Decisions in Canadian trademark cases are binding on lower courts if they are decided by the Supreme Court of Canada, the Federal Court of Appeal, or the court of appeal in any given Province. It should not matter how old the case is, these cases should be valid authority if the cases have not been overruled.

Published decisions of the Trademark Opposition Board “TMOB,” the Federal Court of Canada, or a superior court are often used to make a point, but they don’t bind a judge.

The TMOB is a specialist tribunal, highly detail oriented and usually consistent. Consistency is good for the economy and promotes faith in the system.

Decisions in the Federal Court of Canada and the various superior courts are often inconsistent and wrong. Usually, the issues are poorly briefed and often defendants appear unrepresented. The decisions of these courts should rarely be cited as authority for any proposition.

The writer believes that it is unethical for lawyers to cite unreported decisions, however, it is a common practice in Canada. Some lawyers keep treasure troves of unreported decisions to sandbag opponents. Judges should know better and hold these lawyers in contempt.

In the US, lawyers are usually sanctioned for citing unreported and non-precedential cases. Every state court and Federal District Court has its own particular rule about citing unpublished opinions. The rule against citing unpublished decisions are clear and strict in California, for example:

Rule 8.1115. Citation of opinions

(a) Unpublished opinion

Except as provided in (b), an opinion of a California Court of Appeal or superior court appellate division that is not certified for publication or ordered published must not be cited or relied on by a court or a party in any other action.

The following trademark cases are all published and are usually cited in Canadian trademark matters. The writer is unaware of any vetting system in Canada that ensures that published decisions are consistent with the law. Cases should be checked for negative treatment on Carswell Westlaw or Lexis Nexis. The writer is looking into using machine learning and IBM Watson Analytics to chart the consistency of the rule of law in Canadian trademark cases.

The writer is looking into using machine learning and IBM Watson Analytics to chart the consistency of the rule of law in Canadian trademark cases. The writer is seeking volunteers to collaborate on this project.

Trademark Cases

Re/Max International, Inc. v. Metro/Max Realty Inc. (1997) 82. CPR (3d) 110 (TMOB)

Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974) 16 CPR (2d) 97 (FC)

Goodall Rubber Co. v. Goodyear Tire and Rubber Co. (1999) 3 CPR (4th) 393 (TMOB)

Tone-Craft Paints Ltd. v. Du-Chem Paint Co. Ltd. (1969) 62 CPR 283 (TMOB)

Scotch Whisky Assn. v. Mark Anthony Group Inc. (1990) 31 CPR (3d) 55 (TMOB)

Molson Cos. Ltd. v. Andres Wines Ltd. (1989) 23 CPR (3d) 544 (TMOB)

Kraft Ltd. v. Canada (Registrar of Trade-marks)(1984) 1 CPR (3d) 457 (FC)

Ralston Purina Co. v. Effem Foods Ltd. (1997) 81 CPR (3d) 528 (TMOB)

International Stars S.A. v. Simon Chang Design Inc. 2012 CarswellNat 2344, 2012 TMOB 113

Sharp Kabushiki Kaisha v. 88766 Canada Inc. (1997) 72 CPR (3d) 195 (FC)

Thorold Concrete Products Ltd. v. Registrar of Trade Marks (1961) 37 CPR 166 (ECC)

Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978) 40 CPR (2d) 25 (FC)

Provenzano v. Registrar of Trade Marks (1977) 37 CPR (2d) 189 (FC)

Registrar of Trade Marks v. Provenzano (1978) 40 CPR (2d) 288 (FCA)

Pizza Pizza Ltd. v. Registrar of Trade Marks (1982) 67 CPR (2d) 202 (FC)

GSW Ltd. v. Great West Steel Industries Ltd. (1975) 22 CPR (2d) 154 (FC)

Cartier Men’s Shops Ltd. v. Cartier Inc. (1981) 58 CPR (2d) 68 (FC)

Clorox Co. v. E.I. du Pont de Nemours & Co. (1995) 64 CPR (3d) 79 (FC)

