Is the sign outside your Quebec business an English-only trademark? Time to add some French

Gayle Noble, Catherine Jenner and Tania Djerrahian - 

Previously-announced amendments to the regulations  under the  Charter of the French Language (the Charter) regarding exterior signs and posters have been adopted (Amended Regulations)  and are coming into force on November 24, 2016 (in the same form as discussed in our previous article). The Amended Regulations are intended to ensure the presence of French on or near exterior commercial signs and posters that display trademarks exclusively in a language other than French. The Office québécois de la langue française (the OQLF), the body that administers the Charter, has provided guidance on the implementation of the requirements of the new regulations through two new publications: Affichage des marques de commerce and Le français, langue du travail, du commerce et des affaires au Québec.

The Amended Regulations permit businesses to maintain the integrity of their non-French-only trademarks while requiring a "sufficient presence of French" on the sign/poster or nearby.  The main requirements of the Amended Regulations, as discussed in more detail our previous article, are as follows:

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Changes in distribution models may affect trademark rights

Justine Whitehead and Hilary Furness - 

In Canada, and most countries around the world, trademarks which are not being used in association with the goods and services with which the marks were registered are vulnerable to expungement for non-use.  In Canada, challenges can be brought under section 45 of Trade-marks Act, which provides for summary expungement of a trademark if, upon request of the Registrar of Trade-marks, a trademark owner is unable to provide evidence of use of the trademark in Canada during the previous three years, in the normal course of trade and in association with the goods and/or services set out in the registration.  This expungement can only be avoided if the owner proves special circumstances that justify temporary non-use of the trademark.

Technological changes are revolutionizing the methods by which certain goods and services are sold to consumers. At one time, products such as books, music recordings and computer games could only be sold to consumers as tangible items.  Now, of course, these items are routinely made available through various electronic means, and in some cases, the business model has moved from distribution of goods to the offering of on-line services.  But what happens to trademark registrations when evolving technology has changed the manner or medium by which the identified goods and services are offered for sale to consumers?  

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Signs with registered English only trademarks in Québec? Not a problem if you have sufficient and visible French somewhere close by

Gayle Noble, Catherine Jenner and Tania Djerrahian -

On Wednesday May 4, 2016, the Québec Minister of Culture and Communications and Minister Responsible for the Protection and Promotion of the French Language, Hélène David, introduced draft amendments (the Proposed Amendments) to certain regulations under the Charter of the French Language (the Charter) to ensure the presence of French where commercial signs and posters display trademarks exclusively in a language other than French. This article provides some background relating to the Proposed Amendments as well as a summary of some of the key provisions.

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Interlocutory Injunction in Trade-mark Infringement Action Upheld by Federal Court of Appeal

Justine Whitehead and Komil Joshi -

On April 23, 2015, in Jamieson Laboratories Ltd. v. Reckitt Benckiser LLC and Reckitt Benckiser (Canada) Limited 2015 FCA 104, the Federal Court of Appeal upheld a decision granting an interlocutory injunction against a defendant in a trademark infringement suit.  Successful motions for such interlocutory relief are relatively rare in the Federal Court, and this case provides some interesting insight into the type of evidence that might allow a moving party to obtain such relief.

Background Facts

The facts of the case have their origin in activities undertaken in 2012, when Reckitt Benckiser LLC and Reckitt Benckiser (Canada) Limited (Reckitt) decided to enter the North American market in respect of supplements containing omega-3 fatty acids.  In pursuit of this goal, Reckitt engaged both Schiff International, Inc. (Schiff) and Jamieson Laboratories Ltd. (Jamieson) in acquisition talks.

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Use of English-only Trade-marks on store signs OK'd by Quebec Superior Court

Yury Smagorinsky and Catherine Jenner -

On April 9, 2014, the Quebec Superior Court issued its 55-page decision in Magasins Best Buy ltée c. Québec (Procureur general). The action had been initiated by certain major retailers including Wal-Mart, Best Buy, Guess, Gap, Old Navy, Guess, Walmart, Toys "R" Us and Curves against the Office québecois de la langue française (OQLF), the provincial Quebec government organization that is responsible for ensuring compliance with Quebec’s French language laws. The action sought to recognize the retailers’ right to display English-only trade-marks on public storefront signage in Quebec, a right the OQLF was contesting.

