In Canada, the mere fame of a famous trade mark will not protect it from registration by another company filing in respect of dissimilar goods or services. In coming to its conclusion, the Canadian Supreme Court reiterated that this is a factual question to be assessed in each case, and held that there was no likelihood of confusion between the marks even though they were similar in appearance.
This obviously has important ramifications for trade mark infringement cases involving famous marks in Canada as it clearly indicates that the mere fact that a trade mark is famous is not enough to establish confusion for a good or service in another class. (Click here for the text of section 20 of the Canadian Trade Marks Act.)
Registrability of ‘famous’ marks for dissimilar goods
(1) The Inherent Distinctiveness of the Trade-marks or Trade-names and the Extent to Which They Have Become Known;
(2) The Length of Time the Trade-marks and Trade-names Have Been in Use;
(3) The Nature of the Wares, Services or Business;
(4) The Nature of the Trade;
(5) The Degree of Resemblance Between the Trade-marks or Trade-names in Appearance or Sound or in the Ideas Suggested by Them; and
(6) Other Surrounding Circumstances.
The fame of the mark is merely a ‘surrounding circumstance’ to be taken into account along with all of the other factors.
The proprietor of the chain of ‘Barbie’s Restaurants’ had sought trade-mark protection for ‘Barbie’s’. Mattel opposed the registration on the grounds of likely confusion with ‘Barbie’ in respect of its doll and related products due to their fame:
"The appellant opposes the respondent’s application to register its "Barbie’s" trademark and a related design in association with "restaurant services, take-out services, catering and banquet services" on the basis that some marks are so famous that "marks such as . . . BARBIE may not now be used in Canada on most consumer wares and services without the average consumer being led to infer the existence of a trade connection with the owners of these famous brands".
The Trade-marks Opposition Board of the Canadian Intellectual Property Office had accepted the respondent’s argument that its use of the "Barbie" name since 1992 for its chain of Montreal restaurants was unlikely to create confusion with the appellant’s ‘Barbie’ trade-mark. The Board held that ‘Barbie’s’ fame was restricted to dolls and accessories for them.
The Federal Court, the Federal Court of Appeal and now the Supreme Court have upheld the Board’s decision.
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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