The Kermode bear is a rare species of
Canadian black bear, native to the beautiful province of British
The recent case of City of Terrace v Canadian Pacific
Phytoplankton Ltd., 2013 TMOB 156 brings the iconic animal
into the realm of trade-mark law. The City of Terrace, B.C. is the
owner of the official mark KERMODE BEAR and the City opposed the
application for the KERMODE WARRIOR design mark (at left),
applied for by Canadian Pacific Phytoplankton Ltd. An official mark
is, in its own turn, a rare species of Canadian trade-mark which,
under Section 9 of the Trade-marks Act, is accorded
special rights and remedies. Public authorities such as governments
and universities can give notice of the adoption of an
"official mark", after which it cannot be used or
registered as a trade-mark by others. Think of government coats of
arms, university names and crests, that sort of thing. In this
case, the official mark claimed by the City of Terrace is comprised
of the words KERMODE BEAR, and the City opposed
the trade-mark KERMODE WARRIOR for various consumer products,
such as dietary supplements, beverages and shampoos.
The Court said: "As stated in section 9(1)(n)(iii) of the
Act, the test to be applied is whether or not the Applicant's
mark consists of, or so nearly resembles as to be likely to be
mistaken for, the official mark. The case law has interpreted
"consisting of" in section 9 to mean "identical
to". Regarding the resemblance test set out in section 9, the
case law indicates that it should be applied as a matter of first
impression and imperfect recollection..."
The Court came to the conclusion that the marks were not
identical, and the opposition was rejected.
In this case, the official marks did not prevail, and the
KERMODE WARRIOR applications were allowed to proceed.
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