In 2011, trademark decisions
confirmed that domain names
are property, that judges use
common sense, that trademark
confusion should be analyzed
strictly the way it is set out in the
Trademarks Act and that if you
don’t use a trademark, you may
lose your rights.
There were no amendments to
the Act and, apart from a late-year
announcement on public access to
official mark requests before publication, no big changes in Trademark Office practice. The new
Commissioner of Patents/Registrar
of Trademarks, Sylvain Laporte,
announced a focus on infrastructure improvements, rather than
legislative amendments.
CYNTHIA
ROWDEN
Some of the more important
decisions involved procedural
issues: whether trademark infringe-ment/passing off cases can be heard
“by application” or “by action”; the
use of summary proceedings, which
is always a tough issue for trademark owners in Canada; and the
importance of expert evidence in
trademark confusion cases.
Last May, the Supreme Court of
Canada issued a decision in
Masterpiece Inc. v. Alavida Life-
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styles Inc., [2011] S.C.J. No. 27,
after Federal Court trial and appeal
decisions left many practitioners
puzzled. At issue was the inter-
pretation of the Trademarks Act
provisions on entitlement and par-
ticularly how a determination of
confusion should be made where
parties are in different geographic
locales. Section 6 of the Act directs
that confusion should be deter-
mined by considering “if the use of
both marks in the same area would
be likely to lead to the inference
that the wares or services associ-
ated with those trademarks are…
manufactured, sold, leased…per-
formed by the same person…”
The Supreme Court confirmed
that geography should be
unimportant in assessing rights
between competing applicants.
Further, it said that minor differences between the marks
should not detract from a
focus on the key or most
important elements of the
mark. Confusion on first
impression should not
necessarily be limited by
specifics of the trade (
expensive goods/services, thoughtful purchases), particularly
where the similarity between the
marks is significant.
This “first impression” test is
being felt in subsequent decisions
and may turn out to have an
important impact on confusion
cases. Finally, the court said that
judges should exercise a gatekeeper role to ensure that evidence
that is distracting or of limited
value be kept out — where common sense can be applied, expert
evidence may not be required.
In the domain name case of
Tucows.Com Co. v. Lojas Renner
S.A., [2011] O.J. No. 3576, the
Ontario Court of Appeal, con-
sidered the requirement that the
case be about personal property in
Ontario and affirmed that it had
jurisdiction by finding that domain
names are a form of personal
intangible property. This decision
is in line with many U.S. jurisdic-
tions and added that domain
names have many of the normal
qualities of property — including a
right to make a claim against
others, monetary value and exclu-
sive rights.
Canadian courts traditionally
have not been receptive to interlocutory injunctive relief or
requests for summary judgment
in trademark cases. The well-known requirement for “clear
and unequivocal” evidence of
irreparable harm to justify the
intervention of the courts normally shuts down most prospective plaintiffs.
Several decisions in 2011
opened the door to faster and less
expensive options.
In BBM Canada v. Research in
Motion Ltd., [2011] F.C.J. No. 656,
In Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., [2011]
F.C.J. No. 908, the Federal
Court heard an application for
an order on summary trial, under
relatively new rules of the Federal
Court, in a case relating to trademark and copyright infringement.
Observing that the prior summary
judgment rules only permitted
decisions in cases where there
were neither credibility issues nor
conflicting evidence, the court
found that summary trial was
available even in cases with multiple defendants, complex fact
patterns, numerous investigations
and affidavits and even large damage awards. In this particular case,
the defendants did not really participate, allowing the court to
draw adverse inferences against
them on each of the issues. Cumulatively, damages and interest
totalling nearly $2.5 million, plus
costs, were awarded. n
Cynthia Rowden is a partner at
Bereskin & Parr LLP and head of
its trademarks practice group.
DOCKET
Some trademark cases to keep an
eye on in 2012:
n;Is Teachers, the Ontario Teachers’
Pension Board Plan, descriptive for
pension plan services? The Federal
Court of Appeal decision is expected
early in the year.
n;Does GAP Adventures infringe The
GAP, Inc. trademarks? A trial is
expected in the spring.
n;Are sound marks, in particular
Metro-Goldwyn Meyer’s roaring lion
sound, registerable. This case is
before the Federal Court, on appeal
from the Trademarks Registrar.
n;Who has rights to Target, the
U.S. department store chain or
Fairweather Ltd.? An action for
passing off and counterclaim for
infringement is scheduled to be
heard in November.
n;Is F1Emporium confusing with the
trademarks of Formula One Licensing
BV? The Opposition Board found so,
but the case is now appealed to the
Federal Court. — Cynthia Rowden
TRADEMARK BY ISTOCKPHOTO.COM, TARGET BY LYNN WATSON / DREAMSTIME.COM
