A recent decision of The Federal Court considered the
scope of protection of a famous design mark.
Globe International Nominees Pty Ltd. ("Globe") filed
two trademark applications referred to by the Trademarks Office as
Left Stripe Design and Right Stripe Design ("Globe
Marks") as shown below:
for use in association with, among other things, footwear,
namely shoes, skateboard shoes, casual shoes, athletic shoes, beach
shoes, thonged and strapped sandals, sneakers, boots, slippers.
Adidas AG ("Adidas") opposed the applications on a
number of grounds, which turned on a determination whether the
applied-for trademarks were confusing with a number of trademark
applications and registrations owned by Adidas for its 3-Stripes
Design. The design shown below is representative of Adidas
The Trademarks Opposition Board dismissed the oppositions
primarily on the basis that there was not a sufficient degree of
resemblance between Adidas 3-Stripes Design and Globe Marks.
Adidas appealed from the Board's decision to the Federal
Court and in particular the determination that there was
dissimilarity in the overall appearance of the respective marks.
They argued that the hearing officer did not properly consider the
overall degree of resemblance between the representative marks by
failing to give sufficient consideration to how the marks appeared
on footwear. This is how the average consumer actually sees the
The judge acknowledged that Globe bore the legal onus of
establishing, on the balance of probabilities, that its
applications complied with the requirements of the Act. There was
an evidential burden on Adidas to adduce sufficient evidence from
which it could reasonably be concluded that the facts alleged to
support each ground of opposition existed.
On reviewing the evidence before the Board the judge said that
there was no question that Adidas had established a very
well-known, if not famous, reputation relating to its 3-Stripes
Design as applied to footwear in Canada.
The question to be answered was whether the public would likely
be confused, not whether one party may gain and the other lose as a
result of both parties using their respective marks in the
marketplace. More importantly, will the average consumer, as a
matter of first impression on seeing the Globe Marks on footwear in
view of his or her general recollection of the Adidas 3-Stripes
Designs on footwear, be likely to be confused and think that the
Globe Marks are the Adidas 3-Stripes Designs of which he/she only
had a general recollection.
The judge found that the hearing officer's conclusion was
reasonable and correct in finding that there was a sufficient
difference between the Adidas 3-Stripe Design and the Globe Marks
to find no likelihood of confusion. While the marks should be
considered as they are or may be seen in actual ordinary use in the
Canadian marketplace, they should not be viewed as side by side
samples presented in court.
Notwithstanding that notoriety and fame of the Adidas 3-Stripe
Design the scope of protection of the design did not result in a
finding of a likelihood of confusion with the Globe Marks.
The judge said that fame and notoriety associated with a
trademark can be a double-edged sword for the trademark owner. On
the one hand an enhanced reputation associated with a mark may
allow a trademark owner extended protection beyond the specific
goods and services covered by the registration. On the other hand,
when a trademark becomes well-known or famous the differences
between the well-known mark and the other mark may serve to
distinguish one mark from another and reduce any prospect of
The judge's comments about fame and notoriety may not sit to
well with brand owners. It may have been fairer to say that the
fame of the Adidas 3-Stripes Design closely relates the fact that
there are three stripes which is a significant element of the
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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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