Eminence S.A. v. Canada (Registrar of Trade-marks) (1977) 39 CPR (2d) 40 (FC)

Conde Nast Publications Inc. v. Union des Editions Modernes (1979) 46 CPR (2d) 183 (FC)

Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 CPR (2d) 152 (TMOB)

Co-Operative Union of Canada v. Tele-Direct (Publications) Inc. (1991), 38 CPR (3d) 263 (TMOB)

House of Edgeworth Inc. v. Barrons (1992), 42 CPR (3d) 463 (TMOB)

Institut National Des Appellations D’Origine v. Brick Brewing Co., Ltd. (1995), 66 CPR (3d) 351 (TMOB)

Canadian Bankers’ Assn. v. Richmond Savings Credit Union (2000), 8 CPR (4th) 267 (TMOB)

Cadbury Confectionery Canada Inc. v. Valliant-Saunders (2002), 22 CPR (4th) 388 (TMOB)

Cerverceria Modelo, S.A. de C.V. v. Marcon (2008) 70 CPR (4th) 355 (TMOB)

 

Zorti Investments Inc. v. Party City Corporation (2004) 36 CPR (4th) 90 (TMOB)

Orkin Exterminating Co. v. Pestco of Canada (1985) 5 CPR (3d) 433 (Ont. C.A.)

Ciba Geigy Canada Ltd. v. Apotex, Inc. [1992] 44 CPR (3d) 289 (SCC)

Philip Morris Products S.A. v. Marlboro Canada Ltd. (2012) 103 CPR (4th) 259 (FCA); Leave to appeal refused (2013 CarswellNat 660)

Molson Companies Ltd. v. John Labatt Ltd. et al. (1984), 1 CPR (3d) 329 (FC)

Philip Morris Inc v. Imperial Tobacco Co of Canada, (1987) 13 CPR (3d) 289

Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 CPR (3d) 363 (FC)

Masterpiece Inc. v. Alavida Lifestyles Inc. [2011] 2 SCR 387

• The preferable approach in assessing resemblance between an applied-for mark and the opponent’s mark is to first consider whether there are aspects of the trademarks that are particularly striking or unique.
• If the dominant components of the marks are the same or very similar, and there is nothing striking or unique about the other components of the marks, then it is very difficult not to find a strong resemblance as a whole between the two marks.

Mattel U.S.A. Inc. v. 3894207 Canada Inc. [2006] 1 S.C.R. 772

• Trademarks are something of an anomaly in intellectual property law because the owner of a trademark is not required to provide the public with some novel benefit in exchange for a monopoly.
• However, trademarks serve an important public interest in assuring consumers that they are buying from the source from whom they think they are buying and receiving the quality which they associate with that particular trademark.
• Trademarks thus operate as a kind of shortcut to get consumers to where they want to go and in that way perform a key function in a market economy.

Trademark Registrability

Canadian Jewish Review Ltd. v. The Registrar of Trade Marks (1961) 37 CPR 89 (ExC)

• A word mark that is clearly descriptive in block letter form cannot become registrable simply because the letters are written in a fanciful script. This is because a mere embellishment of the letters comprising the words cannot be dissociated from the words themselves.

S.C. Johnson & Son, Ltd. et al. v. Marketing International Ltd. (1979) 44 CPR (2d) (SCC)

• In deciding whether a word mark is clearly descriptive, the Court needs to consider whether the mark is, in association with the goods, an elliptical reference to the goods or of their effect.

 

Depreciation of Goodwill

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltee. [2006] 49 CPR (4th) 401 (SCC)

 

Trademark Cancellation

A trademark registration may be expunged (canceled) by the Federal Court of Canada, if the registration is found to be invalid on the basis of abandonment, non-entitlement, non-distinctiveness or non-registrability, under sections 57 and 18 of the Trademarks Act.

The Registrar of Trademarks usually expunges trademark registrations after issuing notice under section 45 of the Trademarks Act to prove use of the trademark within the previous three years. The Registrar of Trademarks may also expunge a trademark registration under Sections 43 (notice to provide additional representations of the mark) and 44 (notice to provide information). A distinguishing guise trademark may be expunged under Section 13(3) of the Act.

