Adidas, Veuve Clicquot, Barbie... When is a mark considered
"famous" in Canada, and do famous marks enjoy special
protection? A handful of Canadian cases have outlined the
court's treatment of well-known brands:
Sure, Barbie is famous... but not "trump-card"
famous. That was the conclusion of the court in Mattel, Inc v
3894207 Canada Inc., when Mattel raised a challenged that the
mark BARBIE used in connection with "restaurant services"
would lead consumers to make an inference that the restaurant was
affiliated with Mattel's famous BARBIE doll mark.
Canadian Courts will not automatically presume that there will be
confusion just because one mark is famous. As the Federal Court in
Mattel phrased it, "the fame of the mark could not act as a
marketing trump card such that the other factors are thereby
obliterated." Canadian courts will assess all of the
surrounding circumstances to determine confusion. In Mattel, they
considered the restaurant services to be distinguishable from
Mattel's famous doll.
The owner of the famous luxury brand VEUVE CLICQUOT encountered
similar difficulties in its infringement claim against a purveyor
of "mid-priced women's wear" being sold under the
brand CLIQUOT in Quebec. In Veuve Clicquot Ponsardin v
Boutiques Cliquot Ltée., Veuve Clicquot argued that the
association with – sniff – mid-priced apparel
was damaging its carefully managed reputation. In an interesting
turn of phrase from the decision, the Supreme Court of Canada noted
that the champagne maker "has been building its fine
reputation with the drinking classes since before the French
Revolution." The role of champagne "drinking
classes" as a catalyst for the French Revolution is perhaps a
topic for a separate article. In any event, the Court did not
find any evidence that the VEUVE CLICQUOT brand image was
tarnished, or that the goodwill was otherwise devalued or diluted.
The infringement claim was dismissed, leaving the CLIQUOT
women's wear shops free to continue business.
In a more recent case, shoemaker Adidas challenged a
competitor's registration of a two-stripe design for shoes.
Adidas complained that the two-stripe design was confusing with its
own three-stripe design. In Adidas AG v. Globe International
Nominees Pty Ltd., the Federal Court conceded that "the
adidas 3-Stripes Design is well-known, if not famous, in Canada and
internationally." However, in deciding that the two-stripe
mark was not confusing with the Adidas 3-stripe design, the Court
sounded a cautionary note for owners of famous brands:
"Fame and notoriety associated with a
trademark can be a double-edged sword for a trademark owner. On the
one hand, an enhanced reputation may provide the owner with
extended protection for the trademark beyond goods and/or services
covered by a registration for the marks ... On the other hand, 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
Put another way, a mark can be so well-known to consumers that
small differences in a competing mark will enable consumers to
distinguish between the two marks.
Get advice on trade-mark protection and infringement from Field
Law's experienced trademark team.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).