Another Win for MBM
Another Win for MBM – Federal Court of Canada Overturns Trademark Opposition Board and Recognizes the Overlap Between Alcohol and Tobacco (Cigars)
EMPRESSA CUBANA DEL TABACO dba CUBATABACO et al. v. TEQUILA CUERVO, S.A DE C.V. (2013) FC 1010
Scott Miller and Jonathan Roch, October 8, 2013
Factual Overview
Tequila Cuervo filed a Canadian trade-mark application for the trademark LAZARO COHIBA, disclaiming the word LAZARO. The application was based on proposed use for “alcoholic beverages, namely rum”. The application was opposed by Cubatabaco on grounds including that LAZARO COHIBA was not registrable based on the likelihood of confusion with the COHIBA registered trademarks for cigars and tobacco. On September 30, 2008, the Trademark Opposition Board concluded that “in view of the differences between the wares and trades of the parties and the fact that the opponents have not established an extensive reputation for their marks “ that the LAZARO COHIBA trademark was registrable.
Following the Trademark Opposition Board decision MBM was appointed as counsel to Cubatabaco. An appeal of the Board’s decision was filed by application to the Federal Court. The Federal Court overturned the Board’s decision and refused the registration of the LAZARO COHIBA trademark application.
Fame (Extensive Reputation) Demonstrating Without a Survey
MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by filing new evidence to establish that COHIBA has been referenced in films, television, music and other media, such as print magazines distributed in the United States and Canada. The fame of the COHIBA trademarks was established not by an expensive survey but by creatively revealing that pop media has used COHIBA cigars to demonstrate social status and wealth. The decision is equally important because it recognizes that for some iconic brands, personal ownership or use of the product is not essential to the awareness of the trademark. Click here to view a copy of the decision.
Conclusion
There are multiple ways for trademark professionals to establish confusion. While in some incidents expensive surveys may be necessary that will not always be the case.
Please contact Scott Miller or Jonathan Roch for more information.
New Powers to Combat Counterfeit Products in Canada Likely Around the Corner
New Powers to Combat Counterfeit Products in Canada Likely Around the Corner
Scott Miller, October 30th, 2013
On October 28, 2013 the Government of Canada introduced bill C-8 (Combating Counterfeit Products Act) which, if passed, will significantly improve the fight against counterfeit products in Canada. The bill also includes substantial changes to the Canadian Trade-marks Act. This bill was introduced in the previous session of Parliament but did not proceed when Parliament was prorogued. The bill has been fast tracked and it is expected that it will become law in some form.
Proposed Changes to Stop Counterfeiting:
Currently, in order to stop the importation of counterfeit goods into Canada, a right-holder must proactively obtain a Court order directing that the alleged infringing materials be detected and detained. The process is costly and requires the right-holder have specific information regarding the importation of the alleged infringing materials.
Under the bill both the Trade-marks Act and Copyright Act will be changed to include provisions where the Canada Boarder Services Agency (CBSA) will have increased power to combat counterfeit goods from entering Canada at markedly less cost to the right-holder. A right-holder can file for a standing 2 year ‘Request for Assistance’ with the CBSA which would enable the CBSA to provide the right-holder with samples of suspect products. The right-holder could then use this information to pursue new remedies under the Trade-marks Act or Copyright Act including both indictable and summary convictions with fines upward of $1,000,000 dollars and/or imprisonment of five years.
Proposed Changes to Trade-mark Law:
The proposed definition of a trade-mark is being considerably broadened to include the following: a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape (currently known as a distinguishing guise), a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.
Under the proposed bill, trade-marks for three-dimensional shapes, a mode of packaging goods, sound, scent, taste, and texture will require evidence of distinctiveness at the date of filing.
Under current Canadian trade-mark law, registration of a proposed use trade-mark application may occur after allowance where a declaration of use is filed for the wares/services actually used. For those wares/services not used, the application dies in association with those unused wares/services. Under the bill, an applicant can file a divisional application for those goods/services not used at the time of filing the declaration of use and claim priority to the original application.
For more information, please contact:
Scott Miller, Partner
Voice: 613.801.1099
Email:
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PMPRB’S INTERPRETATION OF “PATENTEE” OVERLY BROAD
By Claire & Kay Palmer, May28, 2014
Two recent Federal Court decisions considered the definition of a “patentee” in the context of the mandate of the Patented Medicines Prices Review Board (PMPRB).
Section 2 of the Patent Act states that a “patentee” means the person for the time being entitled to the benefit of a patent.
With respect to Patented Medicines, the English version of Section 79(1) of the Patent Act states that a “patentee”, in respect of an invention pertaining to a medicine, means the person for the time being entitled to the benefit of the patent for that invention and includes, where any other person is entitled to exercise any rights in relation to that patent other than under a licence continued by subsection 11(1) of the Patent Act Amendment Act, 1992, that other person in respect of those rights.
