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| Holding: No use under 4(1)
CBM Kabushiki Kaisha v Lin Trading Co Facts: CBM created the Q&Q design in glorious Nippon. It got registration basically everywhere except Canada. When they wanted to get into the Canadian market, they sent off some sample watches first to someone where it fell through and second to Lin Trading. Lin Trading then tried to registere the Q&Q Design trademark. Issue: Was the product previously “used” in Canada, thereby giving it some trademark protection? Ratio: Events that happen in the normal course of business may constitute use Analysis: The course of trade occurs at any time during the chain of sale. Once the original sale was made to the company, that constituted a use of the mark in the course of trade. Holding: Was used prior, cannot register Gesco Industries Inc v Sim & McBurney Facts: Gesco’s mark was removed because it was registered as used in association with services of strain resistant treatment for application to carpets and rugs. The registrar claimed that because it was done prior to use, it was in relation to the wares and not the services Issue: Does a trademark used in association with services applied to a product before it is sold constitute “use” in association with services? Ratio: Even if the service is ancillary to the wares, if something is used in relation to the services even slightly it should probably be fine. Analysis:x Holding: Reinstated mark Timothy’s Coffees of the World Inc v Starbucks Corp Facts: Starbucks attempted to register the trademark for “Christmas Blend” and “Decaf Christmas Blend”. Timothy’s opposed it, stating that Timothy’s used it first in Canada and is thus the only party allowed to register the trademark. Also, they claim it is not distinctive because it does not distinguish Starbucks’ Christmas blend from Timothy’s Christmas blend. Issue: Was the name Christmas blend being used by Timothy’s? Ratio: In order to show use, you must go beyond raw sales. There must be proof that at the time of sale there is some notice of association at the time of transfer Analysis: Here there wasn’t enough material proof beyond hand writing “Christmas blend” occasionally on a bag or a receipt that the tm had been in full use by Timothy’s. Also, while sales were good, there was no proof where the sales happened nor was the marketing material sufficient to determine any use either. There was no evidence that by the registration date “Christmas blend” had gained a sufficient reputation with timothy’s to warrant any distinctiveness, and that Timothy did not prove based on BOP the distinctiveness of the name. There must be a clear association between the name and wares at the time of sale and this was not apparent. Holding: No prior use, no contest to remove mark. Expungement Gowling Lafleur Henderson LLP v Ameri-Court Enterprise Ltd Fact: Gowling asked for trademark expungement for “the world iz mine” products from ACE. A section 45 notice makes the company prove that they have used the trademark in association with their wares any time in the last 3 years. If there is some kind of absence, this can also be explained at this time. ACE claimed they gave away 10k worth of merchandise t various golf tournaments, and to various charities. He also claimed to have tried to raise money for the business as well as showing they found an office and warehouse to store their crap. They have tried to conduct business and have spent money on legal fees and other things in the process. Issue: Was there use in the normal course of trade? Ratio: While gifting and donating merchandise can be a part of the normal course of trade, it cannot be the entire amount of distribution of goods for the company. Analysis: All of the gifting and donating didn’t amount to any form of barter or commercial transaction. “Free gifs and donations” alone do not amount to use in the normal course of trade. This wasn’t a specialized market issue and there was no proof that the mark was ever going to be in use at any time in the future. There were no special reasons for delays and since they pretty much never made a dime, it was impossible to show use. Holding: Expunged Scott Paper Limited v Smart & Biggar Facts: SB asked SPL to show proof that they had used the TM “vanity” in the last 3 years. SPL said that as of the request date they were already underway to commencing using the mark again. Sales began some time after the request was made. Originally the hearing officer said it hadn’t been used for 13 years that was intentional and not a result of special circumstances. He put too much wait on the desire to re-use the TM and was overruled at trial, saying strong proof of intent to use wasn’t good enough after 13 years. Issue: Does evidence of an intention to rsume use of a trademark which has been absent from the marketplace justify the absence of the absence of use in the trade? Ratio: Test
Intent to reuse mark does not constitute special circumstances as they do not explain the past non-usage Analysis: The construction of the act does not allow for intent to be construed as a special circumstance. Holding: Expunged. Promafil Canada Ltee v Munsingwear Inc Facts: Munsingwear had a license to use a mark and sell socks. It had a wicked penguin on it. There were two different versions of a penguin, the fat one and skinny one. Promafil was claiming that they abandoned the skinny one and that the fat one wasn’t a natural evolution of the mark or closely related enough to constitute a use of the original mark. The TJ said a normal person wouldn’t see the resembelance due to the difference and an unaware purchaser would be confused as to whether the two marks had the same or different origins. Issue: Were the marks sufficiently different? Was there an intention to abandon the mark? Ratio: Abandonment cannot be assumed from non-use Marks are allowed to evolve so long as the continuing and dominant commercial impression is maintained Analysis: The judge not only found there was no intent to abandon but also that because the penguins were both in use at differing times it had not been abandoned. Also, the penguin itself was the natural evolution and small changes made little difference to the predominant impression of the penguin. Obviously every time you make an alteration you get further away from the original trademark, but trademark itself is designed to help customers, as long as that happens, no sweat. Holding: Not expunged S & S Production Inc. v Possum Lodge Facts: Possum Lodge applied for the trademark for possum lodge for use with recreational logging like cabins camps cottages etc. S&S doesn’t want them to use Lodge. As well, they claim it is confusing with their trademark for possum lodge and international possum brotherhood which is in relations to wares and services (services stemming from video and tv material from the popular red green show). Considering Possum Lodges refers to lodges, it is inherently less distinct Issue: Even though they are for different things, would confusion arise? Ratio: The legal onus is on the applicant to show that there is no reasonable likelihood of confusion between the marks. Failure to do this can result in opoosition succeeding Analysis: Red green had been using possum lodge for 15 years prior to these people. PL never even promoted their PL lodges. PL on the RG show was the focal point and where everything in the show happened. Considering the marks were identical, RG had way more reputation and PL filed no evidence, there was a solid enough link that could be a reasonable likelihood of confusion Holding: Opposition upheld. Barbie Inc v 3894207 Canada Inc Facts: Barbie opposed the registration of “Barbies” restaurant claiming their doll was so well known that it would be likely cause confusion for consumers as to the source of ownership of the restaurant. Issue: Was there mark famous enough that it prevented all other trade channels from using the name? What is the test for confusion? Ratio: Famousness is not the test for confusion, confusion is analyzed in the totality of the circumstances such that a reasonable consumer would be confused as to the source of the material. Confusing Factors
Analysis: Barbie itself is not a distinctive name, it is just the diminutive form of Barbara. Created words are more distinctive and thus more likely to lead to confusion. There was no actual evidence of confusion here although there was a report that seemed to indicate confusion was theoretically possible (possibility not probability). There was no passing off as it was not an intentional or negligent attempt to mislead consumers into believing Barbies the toy manufacturer was operating the restaurant. Barbies fame was limited to dolls and it does not get the transcendant power of other more popular brands like coke or virgin or apple. The average hurried consumer gets some credit and would no doubt make different assertions about dinner than they would about toys. Although they may have more money than time, there was no likelihood of confusion. Holding: Fine to register it. Clairol International Corp. v Thomas Supply & Equipment Co Facts: Clairol is seeking damages for defendants for using their colour comparison chart in their marketing and on their products. Clairol claimed the use of ther chart constituted a use of their trademark as a way to depreciate the value or goodwill people had towards their products. They also claimed it was an unfair competition act. Issue: Is the use of someone elses tm immediately use? Ratio: If the use constitutes a kind of research that allows people to compare products without damaging good will, it will not constitute a use Analysis: The actual presence of “Clairol” is almost non existent and no one could reasonable believe that the notice of association was present to the point where someone would think they were buying clairols goods. Unfortunately, under section 22 (Depreciation of good will), the use of the chart was found to depreciate the good will of Clairol by virtue of saying our product is better than ours. Holding: depreciated good will Veuve Clicquot Ponsardin v Boutiques Cliquot Ltee Facts: Clicquot is a luxury champagne brand, they were upset with the boutique because they thought it was diminishing their reputation even though they are in different markets. Clicquot claimed to be a famous trademark and as such no one should use their name. Claimed it robbed the champagne of its lustre and diminishing its brand equity. Issue: is a mere association in the minds of the customer enough to diminish brand value? Ratio: Making a mere association is not enough to constitute damage to goodwill or reputation, there must be a more concrete link before true diminution occurs. Analysis: There is no doubt that Clicquot is distinctive, has been in use for a long time, and is a champagne of great renown. However, the boutique sells middle of the back clothes, and there was never any evidence of confusion between the trademarks/tradenames. The anti-dilution remedy in the states were a mere association is enough to constitute damaging good will is not available in Canada. Cliquot never used their trademarks anywhere, and even though there is great proof of goodwill, the likely connection or linkage made between the parties goods simply isn’t strong enough due to how disparate the parties are. There was no likelihood of depreciation as per S.22 and no damage resulted Holding: All good Directory: wp-content -> uploads -> gravity forms -> 1-7d6c8355b7f07846e8789d85deabdb60 -> 2016 gravity forms -> Earl E. Klein Jr gravity forms -> Narrative of how the entry meets the award criteria – July 28, 2016 gravity forms -> Revonda M. Baldwin gravity forms -> Air Atlanta Icelandic November 2006 – Current 2016 -> Grade: A+ Course Prize Winner 1-7d6c8355b7f07846e8789d85deabdb60 -> Insurance Law can Download 0.53 Mb. Share with your friends:
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