(For a discussion about official marks and their interplay with
regular trade-marks, please see
this previous post on our blog.)
The facts leading up to the Decision are straightforward: in
2013, Starbucks (HK) Limited ("Starbucks") filed an
application to register the trade-mark NOW TV & Design. During
prosecution, an official mark for NOWTV, owned by Trinity
Television Inc. ("Trinity"), was cited against the
Starbucks application. In response, Starbucks commenced a judicial
review application against the Registrar's decision –
made in June 2001 – to give public notice of the adoption and
use of NOWTV as an official mark.
In the result, the Court quashed the Registrar's decision to
grant NOWTV as an official mark to Trinity, clearing the path for
Starbucks to move ahead with its application. Of particular
interest were the following points made by the Court:
- the law is now clear that status as a charity is, in and of
itself, insufficient to constitute an entity as a public authority;
- it would be patently unfair and completely contrary to the
interest of justice if an entity that is not a public authority was
permitted to enjoy the exceptional rights conferred on the holder
of an official mark.
As a potential point of distinction when it comes to the
precedential value of this case, it is noteworthy that Trinity did
not participate in the judicial review application; indeed, the
Court was advised by counsel for Starbucks that a former president
and director of Trinity had advised that Trinity had sold its
business to Rogers in 2005. That being said, given how easily the
Court arrived at the conclusion that charitable status does not
necessarily equate to being a public authority, it seems unlikely
that Trinity's participation would have changed the result.
From a practical perspective, the Decision serves as a timely
reminder to trade-mark applicants that, while robust, official
marks can nevertheless be challenged and removed under the right
circumstances. Where an official mark has been cited during
prosecution of a regular trade-mark application, it is important to
carefully scrutinize the official mark, in order to ascertain any
potential vulnerabilities that could lead to its removal.
On the other hand, the Decision is also a reminder to charities
holding official marks that those official marks may potentially be
at risk, if challenged via judicial review. To mitigate that risk,
those charities ought to consider filing regular applications to
register their trade-marks.
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.
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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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