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Trade-Marks

. Loblaws Inc. v. Columbia Insurance Company

In Loblaws Inc. v. Columbia Insurance Company (Fed CA, 2021) the Federal Court of Appeal considered a trade-mark challenge. The case is largely one of similarity-assessment and thus not legal, but it is an interesting and useful example of trade mark principles at work.

. Group III International Ltd. v. Travelway Group International Ltd.

In Group III International Ltd. v. Travelway Group International Ltd. (Fed CA, 2020) the Federal Court of Appeal considered basics of trade-mark law:
Rights conferred by registration

19 Subject to sections 21, 32 and 67, the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.
....
[32] Under section 19 of the Act, and subject to sections 21, 32 and 67, the registration of a trademark, unless shown to be invalid, gives the owner the exclusive right to the use throughout Canada of the trademark in respect of the wares or services mentioned in the registration.

[33] The administrative scheme established under the Act highlights the specialized and comprehensive nature of the trademark registration process. I am of the view that the integrity of the administrative scheme is critical and underscores the importance of section 19 of the Act. Once the owner obtains the certificate of registration, the protection afforded to the registered trademark under section 19 of the Act is essential for the proper functioning of the trademark system and trademark law overall. There are policy reasons for this protection. It serves to protect the public as well as the owners of trademarks by affording transparency, stability and certainty of the trademark system in Canada.

[34] The equivalent protection of section 19 is not available in other statutes governing intellectual property law in Canada. In that regard, trademark law is distinct from patent law and copyright law. Therefore, I conclude that there are sound reasons why the use of a registered trademark does not give rise to liability in damages or profits for the period arising prior to it being struck from the Register because of the protection afforded to it under section 19 of the Act.
. Group III International Ltd. v. Travelway Group International Ltd.

In Group III International Ltd. v. Travelway Group International Ltd. (Fed CA, 2020) the Federal Court of Appeal considered trade-mark invalidity law and when it applies:
When registration invalid

18(1) The registration of a trademark is invalid if

(a) the trademark was not registrable at the date of registration;

(b) the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

(c) the trademark has been abandoned;

(d) subject to section 17, the applicant for registration was not the person entitled to secure the registration; or

(e) the application for registration was filed in bad faith.
....
[35] I cannot accept the arguments advanced by the appellants regarding their interpretation of subsection 18(1) of the Act and invalidity ab initio.

[36] When considering the grounds of invalidity under subsection 18(1) of the Act, each paragraph points to a time at which the determination of invalidity of the registered trademark is to be assessed. This determination of the point in time at which the invalidity of a registered trademark ought to be assessed is distinct from the determination of when a party may become liable for damages. In expungement proceedings under subsection 57(1) of the Act, liability for damages is engaged only after the Federal Court has struck out the trademark from the Register. Absent a finding of fraud, wilful misrepresentation or bad faith in the application for registration, the owner of the registered trademark is not liable for any damages accruing prior to the expungement of its trademark.

[37] If there is a finding of fraud, wilful misrepresentation or bad faith in the application for registration, the Court may very well find that the impugned trademark was never validly registered. This Court has found that in order to obtain an ab initio invalidation of a registered trademark, it is necessary to show that the owner of the impugned trademark obtained the registration of the mark either by making a misrepresentation to the trademark office or misleading it in a material way (see Concierge Connection Inc. v. Venngo Inc., 2015 FCA 215, 140 C.P.R. (4th) 325 (F.C.A.)).

[38] In the present case, neither this Court nor the Federal Court made any such findings. The respondent could rely on its registrations as protection until such time as the Federal Court expunged its trademarks from the Register.

[39] In summary, as this Court found in Remo and as was implied in Veuve Clicquot, I am of the view that absent fraud, wilful misrepresentation or bad faith, the declaration of infringement does not render the respondent liable to pay damages or a loss of profits to compensate the appellants for the period during which the registrations were in effect.
. Group III International Ltd. v. Travelway Group International Ltd.

In Group III International Ltd. v. Travelway Group International Ltd. (Fed CA, 2020) the Federal Court of Appeal considered different types of damage under trade-mark law:
Power of court to grant relief

53.2(1) If a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels and advertising material and of any equipment used to produce the goods, packaging, labels or advertising material.
....
D. Passing off

[40] In 2017, this Court made a separate finding that the respondent was liable for passing off, contrary to section 7(b) of the Act. This Court did not distinguish between damages arising for infringement from damages arising for passing off.

[41] Infringement (section 20 of the Act) and passing off (section 7(b) of the Act) are separate, distinct causes of action. Each may give rise to an order of damages. The remedies available for each depends on whether the impugned mark which gives rise to the proceeding is registered or not. In the case of infringement, damages are generally not available if the impugned mark is registered because of the effect of section 19, unless there is proof of fraud, wilful misrepresentation or bad faith in obtaining registration of the mark.

[42] The cause of action for infringement exists to allow a party who owns a registered trademark to sue the owner of another trademark, whether registered or not, because the impugned trademark is confusing. The cause of action of passing off arising under section 7(b) of the Act is a codification of the common law tort of passing off. It allows a party who owns an unregistered trademark to bring an action for relief under the Act.

[43] In Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65, [2005] 3 S.C.R. 302 at paras. 25-26 [Kirkbi], the Supreme Court held that the action for passing off in section 7(b) of the Act protects interests in unregistered trademarks:
25. … First, s. 7(b) is remedial; its purpose is to enforce the substantive aspects of the Trade-marks Act relating to unregistered trade-marks:

The tort of passing off is in many respects the equivalent cause of action for unregistered trade-marks as infringement [s. 20 of the Act] is to registered trade-marks. The overall legislative scheme of the Trade-marks Act is the protection, identification, and registration of trade-marks, whether registered or unregistered.

26. Second, the passing-off action protects unregistered trade-marks and goodwill enjoyed by the trade-marks. …

[My emphasis].
[44] Thus, Kirkbi suggests, but does not decide, that the owner of a registered trademark cannot have recourse to section 7(b) of the Act to protect its trademark. Its recourse is proceedings for infringement or expungement.

[45] This point was made even more clearly in Molson Canada v. Oland Breweries Ltd./Les Brasseries Oland Ltée, 2002 CanLII 44947 (ON CA), [2002] 59 O.R. (3d) 607, 214 D.L.R. (4th) 473 (ONCA) [Oland] which was cited in support of the conclusion on this issue in Remo and where both parties had registered trademarks, the Ontario Court of Appeal wrote:
2. ... The appellant puts forward a series of arguments as to errors made by the trial judge in his analysis of the facts and law, some of which may have merit. However, it is unnecessary to analyze them because, in my view, the respondent holds the trump card. The respondent argues that, whatever the merits of the appellant's grounds of appeal, the trial judge made an initial and fundamental error by failing to conclude that the respondent's trade-mark registration was a complete answer to the plaintiff's claim [for passing off]. I agree.
. 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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