Canada: Trade-Marks Year In Review 2011

This paper will canvass key Canadian trade-mark decisions in 2011.

Supreme Court of Canada

In Masterpiece Inc. v. Alavida Lifestyles Inc.1, Canada's highest court held:

  • The Canadian trade-marks regime is national in scope — the test for confusion is a hypothetical one based on the assumption that both marks are used in the same area, whether or not this is actually the case.
  • The degree of resemblance "is the statutory factor that is often likely to have the greatest effect on the confusion analysis."
  • With a registered mark, the analysis should not be restricted to the manner in which the mark has actually been used post-registration — the analysis should address the actual mark for which registration was obtained. With unregistered marks, the analysis will necessarily be restricted to the manner in which the marks are actually used.
  • While previous cases held that it is the first word or element of a mark that is the most important for purposes of distinctiveness, a "preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique." It is the striking or unique aspects of the marks that are the most important for distinctiveness purposes.
  • It is the first impression of consumers that is key, even where goods are expensive: "[i]t is confusion when they encounter the trade-marks that is relevant. Careful research which may later remedy confusion does not mean that no confusion ever existed or that it will not continue to exist in the minds of consumers who did not carry out that research."
  • Expert evidence must provide information that is outside the experience and knowledge of the court. Where the casual consumer is not particularly skilled or knowledgeable, and there is a resemblance between the marks, expert evidence that simply assesses the degree of resemblance will not generally be necessary and could be "positively unhelpful." The court can use its own common sense, excluding influences of "idiosyncratic knowledge or temperament" to determine if a casual consumer would be confused. Survey evidence has the potential to provide empirical evidence of consumer reactions, which is the type of evidence that would not be known to the court, and therefore, may be of use.

Infringement/Passing Off Actions

In BBM Canada v. Research in Motion Limited, the Federal Court of Appeal (FCA) held that a claim for trade-mark infringement could be brought by way of application, based on affidavit evidence, opening the door to a new and faster way of dealing with infringement.

BBM brought an application to stop RIM's use of BBM. RIM moved to dismiss the application and was successful — the Federal Court (FC) ordered that the matter proceed by way of an action which would include discoveries and a trial. On appeal, the FCA noted that the purpose of the TMA is to protect consumers and to facilitate the effective branding of goods. The purpose is best met by an interpretation that "promotes access to the courts that is expeditious and proportionate as possible." To permit proceedings to proceed by way of application would meet that purpose.

Target Brands, Inc. v. Fairweather Ltd. dealt with a dispute over the TARGET mark.2 The defendant owned a registration for TARGET APPAREL. It opened a TARGET APPAREL clothing store in Toronto in 2003 and started to roll out a chain of stores across Canada in 2009. While the plaintiff had no stores in Canada and did not ship to Canada, it argued that its mark was well known in the country due to Canadians visiting the U.S. stores and U.S. advertising that spilled into Canada. The plaintiff moved for an interlocutory injunction.

The FC applied a three part test: is there a serious issue to be tried; would the applicant suffer irreparable harm if the injunction is refused; and, in whose favour does the balance of convenience lie? As in most cases, irreparable harm was the key issue. The main thrust of the plaintiff's submissions related to harm to the plaintiff's brand promise — the plaintiff argued that, once brand promise and goodwill are damaged, it may be impossible to repair such damage (i.e., once consumers form a perception based on the defendant's stores, it would be difficult if not impossible to change those perceptions and there would be a significant impact on consumer behaviour for years to come). The FC was not convinced and the application was dismissed.

The final case of interest involves confusion between the names of two law firms in Montréal, De Grandpré Joli-Coeur v. De Grandpré Chait.3 The plaintiff obtained a permanent injunction in the Quebéc Superior Court to stop the defendant from using De Grandpré by itself.