In Quebec, Bill 101, the Charter of the French Language (Charter), requires that the language on public signs be predominantly in French. Another rule in the Charter requires that businesses operating in Quebec use a French version of their firm name whenever the use of French is mandated. A firm name displayed on the sign may include words in a language other than French, provided that the non-French term(s) is accompanied by a generic French term. Examples of generic French terms used are "Magasin" (store) or "Restaurant". 

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Bringing trademark infringement proceeding by application may have effect on damage award

On November 26, 2013, the Federal Court issued its decision in Trans-High Corporation v. Hightimes Smokeshop and Gifts Inc. The proceeding, which claimed trademark infringement, passing-off and depreciation of goodwill, was brought by the applicant, Trans-High Corporation (Trans-High) by way of a summary application to the Federal Court.  This option (which sees evidence confined to affidavit evidence, and no rights of discovery) was confirmed to be available by the Federal Court of Appeal in its 2011 decision in BBM Canada v. Research in Motion Limited. The respondent, Hightimes Smokeshop and Gifts Inc. (Hightimes Smokeshop), did not file any submissions in the proceeding or appear at the hearing.

In upholding the claims for trademark infringement and passing-off, the Court found that Hightimes Smokeshop had infringed Trans-High’s trademark “HIGH TIMES”, which has been registered in Canada since 1980 for use in association with magazines.  The Court found that Trans-High had tendered sufficient evidence to show a likelihood of confusion between its use of the mark in association with High Times magazine and website (with a focus on medical and recreational uses of marijuana) and Hightimes Smokeshop’s retail sale of marijuana-related paraphernalia and merchandise.  However, the Court declined to find depreciation of goodwill, citing insufficient evidence.   In particular, the Court noted that the evidence of volume of sales and depth of market penetration of magazines and related wares sold by Trans-High in Canada was limited, as was evidence in respect of the extent of advertising and publicity accorded to Trans-High’s HIGH TIMES trade-mark.  Further, there was little evidence of the degree of inherent or acquired distinctiveness of the HIGH TIMES trade-mark, and the products associated with the mark were confined to a specialized channel of trade.

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Ahoy Mateys! Judge scuppers suit against Pirate Joe's

On Oct 2, 2013, a Washington District Court judge dismissed a trademark infringement lawsuit against Vancouver businessman, Michael Hallatt. Powerful U.S. discount grocer Trader Joe’s had filed the suit, irked by Hallatt’s business of reselling its products in his cheekily-named Vancouver shop, Pirate Joe’s. Trader Joe’s has no Canadian locations, so Hallatt made frequent buying trips to its U.S. outlets. There he paid retail prices, then declared the goods at the border, marked them up and sold them in his store.

In its complaint, Trader Joe’s made numerous allegations under the Lanham Act (the U.S. federal trademark legislation), including trademark infringement, false endorsement, unfair competition, trademark dilution and false advertising. It also alleged deceptive business practices and trademark dilution under state law. Trader Joe’s contended that Pirate Joe’s intentionally copied the appearance of its stores and used its product images in order to confuse customers and pass as an authorized Trader Joe’s retailer. This, it argued, would damage the Trader Joe’s brand and dilute the source-designating ability of its trademarks, as well as deter Canadian customers from traveling to the United States to purchase its products.

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Applicants face significant hurdles in registering flavour and scent trademarks in the U.S.

Justine Whitehead  -

In a recent blog post, we noted that the new Bill C-56 would significantly expand the scope of a registrable trade-mark in Canada.  If passed, the list of items that could potentially be registered a trade-mark would include “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.”

However, the nature of the evidence required to prove registrability is deliberately left vague in the proposed revisions, and a revised s. 32 would allow the Registrar to ask for any evidence deemed necessary to establish that a trade-mark is distinctive at the date of the filing of the application for registration. While Canadian standards would, of course, have to be developed, a recent precedential decision of the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) is of interest, as an illustration of the difficulties in proving the requisite acquired distinctiveness to register a scent or flavour trademark.

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An overview of Bill C-56: Combatting Counterfeit Products Act

Justine Whitehead -

On March 1, 2013, Bill C-56 was introduced in the House of Commons. The majority of Bill C-56 is directed to amendments to the Copyright Act (CA) and the Trade-marks Act (TMA) to add new tools to fight commercial counterfeiting and piracy activities. An overview of these proposed tools, which include new civil and criminal remedies, and new powers for customs officers in respect of counterfeit and pirated goods, is set out below.

