Masterpiece
Continued From Page 1
with another trade-mark any-
where in the country,” wrote
Justice Marshall Rothstein for
the court.
The International Trademark
Association (INTA) intervened
in the case on this narrow issue
in order to “rectify” what the
association saw as an error on
the part of the Federal Court of
Appeal, according to Dan Bereskin, of Bereskin & Parr LLP in
Toronto, who represented INTA.
The court added that registration itself does not confer priority of title to a trade-mark. At
common law, it is use of a trade-mark that confers the exclusive
right to the trade-mark, according to the court. While registration grants certain additional
rights, Justice Rothstein emphasized that “registration is only
available once the right to the
trade-mark has been established
by use.” Under the Trade-marks
Act, a party with common law
rights such as Masterpiece can
seek to expunge a registration
based on its earlier use of a confusing trade-mark.
The decision “has clarified
what I think most of us thought
was the law all along,” said Kelly
Gill of Gowling Lafleur Hender-
son LLP in Toronto, who repre-
sented Masterpiece. Acceptance
of the Federal Court of Appeal’s
decision could have led Canada
toward a first-to-file system as
opposed to a first-to-use system
for trade-mark rights, according
to Gill.
“The role experts have started to play is the role
the judge should play and is in a position to do so.
The Manitoba government is
moving to protect pensions by
allowing direct action to be taken
against employers who have plans
in place but fail to make the
required contributions.
The legislative changes to the
Pension Benefits Act (PBA) would,
among other things, allow the
government to register liens against
all property of an employer in the
amount it failed to pay into a plan.
Winnipeg pension lawyer Allan
Foran told The Lawyers Weekly that
the proposed amendments to the
PBA “are welcome additions for plan
beneficiaries and administrators. The
powers to pursue delinquent
sponsors will now be clearly spelled
out in legislation.”
BC says no judge pay hikes
whether they would be likely to
think that the later user was the
same source of the products or
services as the earlier user.
In considering whether
marks are confusing, the court
asserted that the degree of
resemblance between the marks
is the “factor that is often likely
to have the greatest effect on
the confusion analysis.” Under
this analysis, the court found
that there was a “strong resemblance” between Alavida’s
“Masterpiece Living” and
Masterpiece’s marks, particularly “Masterpiece the Art of
Living.”
CONTENTS
NEWS
THE SUPREME Court of Canada
clarifies the trade-mark confusion
test ..............................................1
ONT. COURT of appeal approves
renewed coverage made without
insurer’s knowledge ................... 10
QUE. COURT of appeal limits
scope of indemnity clause.......... 11
Gill endorsed the court’s pronouncement on this issue,
pointing out that holding otherwise would effectively lessen the
ambit of protection for marks
used with more expensive goods
and services. Alavida’s lawyer,
on the other hand, questions
whether one can actually have a
hurried consumer when purchasing something expensive.
“If it is super expensive, I
want to know the source,”
asserted Scott Miller of MBM
Intellectual Property Law LLP
in Ottawa. “The hurried con-
sumer doctrine for services
doesn’t make sense — I am not a
hurried consumer when I go to
get expensive services.”
This issue is further com-
pounded by the fact that the
court did not distinguish
between goods and services,
according to Miller. Under the
Trade-marks Act, “use” of a
mark for goods occurs when the
product is transferred to the
consumer, while “use” for servi-
ces occurs when the mark is
displayed in the advertising or
performance of the services. The
court’s test seems to ignore the
requirement to consider confu-
sion when the mark is “used,”
and instead focuses on the first
encounter of a mark, according
to Miller.
Many trade-mark cases
involve survey evidence and the
testimony of experts, as did this
case. Noting that litigation is
costly, Justice Rothstein wrote
that courts “must fulfil their
gatekeeper role to ensure that
unnecessary, irrelevant and
potentially distracting expert
and survey evidence is not
allowed to extend and compli-
cate court proceedings.”
In this case, the court stated
that it was apparent that the
“expert evidence on either side
was not particularly helpful.”
Adding that portions were “con-
tradictory and acrimonious,”
Justice Rothstein wrote that it
appeared to have “substantially
distracted from the confusion
analysis rather than assisting it.”
With respect to goods or ser-
vices being marketed to the
general public, Justice Roth-
stein asserted that judges
“should use their own common
sense” to determine whether
the casual consumer would be
confused. In obiter, Justice
Rothstein also suggested that it
might be worthwhile to have a
case management judge assess
the admissibility and useful-
ness of proposed expert and
survey evidence at an early
stage of the proceedings.