Proving Trademark Abandonment

J.A. & M. Cote Ltee v. B.F. Goodrich Co. (1949), 14 C.P.R. 33 at 58 (Ex. Ct.); Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 at 64 (F.C.A.).

• In addition, Section 18(1)(c) of the Act provides that the registration of a
  trademark is invalid if the trademark has been abandoned.
• In order to establish abandonment, the party challenging the registration must prove:
  (1) that the mark is no longer in use in Canada, and
  (2) an intention to abandon the mark.

Trademark Cancellation Under Section 45

• Alliance Laundry Systems LLC v. Whirlpool Corporation LP, 2015 FCA 232
  • It is still incumbent upon the respondent to show use, that is to say how, when and where the trade-mark has been used.
  • The evidence did not, even on a generous view of its contents, meet the low threshold of evidence required to show use of the trademark at issue in association with the respondent’s goods.
• Bereskin & Parr v. Star-Kist Foods, Inc. (2004), 37 CPR (4th) 61 (TMOB)
• Boutiques Limité v Limco Investments(1998), 1998 CanLII 8416 (FCA)
  • The evidence must show use during the relevant period.
• Canada (Registrar of Trade Marks) v. Cie internationale pour l’informatique CII Honeywell Bull, S.A. (1983), 77 CPR (2d) 101 (FC)
• C.R.A.C. Centre de Recherche et d’Analyses v. Imco Trading Co. (1993), 52 CPR (122) (TMOB)
• Molson Companies Ltd. v. John Labatt Ltd. et al. (1984), 1 CPR (3d) 329 (FCTD)
  • Section 45 notices are valid even when they were not signed by the Registrar of Trademarks (but by a Trademarks Office employee acting on behalf of the Registrar).
• Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 CPR (3d) 363 (FCTD)
• Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 CPR (3d) 535 (TMOB)
• Noxzema Chemical Co. of Canada Ltd. v. Sheran Manufacturing Ltd. et al (1968), 55 CPR 147 (Ex Ct)
  • Section 45 proceedings are intended to be summary and administrative in nature.
  • The purpose of such proceedings is to determine whether the trademark has been used in Canada during the prescribed period and, if not, reasons which justify its non-use.
  • Section 45 proceedings do not contemplate abandonment.
• Parker-Knoll Ltd. v. Registrar of Trade Marks (1977), 32 CPR (2d) 148 (FC)
  • Section 45 proceedings do not contemplate determining the loss of distinctiveness of a registered trademark.
• Philip Morris v. Imperial Tobacco et al (1987) 13 C.P.R. (3d) 289

The purpose and scope of s. 45 is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register. Evidence of a single sale, whether wholesale or retail, in the normal course of trade may well suffice so long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived to protect the registration of the trademark. There is no need or justification for evidentiary overkill.

• Plough Canada Ltd. v. Aerosol Fillers Inc., 45 CPR (2d) 194 (FCTD) and 53 CPR (2d) 62 (FCA)
  • The use of the trademark must be more than in the trademark registrant’s general advertising. The use of the trademark must be in the trademark sense, as detailed in section 4 of the Trademarks Act
  • Statements in an affidavit should be precise and more particularly so with respect to an affidavit filed under s. 45 [of the Trade-marks Act] because it is not subject to cross-examination.
  • Affidavit testimony should not be susceptible of more than one interpretation and if it is then the interpretation adverse to the interest of the party who filed it should be adopted.
  • A bald assertion of use is insufficient to support a claim to use of the trademark in Canada.
• Philip Morris Inc v. Imperial Tobacco Co of Canada, (1987) 13 CPR (3d) 289 (FCTD)
• Road Runner Trailer Mfg. Ltd. v. Road Runner Trailer Co. Ltd. (1984), 1 CPR (3d) 443 (FC)
• Saks & Co. v. Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FC)
• Sara Lee Corp. v. Intellectual Property Holding Co. (1997), 76 CPR (3d) 71 (TMOB)
• Société Nationale des Chemins de Fer Français SNCF v. Venice Simplon-OrientExpress (1995), 64 CPR (3d) 87 (TMOB)
• Xentel DM v. Office of the Commissioner of Baseball (2002), 23, CPR (4th) 570 (TMOB)

