Trade-Mark Infringement Found On Appeal (Intellectual Property Weekly Abstracts – Week Of July 29, 2012)

Edited by Chantal Saunders and Beverley Moore

Other Cases of Interest

Trade-Mark Infringement found on Appeal
Marlboro Canada Limited v. Philip Morris Products S.A.

The parties both appealed a Federal Court judgment dismissing Marlboro's claim for infringement, and granting, in part, Philip Morris' counterclaim. A copy of the Federal Court decision can be found here. A copy of our summary can be found here.

The appeal was allowed in part, and Philip Morris' no-name packages in red, silver and gold were found to infringe the trade-mark. The Court of Appeal set out the general principles of a confusion analysis as are relevant after the Supreme Court's decision in Masterpiece, and noted that the Trial Judge did not have the benefit of Masterpiece, for his analysis. The Court of Appeal found that the Trial Judge had erred in his interpretation of the confusion test and in its application to the facts and held that the interests of justice would be served by doing their own analysis.

The Court of Appeal held that in a dark market where products are not in view, such as that for cigarettes, consumers would be confused as to how to refer to the no-name package, resulting in consumers referring to the no-name product as Marlboro. Thus, necessarily, two different products by two different manufacturers are being requested using the same name and confusion results. However, the Court of Appeal also held that the ROOFTOP design marks are not confusing with the word-mark MARLBORO and refused to strike them from the register.

The Court of Appeal granted a permanent injunction against Philip Morris, and ordered delivery up or destruction of all packaging that would offend the injunction. The matter of whether the plaintiffs could elect between damages and an accounting of profits was referred back to the trial judge. The cross-appeal for copyright infringement was dismissed with costs.

Application Alleging Trade-mark Infringement, Passing off and Depreciation of Goodwill Dismissed
BBM Canada v. Research in Motion Limited

BBM Canada brought an application alleging infringement, passing off and depreciation of goodwill with respect to its registered trade-marks by the use by Research in Motion ("RIM") of 'BBM' in association with its Blackberry Messenger service. The Court dismissed the application.

BBM Canada provides impartial television and radio ratings data and analysis to Canadian broadcasters and advertisers, Statistics Canada and the Canadian radio-television and Telecommunications Commission ("CRTC"). BBM Canada recruits members of the public to record their television viewing and radio listening, but is not permitted to mention the name BBM Canada in so doing to prevent bias. RIM was described by the Court as "a designer, manufacturer and marketer of wireless solutions for the global mobile communications market." Its Blackberry Messenger service was referred to by many customers as "BBM", after which RIM began to use BBM for marketing in about June 2010.

The Court held that the relevant universe of consumers for the purposes of assessing confusion is the broadcasting and advertising industries, Statistics Canada and the CRTC; the trade-marks are not used for the purposes of section 4 of the Trade-marks Act in communication with its recruits for data collection.

The Court then considered the factors under section 6(5) of the Trade-marks Act, and found that confusion is unlikely, and therefore the allegations of infringement failed. The Court also found no passing off and no depreciation of goodwill. The Court concluded that BBM Canada was only entitled to protection in respect of broadcast measurement services.

Other Industry News

Health Canada has announced the finalization of the Canadian Module 1 Schema Version 2.2. This is meant to accompany the Guidance for Industry: Creation of the Canadian Module 1 Backbone for the implementation of electronic regulatory activities that are compliant with the ICH M2 eCTD specifications.

CIPO has published its Business Strategy 2012-2017.

The Supreme Court of Canada has announced that it will be releasing its decisions in five copyright cases on Thursday, July 12 at 9:45am. The cases are: Society of Composers, Authors and Music Publishers of Canada et al v. Bell Canada et al. (F.C.) (33800); Entertainment Software Association et al v. Society of Composers, Authors and Music Publishers of Canada (F.C.) (33921); Rogers Communications Inc. et al. v. Society of Composers, Authors and Music Publishers of Canada (F.C.) (33922); Province of Alberta as represented by the Minister of Education et al. v. Canadian Copyright Licensing Agency operating as "Access Copyright" (F.C.) (33888); and Re:Sound v. Motion Picture Theatre Associations of Canada et al. (F.C.) (34210).

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