The Lawyers Weekly - January 21, 2011

Top court to clarify test for confusingly similar trade-marks

CHRISTOPHER GULY

Unless corrected by Canada’s highest court, a 2009 Federal Court of Appeal judgment could have a profound effect in the way Canadian lawyers clear trade-marks, according to veteran litigator and trade-mark agent Daniel Bereskin.

In a factum presented to the Supreme Court of Canada (SCC) last December on behalf of the New York-based International Trademark Association (ITA) as an intervener, Bereskin argued that in Masterpiece Inc. v. Alavida Lifestyles Inc., [2009] F.C.J. No. 1263, the Federal Court of Appeal “incorrectly took into account that the parties’ respective trade name and trade marks were not used in the same geographical area.” He said that s. 6 of the Trade-marks Act requires that “the likelihood of confusion is to be determined on the basis of the assumption that two trade-marks, or a trade name and a trade-mark are used in the same area (the ‘hypothetical marketplace’), irrespective of whether this is the case,” and that this test “is fundamental to the registration scheme” of the federal law.

“Right now, we supplement
whatever we find on the Regis-
trar of Trade-marks with a com-
mon-law search of trade names
and registered trade-marks,”
explained Bereskin, a partner at
the Toronto-based intellectual
property law firm, Bereskin &
Parr LLP, in an interview. “But if
the Federal Court of Appeal
decision stood, it would mean
that we not only have to do that
kind of search, but would also
have to determine where a prior
trade-mark was used and to
what extent, and make some
very tough judgment calls on
whether or not the extent of
usage geographically is suffi-
cient to cause confusion.”
In his brief to the SCC, Bere-
skin stated that “the geograph-
ical separation of the use or
eventual use of a trademark for
which registration is sought,
and the geographical location of
the use of a confusingly similar
prior trade name or trademark
is irrelevant to determining
whether the registrant is the
[entity] entitled to register.”
In Masterpiece, the Federal
Court of Appeal dismissed an
appeal from the Federal Court,
which in December 2008 denied
Masterpiece’s 2007 application
for expungement of Alavida’s
2005 registration of the trade-
mark, “Masterpiece Living,”
granted in 2007, on the basis
that it was confusing with
Masterpiece’s trade name and
unregistered trade-marks
“masterpiece” and “living” that it
began using alone or together in
2001 when the company was
incorporated. Masterpiece has
maintained that Alavida should
not have been able to register its
trade-mark.

“

The Federal Court of Appeal ‘incorrectly took into account that the parties’ respective trade name and trade marks were not used in the same geographical area.’

In early 2006, Masterpiece applied to register the same trade-mark, but the Canadian Intellectual Property Office denied the application on the basis that Alavida’s Dec. 1, 2005 application (which didn’t use the word “retirement”) was pending.

As Bereskin pointed out in his factum, the Federal Court of Appeal correctly found that the relevant date for determining likelihood of confusion with a “proposed use” trade-mark is the filing date of the application for registration.

“But Masterpiece Inc. should
have opposed the application on
the ground that Alavida was not
entitled to register because
Masterpiece had used the
[Masterpiece Living] trade-
mark in Canada before Alavida
applied,” he told The Lawyers
Weekly. According to the appel-
lant’s factum, Masterpiece’s
previous lawyer, “due to a soon-
fatal cancer diagnosis,” failed to
advise that his client could
oppose the registration. Master-
piece is now represented by
Clarke Hunter of Macleod
Dixon LLP in Calgary, who
maintains that his client is
“entitled to expungement of
Alavida’s registration if confus-
ing similarity is established,
regardless of whether it opposed
that registration.”
In his decision (Masterpiece
Inc. v. Alavida Lifestyle Inc.,
[2008] F.C.J. No. 1826) dis-
missing Masterpiece’s applica-
tion for expungement, Federal
Court Justice James O’Reilly
found that Alavida uses “Master-
piece Living” as a slogan as part
of its corporate identity, while
Masterpiece uses “Masterpiece”
to identify itself. Thus, “these
differences help reduce the like-
lihood of confusion.”
As Bereskin explained,
Masterpiece focused on s. 6 of
the Trade-marks Act in its
appeal, in which the court was
“supposed to adjudicate the
issue of likelihood of confusion
by assuming, hypothetically,
that the two trade-marks are
used in the same marketplace
irrespective of whether that’s
the case or not.” That, he added,
is “one of the cornerstones” of
the legislation.

An oddity in Intellectual Property Law

Huck Finn loses the N-word

A publishing house has announced that its new edition of Adventures
of Huckleberry Finn will no longer include the word “nigger.”
NewSouth Books of Alabama will publish the classic story using the
word “slave” instead, according to theglobeandmail.com. Huckleberry
Finn is in the public domain and therefore the revisions are legal.