 

Excusable Non-Use of A Trademark

Cassels Brock & Blackwell LLP v. Montorsi Francesco E. Figli S.pA. (2003), 29 CPR (4th) 106 (TMOB)

• Providing the product required compliance with legal requirements, which were not easily fulfilled within three years

Rogers, Bereskin & Parr v. The Registrar of Trade Marks (1987), 17 CPR (3d) 197 (FC)

• Poor market conditions along with renovations to the owner’s plant

Xentel DM v. Office of the Commissioner of Baseball (2002), 23, CPR (4th) 570 (TMOB)

• The service provided under the mark is only provided once a year and the location was rotated amongst a number of venues, only two of which were in Canada

Using Trademarks Properly

Canada (Registrar of Trade Marks) v. Cie internationale pour l’informatique CII Honeywell Bull, S.A. (1983), 77 CPR (2d) 101 (FC)

Nightingale Interloc Ltd. v. Prodesign Ltd. (1984) 2 CPR (3d) 535 (TMOB)

Road Runner Trailer Mfg. Ltd. v. Road Runner Trailer Co. Ltd. (1984) 1 CPR (3d) 443 (FC)

• Where the mark creates a distinctive element of the corporate name, it constitutes use as a trademark
• The question of whether a corporate name, which is also a trade name, has been used as a trademark must be decided on the circumstances of each particular case. The initial presumption is that a corporate name is a trade name rather than a trademark.
• The mark ROAD RUNNER TRAILER appeared in larger and bolder print and was therefore used by the registrant to distinguish its trailers from other trailers. Appeal Dismissed.

Saks & Co. v. Canada (Registrar of Trade Marks) (1989) 24 CPR (3d) 49 (FC)

C.R.A.C. Centre de Recherche et d’Analyses v. Imco Trading Co. (1993) 52 CPR (122) (TMOB)

Société Nationale des Chemins de Fer Français SNCF v. Venice Simplon-Orient-Express (1995) 64 CPR (3d) 87 (TMOB)

Trademark Opposition cases

Material Dates for Grounds of Opposition

 

Material Date for Assessing Confusion

Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991) 37 CPR (3d) 413 (FCA)

• The material date in assessing the registrability of a trademark in accordance with Section 12(1)(d) is generally the date of the opposition decision, 37 C.P.R. (3d) 413 at 422)
• determined as at the date of filing the statement of opposition (Park Avenue Furniture,  37 C.P.R. (3d) 413 at 423-424)

Material Date for Assessing Distinctiveness

Andres Wines Ltd. v. E. & J. Gallo Winery (1975), 25 CPR (2d) 126 (FCA)

• The material date for determining distinctiveness is the date of filing the Statement of Opposition

Material Date for Assessing Entitlement

38(2)(c) – 16(1) – used/made known in Canada – date of first use or making known in Canada – statute.

38(2)(c) – 16(2) – foreign use and registration – date of filing the Canadian application – statute.

38(2)(c) – 16(3) – proposed use in Canada – date of filing the Canadian application – statute – Borden, Inc. v. Hostess Food Products Ltd. et al. (1989), 28 CPR (3d) 45 (FC).

Take into account the filing date of the foreign priority application, pursuant to Section 34 of the Act, if the Canadian application claims convention priority. [Up to a 6-month difference.]

Material Date for Assessing Registrability Under s. 12(1)(a) or 12(1)(b):

The material date is the filing date of the trademark application. Although there has been inconsistency on this issue, the Opposition Board is now considering the application date as the material date.

