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.
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.
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).
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.
Specific Questions relating to this article should be addressed directly to the author.
The recent decision in Overstock v. New York Taxation and Finance paved the way for an interesting conclusion on the taxing power of New York State - and by extension, the sales tax that may be applied to many online sales, including sales by Canadian online business into the US market.
On October 9, 2012, six retailers, BEST BUY, COSTCO, GAP, OLD NAVY, GUESS? and WAL-MART, filed a motion in the Superior Court of Québec seeking a declaratory judgement against the "Office québécoise de la langue française".
The Canadian Intellectual Property Office has recently released two practice notices providing guidance for the construction of claims and the examination of computer related inventions.
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Beverley Moore 