B.C. Attorney General Barry Penner
says the government should reject
wage hikes for provincial court judges
as suggested by a compensation
review commission.
The annual salary of a provincial
court judge for April 1, 2010 to March
31, 2011 was $231,138.
The commission proposed judges
receive no salary increases in
2011/12 and 2012/13, followed by
a 2013/14 increase to bring salaries
up to 90 per cent of that of B.C.
Supreme Court justices. The annual
salary for a B.C. Supreme Court
justice as of April 1, 2010 was
$271,400.
The commission also
recommended that the chief judge’s
salary remain at judge salary plus 12
per cent and that the associate chief
judge’s salary remain at six per cent.
By May 2012, a second
commission will deliver a review of
current B.C. Supreme Court justices’
remuneration and may recommend an
adjustment of base salary levels for
the 2012/13-2016/17 fiscal years.
ARTICLING POSITIONS are still
scarce, according to the Law
Society of Upper Canada..............1
Goodbye Ogilvy Renault
NEW E&O insurance can provide
executors peace of mind............ 12
AN UNCONSCIOUS woman could
not have consented to sex, says
the SCC........................................ 3
Municipal Law
MUNICIPAL POLITICIANS and
online defamation....................... 13
VANCOUVER LAWYER takes leap
of faith.......................................... 4
METRO VANCOUVER’S regional
growth strategy ......................... 14
Reasons: Masterpiece Inc. v. Alavida
Lifestyles Inc., [2011] S.C.J. No. 27.
OPINION
BUSINESS & CAREERS
We want to hear from you!
Email us at: tlw@lexisnexis.ca
CHRIS SCHAFER ....................... 3 CLEAN THAT cluttered desk ..... 21
JEFFREY MILLER....................... 5
SUJIT CHOUDHRY & MICHAEL
TREBILCOCK.............................. 5
RICHES, MCKENZIE & HERBERT LLP
PATENTS, TRADE MARKS, COPYRIGHT, LITIGATION
DEPARTMENTS
BARRISTERS & SOLICITORS - PATENT & TRADE MARK AGENTS
FOCUS
Insurance Law
HOW TO protect innocent
co-insureds .................................. 9
WHEN INSURANCE exclusions
go too far ................................... 10
Careers ................. 21
Classified Ads ............ 19
Lawddities............... 14
Legal Briefs...............2
Letter to the Editor . . . . . . . . . 5
Names in the News......... 4
Weekly Digest............ 17
PAUL HERBERT, B.SC., PHM., R.PH, LL.B., J.D., PH.D.
DAN HITCHCOCK, B.ENG. (ELEC. ENG.), LL.B.
JEFF PERVANAS, B.A.SC. (ENG. SCI.), LL.B.
BOBBY ATHWAL, B.A.SC. (MECH. ENG.), M.A.SC., LL.B., J.D.
BYRON THOM, B.A.SC. (ENG. SCI.), LL.B.
BRAN T LATHAM, B.A.SC. B.SC. (CHEM. ENG.), LL.B.
GARY M. TRAVIS, B.SC. (GEOL.), LL.B.
MICHAEL ADAMS, B.ENG. (MECH. ENG.), B.SC., LL.B.
MICHAEL YUN, B.SC. (BIOCHEM), J.D.
TRADE MARK AGENT MARTA TANDORI CHENG
2 BLOOR ST. EAST, SUITE 1800
TORONTO, ONTARIO M4W 3J5
ESTABLISHED 1887
TELEPHONE: (416) 961-5000
FAX: (416) 961-5081
E-MAIL: riches@patents-toronto.com
Ogilvy Renault LLP is no more. As
of June 1 the Canadian firm has
officially joined the international
legal practice of Norton Rose Group
and will now be known as Norton
Rose OR LLP. Norton Rose has more
than 2,600 lawyers in 39 offices
worldwide.
There has been a lot of buzz in the
Canadian legal world regarding the
impact of the move since the merger
was officially announced last fall. In a
press release the firm insists there
will be no major changes for clients.
John Coleman continues to be
managing partner of Norton Rose OR
in Canada and joins the Norton Rose
Group’s executive committee.
Norman Steinberg continues as
chairman of Norton Rose OR.
“We thought it would be
interesting for [our clients] but we
underestimated to what extent it
would be appealing to them.” Jean
Bertrand of Norton Rose OR said.