• Fiesta Barbeque Ltd. v. General Housewares Corp. (2003), 28 CPR (4th) 60 (FCTD)
• Shell Canada Limited v. P.T. Sari Incofood Corporation (2005), 41 CPR (4th) 250 (FC)
• Calvin Klein Trademark Trust v. Wertex Hosiery Inc. (2004), 41 CPR (4th) 552 (TMOB)
• Jurak Holdings Ltd. v. Matol Biotech Laboratories Ltd. (2006), 50 CPR (4th) 337 (TMOB)

Canadian Council of Professional Engineers v. Lubrication Engineers Inc. (1992), 41 CPR (3d) 243 (FCA)

• Held that the Registrar wrongly considered the filing date to be the relevant date for considering descriptiveness in the opposition, and suggested that it is the hearing date which is relevant. – Point not followed anymore – orbiter dicta

Fiesta Barbeque Ltd. v. General Housewares Corp. (2003), 28 CPR (4th) 60 (FCTD)

• The judge, in overturning the Opposition Board’s decision, was conscious of the ruling in Lubrication Engineers, supra, but declared the comments there to be obiter dicta, and instead relied upon an old line of cases, including a Supreme Court of Canada decision, Lightening Fastener Co. v. Canadian Goodrich Co., [1932] S.C.R. 189 (per Anglin C.J.C.)

If the applicant relied on Section 12(2), or Section 14, the material date in assessing acquired distinctiveness is the date of filing of the application. (For a thorough discussion of Sections 12(2) and 14, refer to Unit 4).

• Molson Breweries v. John Labatt Ltd. (2000), 5 CPR (4th) 180 (FCA)
• Zorti Investments Inc. v. Parties City Corporation (2004), 36 CPR (4th) 90 (TMOB)
• A. Lassonde Inc. v. Citrus World, Inc. (2004), 42 CPR (4th) 348 (TMOB))

Material Date for Assessing Registrability Under s. 12(1)(c) – (h)

• Date of the opposition decision

Various Trademark Opposition Principles

Novopharm Limited v. AstraZeneca AB et al. (2002) 21 CPR (4th) 289 (FCA)

• In determining the sufficiency of a statement of opposition after evidence is filed, regard must be had to the evidence to see if the applicant has been provided with sufficient detail to make an adequate reply. Once evidence is filed, it is too late to go back and assess the pleadings as if the evidence was not filed. The filed evidence may cure inadequacies in the pleadings.

McDonald’s Corp. v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101 (FC)

• An opponent cannot merely rely on a series of registered marks in order to claim the advantage of a family of trademarks.
• The opponent must prove use of each mark in the family.

Appeals to Federal Court from The TMOB:

Cathay Pacific Airways Limited v. Air Miles International Trading B.V., 2016 FC 1125

• The Trademarks Act “TMA” requires the judge to consider the fresh evidence, bearing in mind that both parties are entitled to submit fresh evidence.
• What may be surplus to requirements for one party may be critical to the outcome for the other.
• Quoting TMA Section 56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
• (5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
• The Federal Court of Appeal returned the matter to the Federal Court for re-determination of all issues raised by the appeal by a different Federal Court Judge.

Trademark Registrability Challenged in Oppositions

Coronet-Werke Heinrich Schlerf GmbH v. Produits Ménagers Coronet Inc. (1984), 4 CPR (3d) 108 , (TMOB); Groupe Lavo Inc. v. Procter & Gamble Inc. (1990), 32 CPR (3d) 533 (TMOB)

• Section 19 of the Trade-marks Act does not give the owner of a registration the automatic right to obtain any further registrations no matter how closely they may be related to the original registration.

Fiesta Barbeque Ltd. v. General Housewares Corp. (2003), 28 CPR (4th) 60 (FCTD)

• Whether composite trade-mark(s) which contain descriptive words will be considered clearly descriptive when sounded
• The trademark included the words GRILL GEAR and design
• Trademarks comprising both a design element and a “verbal” component have to be considered in its totality.

 

Zorti Investments Inc. v. Party City Corporation (2004), 36 CPR (4th) 90 (TMOB)