New Criminal Offences

Bill C-56 would expand the criminal provisions of the CA and introduce criminal offenses under the TMA. For the CA, Bill C-56 would make it an offence to possess an infringing copy of a work for the purposes of sale, rental, and/or distribution for the purpose of trade or exhibition in public by way of trade. It would also make it an offence to export (or attempt to export) an infringing copy of a copyrighted work for the purpose of sale or rental. (The CA currently already prohibits import in Canada of any infringing copies of a copyrighted work for sale or rental.)

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Bill C-56 Tacks on significant amendments to Trade-Marks Act

Justine Whitehead -

On March 1, 2013, Bill C-56 was introduced in the House of Commons. As might be expected from the short title of the proposed act (Combatting Counterfeit Products Act), the majority of Bill C-56 is directed to amendments to the Copyright Act and the Trade-marks Act to add new civil and criminal remedies to curtail commercial counterfeiting activities. Update: The details of these new provisions are reviewed here.

 While the essence of Bill C-56 is clearly directed to counterfeiting, the legislation also proposes significant amendments to the Trade-marks Act (the TMA) that are unrelated to counterfeiting activities. The most significant of these other changes are highlighted below.

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ICANN publishes applications for new generic top-level domain names

Justine Whitehead and Anne MacIsaac -

On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) published a list of the 1,930 applications for new generic Top-Level Domain Names (gTLDs) it had received during its recent January to May 2012 application period. The influx of applications was due to new rules approved in June 2011 by ICANN, the body which oversees the registration and coordination of the Internet’s system of unique domain names. The rules transform naming conventions for Internet Web sites by removing restrictions on allowable suffixes for domain names. Currently, Web site domain names end in either a country code (such as .ca or .uk) or in one of only twenty-two gTLDs, such as “.com” or “.org”.  Now organizations can apply to register any character string as a gTLD. This will allow companies to register their brands as gTLDs or to select other unique domain names for marketing purposes, drastically increasing the number of available domains. Applications were received from sixty countries, including sixty-six requests to register geographic names as gTLDs, and 116 requests for strings in non-Roman characters (called Internationalized Domain Names, or IDNs), such as Chinese, Arabic, and Cyrillic.

ICANN will consider a number of factors when reviewing the applications. For example, they will evaluate whether a proposed gTLD is confusingly similar to an existing gTLD, to a reserved character string or to another proposed gTLD; whether it is a geographic name requiring government support; and whether it contributes to domain name system (DNS) instability. They will also look at whether the applicant possesses adequate technical, operational and financial resources with respect to the registry services they will be required to provide.

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Lady Gaga and fansite caught in a bad romance

Stuart McCormack and Lindsay Gwyer -

A string of number one hits and worldwide notoriety weren’t enough to bring Lady Gaga success in a domain name dispute over the use of her stage name. Earlier this fall Lady Gaga, whose real name is Stefani Germanotta, failed to convince an arbitration panel that the domain name was being used illegitimately by one of the singer’s fan sites.

Domain names are allocated through accredited registries that use a central registry system overseen by the Internet Corporation for Assigned Names and Numbers (ICANN). Disputes over domain names are resolved in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the Policy). In order for a domain name to be cancelled or ordered to be transferred under the Policy a complainant must show that: the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.

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Missing the Bull's-Eye - TARGET fails to get interlocutory injunction against use of registered trade-mark

Geoffrey North and Solene Murphy -

Target Brands Inc. v. Fairweather Ltd. 2011 FC 758

A recent decision by the Federal Court showed once again that there is a high threshold for the granting of interlocutory injunctions.

Pending final disposition of this action, Target sought an interlocutory injunction to restrain the Defendants (Fairweather) from operating a retail store in association with a trade-mark or trade name comprising TARGET or a bull’s-eye design, and from displaying, advertising or using the word TARGET or a bull’s-eye design to direct public attention to Fairweather’s business so as to cause confusion with Target’s business.  

Target, however, failed to convince the Court both that it would suffer irreparable harm if the injunction was not granted and that the balance of convenience favoured the granting of an injunction, and the motion was accordingly dismissed.

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Federal Court confirms that it will not set aside default judgment lightly

A recent decision of the Federal Court emphasizes that defendants bear a significant burden in setting aside default judgments that arise because the  defendant has simply failed to file a statement of defence within the allotted period of time.

