Canada: Two Appeals Dismissed: Opposition Board Was Reasonable In (1) Refusing The Applicant’s Trademark Application And (2) In Rejecting The Applicant’s Opposition (Intellectual Property Weekly Abstracts Bulletin: Week Of July 14th, 2014)
Allianz Asset Management of America L.P. ("AAMA") and
Allianz Global Investors of America L.P. ("AGIA")
appealed two decisions of the Trade-marks Opposition Board (the
"Board"). The appeals were heard together.
In the first appeal (Re: AAMA), the Board refused
AAMA's application to register the mark INDEX PLUS to be used
in association with financial services. The Board refused
registration of the mark because, in its view, there was a
reasonable probability of confusion between AAMA's mark and
those of the Respondent. The Board further held that there was
nothing in AAMA's mark to distinguish it from the
Respondent's. On appeal, AAMA argued that the Board erred in
its finding of a reasonable likelihood of confusion, and that INDEX
PLUS was not distinctive of AAMA's services.
AAMA argued that the evidence of the Respondent's use was
"inconsistent... because of use of the mark by others."
However, the Board concluded (and the Court agreed) that the
Respondent maintained control over the quality and character of the
services associated with its mark. On the issue of confusion, the
Court found no error with how the Board applied the test for
confusion and noted that, having regard to the evidence, "the
logic is compelling, if not self-evident". With respect to
distinctiveness, AAMA sought to undermine the distinctiveness of
the Respondent's mark by pointing to third party use. However,
the Court found that the alleged third party use was inadequate as
evidence of the Respondent's mark lacking distinctiveness.
According to the Court, there was no evidence that the use of the
terms containing the word "IndexPlus" undermined the
distinctiveness of the Respondent's mark. The Court clarified
that the "mere existence of the same word in corporate titles,
or indeed as a registered mark in other jurisdictions, does not
establish use in Canada by third parties sufficient to defeat
distinctiveness." On these bases, AAMA's application for
judicial review was dismissed.
In the second appeal (Re: AGIA), the Board rejected
AGIA's opposition to the registration of the mark INDEX PLUS
INCOME FUND by the Respondent. The Board found that AGIA failed to
meet its evidentiary burden regarding its opposition based on (1)
disputing the date that the mark was first used, (2) the mark
lacking distinctiveness, and (3) the mark being clearly descriptive
of the character or quality of its products or services. The Court
noted that AGIA had to succeed on each of its three grounds of
appeal in order to have the decision set aside. However, the Court
found the Board's decision reasonable on all three grounds and
thus, AGIA's application for judicial review was dismissed.
reported previously, on January 28, 2014, Health Canada
announced that the government had begun a nation-wide consultation
on ways to improve nutritional information on food labels. This
week, based on that consultation, Health Canada has announced proposed changes to the information
on food labels. Health Canada will conduct further consultations to
gather information about what Canadians think about the new
proposed labels, including changes to the Nutrition Facts Table, new serving size Guidelines, and a Fact Sheet on sugar content. The public may
participate in theonline consultation from now until September
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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