Canada: Trademark Decisions (Intellectual Property Weekly Abstracts Bulletin: Week of May 4, 2015)

Last Updated: May 6 2015
Most Read Contributor in Canada, September 2016

Trademark Decisions 

Double-edged sword for adidas' famous 3-stripe mark as Court finds consumers not likely to be confused by competitor's mark

Adidas AG v. Globe International Nominees Pty Ltd., 2015 FC 443

Adidas appealed from a decision of the Registrar rejecting their opposition of the LEFT STRIPE DESIGN and RIGHT STRIPE DESIGN applications from Globe. These designs are generally intended for footwear, bags clothing and sporting goods. The application was restricted to the likelihood of confusion on footwear only.

It was found that adidas established a well-known, if not famous, reputation in its 3-Stripes Design as applied to footwear in Canada. However, this notoriety worked against adidas, as the Court found that "when a trademark becomes so well known or famous that the public is so familiar with it and readily identifies that trademark as used in the marketplace on goods and/or services, it may be that even as a matter of first impression, any differences between the well-known mark and another party's trademark, as used on the same or similar goods and/or services, may serve to more easily distinguish the other party's trademark and reduce any likelihood of confusion".

On this basis, the Court found the Registrar did not err in finding sufficient dissimilarity between the contested marks, and a finding that there was no reasonable likelihood of confusion.

Certification marks including R.H.N. are all expunged

College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition), 2015 FC 449

The Applicant College sought to expunge five certification marks and two commercial marks held by the Respondent. The five certification marks include R.H.N. REGISTERED HOLISTIC NUTRITIONIST and variations all including R.H.N. The commercial marks are R.H.N. and R.H.N. AND DESIGN. The Respondent agreed to expunge the two commercial marks.

The Court found three of the certification marks to be clearly descriptive, but not the mark R.H.N. on its own. Without the descriptive text to accompany the mark, it was held that a consumer would not likely know what the letters meant.

All of the certification marks were found to be deceptively misdescriptive, by misleading consumers to believe that the associated services are subject to governmental authority or approval through the inclusion of the word "registered". The marks were not saved by any finding that the marks had acquired distinctiveness. Additional arguments were also made, but this was sufficient for the Court to order all of the marks to be struck from the Register.

Industrial Design Decisions

Federal Court of Appeal clarifies the standard of review for an appeal of a discretionary interlocutory order

Imperial Manufacturing Group Inc. v. Decor Grates Incorporated, 2015 FCA 100

This is a lawsuit for infringement of industrial designs. Imperial had appealed from an interlocutory order of the Federal Court (2013 FC 1189, unreported) refusing to order particulars of certain allegations in the respondent's statement of claim. The appeal was dismissed.

The Court of Appeal found that there should only be one standard of review of a discretionary interlocutory order. Prior jurisprudence had suggested that "giving insufficient weight to relevant factors" could also be considered, but the Court stated that Housen v. Nikolaisen, 2002 SCC 33, should be used. Therefore, the Court held that "absent error on a question of law or an extricable legal principle, intervention is warranted only in cases of palpable and overriding error."

On this standard, the appellants were unable to show a palpable and overriding error was made.

Interlocutory Appeals

Appeal of order to produce documents found to be moot once the documents are produced

Sherman v. Pfizer Canada Inc., 2015 FCA 107

In this litigation, a Prothonotary had ordered production of certain documents, but that order was subsequently set aside as moot as most of the documents had been produced (2014 FC 825, unreported). The appellants sought to overturn the Prothonotary's order, but did not seek a stay of the finding of mootness. By the time of the hearing of the appeal, all the documents had been disclosed and production pursuant to the order was complete.

In finding the appeal moot, the Federal Court had decided that there was no longer an adversarial relationship between the parties as the order had been substantially complied with. The Court of Appeal agreed. Although the appellants tried to distinguish the prior jurisprudence by arguing the production was made by a third-party, the Court was not moved. Furthermore, by producing the documents under cover of a "without prejudice" letter to its right to appeal was not found to be determinative. In the future, the Court encouraged parties to seek an agreement allowing an appeal to proceed notwithstanding full or partial compliance with a production order.

Other Industry News

Supreme Court Justice Rothstein is retiring

Supreme Court Justice Rothstein will be retiring effective August 31, 2015. 

Canada remains on the US Watch List for intellectual property

Canada remains on the US Watch list for intellectual property rights protection and enforcement for 2015. Issues include the United States' desire for Canada to fully implement the WIPO Internet Treaties, the desire for Canada to address the lack of an appeal in PM(NOC) proceedings and the "promise" of the patent utility standard.

Edited by Chantal Saunders , Beverley Moore and Adrian Howard

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