In conducting a confusion analysis, the Court noted that a certain measure of confusion may exist between the two firm names given the common use of De Grandpré, but that a certain level of confusion is to be expected and will be allowed given that De Grandpré is a surname. However, the Court concluded that the use of De Grandpré by itself would create confusion that is prohibited by law.

The Court noted the trend amongst law firms to shorten their names and use a single name, but concluded that by adopting the single name, De Grandpré, the defendant "is confusing what previously had been clear." Further, by appropriating De Grandpré, the defendant is "giving the impression that there is now only one 'true' De Grandpré law firm in Montréal."

Appeals from the Registrar of Trade-marks (Registrar)

Ontario Teachers' Pension Plan Board v. Canada dealt with the registrability of the word TEACHERS' for "administration of a pension plan, management and investment of a pension fund for teachers in Ontario."4 The FC applied common sense and concluded that:

... the first impression created by the proposed trade-mark, TEACHERS', considering the context of a pension plan, the pension fund itself and the services provided by the applicant, is that the proposed trade-mark describes a prominent characteristic of a pension fund for teachers and is ... clearly descriptive even though it does not describe the administration, management or investment of the pension funds in question.

On that basis, the FC upheld the rejection of the application.

Opposition Appeals

In Cyprus v. International Cheese Council of Canada, the FCA rejected an application to register HALLOUMI as a certification mark for cheese on the basis of evidence showing that HALLOUMI designated a type of cheese and had become recognized as such in Canada by ordinary and bona fide commercial usage.5

In Ron Matusalem & Matusa of Florida, Inc. v. Havana Club Holding Inc., the FCA upheld an opposition to the mark THE SPIRIT OF CUBA on the basis that it was deceptively misdescriptive for use in association with rum, holding that the words "Spirit of Cuba" mean liquor from Cuba which misled consumers into believing that the product originated from Cuba when in fact it was manufactured in the Dominican Republic.6

In Le Massif Inc. v. Station touristique Massif du sud (1993) Inc.,7 the FC dealt with the sufficiency of pleadings in an opposition. Le Massif applied to register LE MASSIF based on use since 1982 in association with the operation of a ski resort. Le Massif was incorporated in 2002 and acquired the ski resort previously owned by another company. The opponent alleged that Le Massif had not used the mark since 1982. The Registrar refused the application on the basis that the application did not identify the predecessor-in-title. The issue on appeal was whether the Registrar based his decision on a ground of opposition not raised in the Statement of Opposition.

The opponent argued that, implicit in the non-use allegation, was the issue of whether there was use going back to 1982 and whether the use was by the applicant. The FC noted that, in the submissions filed by the opponent before the Registrar, it relied simply on the issue of whether there was use going back to 1982 and did not mention the issue of whether the use was by the applicant. The FC concluded that the opponent had raised only one ground of opposition and that it was the Registrar who raised the issue of the predecessor-in-title. Accordingly, the Registrar proceeded on the basis of a ground of opposition that was not raised by the opponent and that was a jurisdictional error — the Registrar can only refuse an application on the grounds raised by the opponent.

In Hortilux Schreder B.V. v. Iwasaki Electric Co. Ltd.8 the FC dealt with two issues: can a sale for zero value support a date of first use and can the use of a trade-mark at the top of an invoice constitute use of the mark in association with the wares listed in the invoice?

On the first issue, the FC noted that while a sale for zero value could constitute use in the normal course of trade, it was necessary to provide:

  • A statement that the transaction was in the normal course of trade;
  • An explanation regarding what constitutes the normal course of trade with respect to the wares in issue;
  • An explanation regarding whether the providing of wares for zero value was part of the regular practice of the parties; or
  • An explanation regarding the purpose of the zero value transaction.

Without such evidence, the FC concluded that the Registrar erred in rejecting the non-use ground of opposition.

