual consumer. Expert evidence is not necessary in most cases b/c test does not pre-suppose sophisticated knowledge of product.
Conclusion:
Unreg'd use precedes registration.
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s. 6:
(1) For the purposes of this Act, a TM/trade-name is confusing w/ another TM/trade-name if the use of the first mentioned TM/trade-name would cause confusion with the last mentioned TM/trade-name in the manner and circumstances described in this section.
(2) The use of a TM causes confusion with another TM if the use of both TMS in the same area would be likely to lead to the inference that the wares or services associated with those TMs are manufactured,sold, leased, hired, or performed by the same person, whether or not the wares or services are of the same general class.
(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including:
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
s. 16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
s. 16(3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
s. 19: Subject to ss. 21, 32, and 67, the registration of a TM in respect of any wares or services, unless shown to be invalid, gives to the owner of the TM the exclusive right to the use throught Canada of the TM in respect of those wares and servies.
| iii - 37 (c) – Le requérant n’est pas la personne qui à le droit d’enregistrer la marque iv - 37 (d) – La marque n’est pas employée (s. 45 LMC)
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