Decision of Re-examination Board Affirmed on Standard of
Reasonableness Newco Tank Corp. v. Canada (Attorney
General), 2015 FCA 47 The Re-examination Board found the Claims of a patent obvious in
light of prior art submitted by the person requesting
re-examination. In so holding, the Board made a finding that the
state of the common general knowledge included the information
presented as background information in the patent. The Court reviewed the decision of the Board on the standard of
reasonableness and upheld the decision of the Board. The Court of
Appeal agreed that the Court chose the correct standard of review
and dismissed the appeal. Use of Trademarks in Metatags Found Not to be Copyright
or Trademark Infringement Red Label Vacations Inc. (redtag.ca) v. 411
Travel Buys Limited (411travelbuys.ca), 2015 FC 19 The Plaintiff has three registered trademarks:
"redtag.ca", "redtag.ca vacations", and
"Shop. Compare. Payless!! Guaranteed". The Defendant
company was incorporated in 2008, and went online in 2009. The
Court noted that the owner of the Plaintiff bought the domain name
"411travelbuys.ca" to sell to the Defendant for a profit.
The Defendants' website contained the terms "red tag
vacations" and "shop, compare & payless" in the
metatags, which was not visible to customers visiting the 411
Travel Buys website. The Plaintiff contacted the Defendant in March
2009, advised of the allegedly infringing content and the content
was removed. The Plaintiff brought the within action for copyright
infringement, trademark infringement, passing off and depreciation
of goodwill. The Defendant filed a defence and counterclaim for
passing off against the Plaintiff. After reviewing the evidence of all the witnesses, the Court
noted that "there is no dispute that in this case, the
Defendant 411 Travel Buys copied the Plaintiff's
metatags". However, the Court ultimately found "[w]hile
in some cases there may be sufficient originality in metatags to
attract copyright protection when viewed as a whole, the substance
of the metatags asserted by the Plaintiff in this case does not
meet the threshold required to acquire copyright protection in
Canada." The Court found that there was little evidence of a
sufficient degree of skill and judgment in creating the metatags.
The Court also noted that the evidence established that it was
innocent infringement if any infringement had occurred. In terms of trademarks and trade names, the Court found that
goodwill did exist in two of the three trademarks. The Court also
found that the use of the trademarks in the metatags of the
Defendants did result in redirected traffic. However, the Court
found "use of a competitor's trademark or trade name in
metatags does not, by itself, constitute a basis for a likelihood
of confusion, because the consumer is still free to choose and
purchase the goods or services from the website he or she initially
searched for." The Court found no passing off, no trademark
infringement and no depreciation of goodwill. The action was
dismissed. Registered word mark LA PIZZAIOLLE found to be confusing
with proposed PIZZAIOLO and Design mark Restaurants La Pizzaiolle Inc. v. Pizzaiolo
Restaurants Inc., 2015 FC 240 The Applicant had opposed the registration of two marks,
PIZZAIOLO and Design and PIZZAIOLO. The Registrar had refused the
word mark and allowed the design mark as used with certain wares
and services. This is an appeal of the Registrar's decision
under section 56 of the Trademarks Act. Both parties own pizzerias. The Applicant has owned LA
PIZZAIOLLE in Montreal since the 1980s. The respondent has owned
PIZZAIOLO, in Toronto since the 2000s. The respondent sought to
register the challenged marks in 2008, and the applicant opposed,
claiming confusion with its own registered mark LA PIZZAIOLLE. The Court held the Registrar erred in failing to take into
account, in his analysis of the likelihood of confusion, the
potential uses that the registration of the registered word mark LA
PIZZAIOLLE (or its variant PIZZAIOLLE) confers upon the applicant.
Following Masterpiece, the Court found the registered
word mark permitted the Applicant to use the words LA PIZZAIOLLE
"in any size, and with any style of lettering, colour or
design", and, therefore, to depict these words in an identical
or very similar manner to that of the design mark PIZZAIOLO. The appeal was allowed and the Registrar's decision
dismissing the applicant's opposition to the registration of
the Graphic Mark was set aside. Health Canada has published a Notice with
respect to Therapeutic Products with Paediatric Labelling. 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.
Patent Cases
Trademark Cases
Other Industry News