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Trade-Marks

. Miller Thomson LLP v. Hilton Worldwide Holding LLP

In Miller Thomson LLP v. Hilton Worldwide Holding LLP (Fed CA, 2020) the Federal Court of Appeal discussed the importance of 'use' in trademark law:
[6] Unlike other forms of intellectual property, use of a trademark is essential, and is fundamental to trademark rights: HomeAway.com, Inc. v. Hrdlicka, 2012 FC 1467, [2012] F.C.J. No. 1665 at paras. 11–12. As the Supreme Court of Canada noted in Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772 at para. 5, "“in trade-marks the watchword is ‘use it or lose it’”". Indeed, the statutory definition of "“trademark”" in section 2 of the Act is "“a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others […]”" [emphasis added].

[7] In accordance with subsection 4(2) of the Act, a trademark will be deemed to be used in association with services "“if it is used or displayed in the performance or advertising of those services”". That said, the mere advertising of services in Canada will not constitute use in Canada in association with a service. Some aspect of the services must be performed or delivered in Canada: Porter v. Don the Beachcomber, [1966] Ex.C.R 982, 48 C.P.R. 280 at para. 17; Marineland Inc. v. Marine Wonderland and Animal Park Ltd., [1974] 2 FC 558.

[8] While foreign trademark owners can register their marks in Canada and thereby enjoy the benefits of exclusivity, maintenance of a registration depends on the use of the mark in Canada.
. Miller Thomson LLP v. Hilton Worldwide Holding LLP

In Miller Thomson LLP v. Hilton Worldwide Holding LLP (Fed CA, 2020) the Federal Court of Appeal commented on some important procedures under the Trademarks Act:
[9] Section 45 of the Act provides a summary procedure for clearing the Register of Trademarks of registrations for marks that have fallen into disuse: Sport Maska Inc. v Bauer Hockey Corp., 2016 FCA 44, [2016] 4 F.C.R. 3 at para. 55. The section 45 process has been described as one for removing "“deadwood”" from the Register: Boutiques Progolf Inc. v. Canada (Registrar of Trade Marks), 164 N.R. 264, 54 C.P.R. (3d) 451. It is not intended to resolve contentious issues between competing commercial interests. Such issues are resolved through expungement proceedings under section 57 of the Act: Moosehead Breweries Ltd. v. Molson Cos. Ltd. et al. (1985), 11 C.P.R. (3d) 208 at 210, 63 N.R. 140 at 141.

[10] The threshold for establishing “use” in a section 45 proceeding is quite low: Woods Canada Ltd. v. Lang Michener, 1996 CanLII 17297 (FC), [1996] F.C.J. No. 1701, 71 C.P.R. (3d) 477 (F.C.T.D.). Evidentiary overkill is, moreover, not required: Union Electric Supply Co. Ltd. v. Registrar of Trade Marks, [1982] 2 F.C. 263 (1982), 63 C.P.R. (2d) 56 (F.C.T.D.). That said, sufficient facts must still be adduced to allow the Registrar of Trademarks (the Registrar) to find use of a trademark in association with each of the registered services during the relevant period.

[11] Subsection 45(1) of the Act authorizes the Registrar, either on her own initiative or in response to a request made by a third party, to issue a notice requiring that the owner of a registered trademark show use of the mark in Canada in the three years immediately preceding the date of the notice (the relevant period). In accordance with subsections 45(3) and (5) of the Act, a trademark registration may be expunged if the owner fails to show use in Canada within the relevant period, or the existence of "“special circumstances”" justifying the non-use of the mark.

[12] Pursuant to subsection 56(1) of the Act, an appeal lies to the Federal Court from a decision of the Registrar in a section 45 proceeding, and additional evidence may be filed on the appeal in accordance with subsection 56(5) of the Act.

....

[27] Hilton appealed the Registrar’s decision to the Federal Court through the statutory appeal mechanism provided for in subsection 56(1) of the Act. As it was entitled to do, Hilton submitted additional evidence in support of the appeal in the form of a further affidavit from Mr. Eriksen, as well as an affidavit from Linda Elford. Ms. Elford is a trademark searcher and her evidence was directed at the state of the "“Wares and Services Manual”" maintained by the Canadian Intellectual Property Office (the Manual).

[28] The Federal Court observed that, in determining whether an appellant has established use of a trademark, the Court must conduct a de novo review of a Registrar’s decision where additional evidence is adduced on the appeal that would have materially affected that decision: Mattel, above at paras. 35, 37; John Labatt Ltd. v. Molson Breweries, 2000 CanLII 17105 (FCA), [2000] 3 F.C. 145, 252 N.R. 91 at para. 29 (C.A.), leave to appeal to SCC refused, 27839 (14 September 2000). Where, however, the Registrar’s findings of fact or treatment of issues are not affected by the new evidence, the reasonableness standard of review applies.
. Live! Holdings, LLC v. Oyen Wiggs Green & Mutala LLP

In Live! Holdings, LLC v. Oyen Wiggs Green & Mutala LLP (Fed CA, 2020) the Federal Court of Appeal considered an interesting trade mark expungement case [paras 21-51].

. The Clorox Company of Canada, Ltd. v. Chloretec S.E.C.

In The Clorox Company of Canada, Ltd. v. Chloretec S.E.C. (Fed CA, 2020) the Federal Court of Appeal stated and considered the test for trade-mark 'confusion':
[32] There is no dispute between the parties as to the proper test for confusion. That test was set out by the Supreme Court in paragraph 20 of Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée., 2006 SCC 23, [2006] 1 S.C.R. 824:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOT trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
[33] The Federal Court was well aware of that test and indeed quoted that very same extract. It is also well established that when applying the test for confusion, the trier of fact must have regard to all the surrounding circumstances, including those specifically enumerated in subsection 6(5) of the Act. Again, this is precisely what the Federal Court did in the case at bar, stressing as Justice Rothstein did in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R. 387 (at para. 49) [Masterpiece], that the most important criterion is that of resemblance between the marks.

[34] Clorox argued, however that the Federal Court erred in writing that a consumer "“is not always hurried to the same extent”" for valuable or niche market goods.

[35] I can see no error in that statement. Quite to the contrary, it is consistent with the decision of the Supreme Court in Mattel, according to which consumers will be more cautious and take more time in some circumstances:
A consumer does not of course approach every purchasing decision with the same attention, or lack of it. When buying a car or a refrigerator, more care will naturally be taken than when buying a doll or a mid-priced meal…

Mattel at para. 58, citing General Motors Corp. v. Bellows, 1949 CanLII 47 (SCC), [1949] S.C.R. 678.



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