JURISDICTION REPORT: CANADA
SIGNIFICANT TRADEMARK CASE LAW IN 2010
Victoria Carrington Shapiro Cohen
Canadian trademark jurisprudence saw numerous interesting developments during 2010. Our courts and Opposition Board adopted new approaches to certain ‘old’ concepts and reinforced others.
Aſter the Supreme Court of Canada’s ‘encouraging’ obiter comments in the 2006 Barbie and Veuve Cliquot cases, recognising the ability of the fame of a trademark to transcend its product and service line in certain circumstances, last year, both the courts and the board appeared reluctant to ‘push the envelope’ of the protection afforded to well-known or famous marks to broader categories of wares or services. In Wrangler Apparel Corporation v Big Rock Brewery Limited Partnership, Groupe Procycle Inc v Chrysler Group LLC and Davide Campari-Milano Spa v Mastronardi Produce Ltd (appeal pending), the fame of the Wrangler mark did not transcend the apparel market into alcoholic beverages, the monopoly enjoyed by the trademark ‘Rocky Mountain’ for bicycles did not extend to cars, and the reputation acquired by the Campari mark in Canada for liqueurs and bitters was limited to alcoholic beverages, thus precluding confusion with Campari for tomatoes.
Te Opposition Board also considered the significance of possible drug error as a surrounding circumstance in assessing confusion for pharmaceuticals. In Sanofi-Aventis v GlaxoSmithKline Biologicals SA, the registrar noted that although the cardiovascular medications associated with the opponent’s trademark PLAVIX differed from the vaccines covered by the applicant’s trademark PACIRIX, the parties’ wares were still related because they were both drugs. In refusing the application, the registrar agreed with the opponent that particular care must be taken in preventing medication error that could have grave consequences. He quoted from an earlier case that “[p]revention of confusion and mistakes in medicines is too vital to be trifled with” and accepted the opponent’s submissions that even if a drug error is not directly related to source confusion, mistakes and confusion are not mutually exclusive. Mistaking one trademark for another necessarily implies a high degree of resemblance between them, which is one of the factors in the confusion analysis. Tis case seems to raise the bar for applicants of pharmaceutical marks.
In cases relating to summary expungement for non-use, the registrar again considered use of a mark by related companies in the context of the licensing provisions of the Canadian Trademarks Act (Smart & Biggar v Greco). Te registrar reiterated that unlike in other jurisdictions, notably the United States, use of a trademark by related companies does not automatically inure to the benefit of the trademark owner. Te act requires the mark owner to retain direct or indirect control of the character and quality of the wares and services at all times, even where the companies are ‘related’. Te existence of a related corporate structure is not sufficient for the registrar
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“ MISTAKING ONE TRADEMARK FOR ANOTHER NECESSARILY IMPLIES A HIGH DEGREE OF RESEMBLANCE BETWEEN THEM, WHICH IS ONE OF THE FACTORS IN THE CONFUSION ANALYSIS. THIS CASE SEEMS TO RAISE THE BAR FOR APPLICANTS OF PHARMACEUTICAL MARKS.”
to infer the existence of the requisite control over the licensed mark. Tis requirement may be satisfied, depending on the facts, if the president or director of the mark owner is also the president or director of the licensee. But where this is not the case, the registrant’s evidence must contain a clear statement that the control required by the act exists, or a description of the control or a copy of the pertinent provisions of the licence agreement.
In other summary expungement cases, the registrar confirmed that it is not sufficient for registrants to show use of only some of the goods in a particular category in order to maintain the registration in relation to all of the goods. In Conzorzio Del Prosciutto Di Parma v Maple Leaf Foods Inc, evidence showed use of a mark in relation to only five out of seven different kinds of meats covered by the registration. Te registrant argued that the registration should be maintained for the entire category. Te registrar disagreed and ordered the deletion of the wares for which no use was shown, despite the fact that ‘meat’ is an acceptable term in the Wares & Services Manual.
Trader Corporation v New Home Buyer’s Inc reinforced the importance of claiming a correct filing basis by refusing a proposed use application where evidence showed use by the applicant prior to filing.
Dr. Victoria Carrington is a partner at Shapiro Cohen. She can be contacted at:
vcarrington@shapirocohen.com
World Intellectual Property Review March/April 2011 43
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