As to the use of the mark on an invoice, the FC noted that there are several factors to consider when deciding if the use of a mark on the top of an invoice constitutes use in association with the wares listed in the invoice, namely:

  • The mark should be prominent.
  • It should not be used in the context of corporate identification but rather should stand apart from the corporate address and contact information.
  • It should be clear to the purchaser of the wares that the mark is associated with the wares.
  • No other mark should appear on the invoice in association with the wares.

The FC concluded that the invoices established prior use of the mark.

Finally, Mӧvenpick Holding AG v. Exxon Mobil Corporation involved an application by Exxon to register the mark MARCHE EXPRESS based on use since 2001 in association with convenience store and fast food services offered at gasoline stations.9 Mӧvenpick unsuccessfully opposed the application on various grounds. Of interest, the FC had this to say on the subject of expert evidence (reminiscent of Masterpiece):

Both sides produced affidavits from linguists, who were cross-examined. Their evidence relates to both the clearly descriptive and confusion aspects of the case. In my opinion, they add little to the debate and would not have persuaded the Registrar to change her mind. In this case, where the objective is to assess the meaning of the words "marché express" in the French language as perceived on first impression by the reasonable everyday user of the services, expert evidence which mainly consists of a discussion of rules of grammar, semantics and linguistic constructions regarding the interpretation of these words is unnecessary and not particularly helpful.

Cancellation Appeals

Two cancellation decisions dealt with the issue of licensing:

  • Cubatabaco v. Shapiro Cohen:10 The issue was whether Cubatabaco had control over the character and quality of the cigars sold by its licensee Habanos S.A. such that the use of the marks by Habanos would accrue to the benefit of Cubatabaco. The Court noted that there are three ways in which registrants can demonstrate control:

"1. they can clearly swear to the fact that they exert the requisite control ...;

2. they can provide evidence that demonstrates how they exert the requisite control ...; or,

3, they can provide a copy of a license agreement that explicitly provides for the requisite control."

The evidence filed before the Court demonstrated control: Habanos testified that all tobacco products were produced according to the standards of Cubatabaco and that the standards were implemented under the supervision of Cubatabaco. On that basis, the Court was satisfied that control was exercised and that use of the mark by Habanos accrued to the benefit of Cubatabaco.

  • Spirits International B.V. v. BCF:11 Spirits International was the owner of the mark MOSKOVSKAYA RUSSIAN VODKA. The mark was ordered expunged by the Registrar since Spirits International could not show control over the quality or characteristics of the wares sold by its affiliate companies. The decision was upheld by the FC which noted:

... the mere fact that there is some common control between a registered trade-mark owner and other corporate entities is not sufficient to establish that the use of the trade-mark was controlled such that a licensing agreement can be inferred from the facts. Clear evidence of control has to be adduced ....

Finally, TSA Stores, Inc. v. Heenan Blaikie LLP dealt with the issue of whether a foreign website accessible in Canada could constitute use of a mark in association with retail store services featuring sporting equipment and clothing.12 In holding that the website constituted use of the mark in Canada, the FC noted that:

  • "Services" should be given a liberal interpretation — so long as some members of the public receive a benefit, it is a service.
  • A significant number of Canadians visited the website which provides a significant amount of information and guidance on a wide array of products.
  • Visiting the website is akin to visiting a bricks-and-mortar store and benefiting from a discussion with a knowledgeable sales person.
  • The services offered are of benefit to Canadians and as such there is use of the mark in Canada.


As noted at the outset, there were many interesting trade-mark cases in 2011 — this paper has canvassed just a few of the more interesting decisions.


1. [2011] 2 S.C.R. 387.

2. 2011 FC 758.

3. (2011), 94 C.P.R. (4th) 129.

4. 2011 FC 58.

5. 2011 FCA 201; application for leave to appeal to SCC pending.

6. 2011 FCA 244.

7. 2011 FC 118.

8. 2011 FC 967.

9. 2011 FC 1397.

10. 2011 FC 102; aff'd 2011 FCA 340.

11. 20110FC 805.

12. 2011 FC 273.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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