In Molson Canada 2005 (An Ontario General Partnership) and Coors Brewing Company v. Drake J. Beachamp, the defendant was the owner and operator of a leather retail business, selling purses, belts, belt buckles and wallets from kiosks at shopping malls and special events.  Molson commenced an action against the defendant, claiming that he sold counterfeit product bearing its unauthorized trademark.  The defendant failed to file a statement of defence, and default judgment was accordingly granted against him.  The judgment ordered the defendant to deliver up all counterfeit goods, and also ordered that general damages, punitive damages, and costs be paid to Molson.

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CIPO issues new Practice Notice for section 45 (summary cancellation) proceedings

On July 7, 2009, the Canadian Intellectual Property Office (CIPO) issued a new Practice Notice for section 45 (summary cancellation) proceedings, which will come into effect on September 14, 2009.  Summary cancellation proceedings are intended to clear the Trade-marks Register of "dead wood":  that is, trademarks that are no longer being used by their owners. The Practice Notice emphasizes that section 45 proceedings are not intended to replace inter partes expungement proceedings under section 57 of the Trade-marks Act, where issues such as ownership, distinctiveness or abandonment of a registered trademark may be raised before the Federal Court of Canada.

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Quebec civil code provides additional support in intellectual property dispute

The Superior Court of Quebec recently granted an interim injunction preventing the continued sale of Husqvarna Corp. (Husqvarna) outdoor power tools by a former authorized dealer whose authorization had been revoked. Although the manufacturer's motion for the injunction included grounds based on the federal Trade-marks Act, the Court granted the injunction on the sole basis of Quebec principles of civil responsibility, namely article 1457 of the Civil Code of Quebec (CCQ), which article acts as a functional equivalent to the common-law tort of passing off.

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Ontario Court refuses jurisdiction over non-resident trademark licensor

In October 2008, the Ontario Superior Court of Justice confirmed that a foreign entity that merely licenses its Canadian trademarks in Ontario is not sufficiently connected to Ontario for an Ontario court to assume jurisdiction over the licensor.

The case of Charron v. Bel Air Travel Group Ltd. [(2008) 92 O.R. (3d) 608] arises from the unfortunate death of an Ontario man, which occurred while he was scuba diving at an all-inclusive vacation resort in Cuba.  His wife and children brought the claim in Ontario against numerous defendants, including the travel agent and tour operator, which were based in Ontario (the Canadian defendants); the owner of the Cuban resort and several employees of the resort (the Cuban defendants); the operator of the Cuban resort, which arranged to market the resort in Canada (Operator Defendant); and the licensor of the trademarks under which the resort operated (Licensor Defendant). Both  the Operator Defendant and the Licensor Defendant  are companies incorporated in the Cayman Islands.

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New TMOB Practice Notice comes into effect March 31, 2009

The Canadian Trade-marks Opposition Board (TMOB) has announced that as of March 31, 2009, it will be implementing new guidelines for practice in trademark opposition proceedings (the Practice Notice). The new Practice Notice introduces the availability of a nine-month cooling-off period to allow parties to pursue settlement or mediation, as well as changes to maximum benchmarks for extensions of time during the opposition process. The Practice Notice also  allows parties to expedite the hearing of their case by requesting  that it be scheduled and heard on short notice (approximately two days) in the event of a cancellation of a previously scheduled hearing.

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Canada's Federal Court refuses to adopt American doctrine of "fraud on the trademarks office"

On January 8, 2009, the Federal Court of Canada issued its decision in Parfums de Coeur, Ltd. v. Christopher Asta (2009 FC 21). The Court refused to expunge a trademark registration obtained through a Declaration of Use that contained false information. This outcome highlights a significant difference in the consequences arising from misstatements on a Declaration of Use under Canadian and American law.

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The impact of new material contract filing requirements on existing licenses to use patents or trade name

As a consequence of the new amendments to National Instrument 51-102 Continuous Disclosure Obligations coming into force on March 17, 2008, a reporting issuer will have to disclose on SEDAR any new or existing “franchise or licence or other agreement to use a patent, formula, trade secret, process or trade name” not entered into in the ordinary course of business. Further information about this amendment can be found in Stikeman Elliott LLP’s article on “New material contract filing requirements in force March 17, 2008 and impact on existing material contracts”.