In both decisions, Mr. Justice O’Reilly determined that the PMPRB’s conclusion that two manufacturers of generic pharmaceuticals fell within the definition of “patentee” was unreasonable and thus the applications for judicial review of the PMPRB’s decisions were allowed.
Sandoz Canada Inc v. Canada (Attorney General), 2014 FC 501
The generic manufacture Sandoz Canada Inc is a wholly-owned subsidiary of Novartis Canada Inc, which in turn is a subsidiary of Novartis AG. Novartis AG is the owner of a number of relevant patents. Novartis AG provides authorization for Sandoz to enter the market for specific drugs when Novartis AG loses it’s the market exclusivity – i.e. once other generics have entered the market.
The PMBRB found that Sandoz, by virtue of its position as a subsidiary of Novartis, was a “patentee” and therefore its prices within the jurisdiction of the PMPRB. Mr. Justice O’Reilly noted that “Sandoz generally operates in a market where no one holds a monopoly, and no one can take undue advantage of a monopoly position by charging excessive prices.” Mr. Justice O’Reilly further stated that “Sandoz simply does not enjoy the special patent rights that inure to the benefit of the patent holder. Accordingly, Mr. Justice O’Reilly found that the PMPRB’s conclusion that Sandoz is a “patentee” was unreasonable and therefore the PMPRB “does not have jurisdiction to review prices at which Sandoz, a company holding no patents and no monopolies, sells medicines. “
Ratiopharm Inc. v. Canada (Attorney General), 2014 FC 502
The definition of “patentee” was also examined in the Federal Court (FC) decision Ratiopharm Inc. (now Teva Canada Limited) and Attorney General of Canada (2014FC502). Ratiopharm which sells generic drugs in Canada sold a generic equivalent of Ventolin HFA to pharmacies after having purchased it under contract from the patent holder, GlaxoSmithKline Inc. (GSK). Under the contract with Ratiopharm, GSK retained all patent rights to its products. The PMBRB found that Ratiopharm, by virtue of its contract with GSK was a “patentee” and therefore its prices within the jurisdiction of the Board. Mr. Justice O’Reilly disagreed with the PMBRB and found that the PMPRB’s conclusion that Ratiopharm is a “patentee” was unreasonable. Mr. Justice O’Reilly further noted that the PMPRB “does not have jurisdiction to review prices at which Ratiopharm, a company holding no patents and no monopolies, sells medicines” and thus, allowed the application for judicial review of the PMPRB’s decisions.
Interesting aside…
Mr. Justice O’Reilly noted in both decisions that the French version of Section 79(1) “ties the definition of “patentee” more closely to the rights of the patent holder. It is a narrower definition than in the English version, which includes any person entitled to exercise any rights relating to a patent.”
This highlights the critical importance of reviewing both the English and French versions of the legislation when interpreting the statues.
For more information please contact:
Claire Palmer
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Kay Palmer
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Disparaging & Racist vs. Political Correctness – You Choose. And the Washington Redskins Thought the Battle on the Football Field Was Tough!
By Scott Miller, June 18, 2014
The National Football League team, the Washington Redskins lost a fight of Super Bowl proportions today before the U.S. Patent and Trademark Office. The team’s host of registered trademarks dating back to the 60’s were cancelled on the ground that they were disparaging on the date they were registered and as such, should never have been registered.
The ruling does not prevent the team from using the trademarks but means the team loses the benefits of a registered trademark including the ability to sue for trademark infringement. Not surprisingly, the team’s lawyers have already indicated that the decision will be appealed.
In Canada, the Washington Redskins trademark has been registered since 1980. Under the Canadian Trade-marks Act, a trademark which is “scandalous, obscene or immoral” at the date of registration may be held invalid. So the obvious question remains, would a disparaging trademark in the US be considered “scandalous, obscene or Immoral” in Canada? If challenged in Canada, would we be less, equally or more offended than our neighbours to the south?
Unlike in the US, if a mark in Canada is held “scandalous, obscene or immoral” it cannot be used in the country. The Trade-marks Act specifically indicates that such offensive marks cannot be ‘adopted’ which would thus prevent their use. This raises an interesting question if the U.S. Patent and Trademark Office decision is overturned on appeal but the same fight is engaged in Canada with the Canadian court’s ruling against the team. Would the NFL not televise games or sell merchandise in Canada? Perhaps those opposed to the Washington Redskins should think about using Canada to advance their fight.
In all, the appeal(s) in the US will likely dictate the fate of the Washington Redskin trademarks in Canada. However, there is a lesson in this not just for sports franchisees but for all trademark owners – choose your trademark’s carefully because your decisions might come back to haunt you years later.
For more information please contact:
Scott Miller
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T: 613.801.1099
