Exercise Caution When Choosing a Trademark – MBM Successfully Expunges The Athletic Club & Design Trademark and Prohibits its Use in Canada.
For Immediate Release, July 11, 2014
On July 9, 2014, Mr. Justice Russell of the Federal Court released his decision in Ottawa Athletic Club Inc. v. The Athletic Club Group Inc. (2014 FC 672).
In a proceeding commenced by Notice of Application (a matter where there is no viva voce evidence but rather affidavits and cross-examination occurring outside the Court), Mr. Justice Russell expunged The Athletic Club & Design trademark – registered February 22, 2005 which claimed use from 1997 – and granted a permanent prohibition (injunction) to prevent the use of the trademark and its common law equivalent.
The decision is 150 pages and provides a detailed synopsis of the law and evidence necessary for a determination of:
- when a composite trademark ( a trademark incorporating words and a design) will be found to be clearly descriptive of the character of the wares/services in association with which it is used;
- whether a trademark is distinctive;
- when any trademark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind of any wares/services;
- when a trademark is the name in any language of any wares/services in connection with which it is used;
- the effect of a disclaimer on questions relating to clearly descriptive, distinctiveness, and bona fide commercial usage;
- whether the 5 year limitation period to assert the ground of a confusing trademark in an expungement proceeding should be waived through imputed knowledge through an adverse interest that the person who adopted the registered trademark did so with knowledge of the previously used trademark; and
- when an affiant must disclose documents in connection with a cross-examination.
In obtaining the judgement MBM relied upon a variety of evidentiary sources including hundreds of newspaper articles, legislation and judicial decision citing the term ‘Athletic Club’, confirmation of third party use of the term ‘Athletic Club’, internet searches, corporate searches, trademark searches, cross examination, etc…
The decision will likely be a leading resource for trademark practitioners and those wanting to understand evidentiary requirements and the law in Canada relating to the subjects described above.
If you would like to learn more about the decision please do not hesitate to contact the lead lawyer on the case, Scott Miller or any other member of the MBM litigation team who assisted including Jonathan Roch or Jahangir Valiani.
Scott Miller
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Jonathan Roch
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Jahangir Valiani
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Protecting the Extraction Industry Through Protection of Intellectual Property
By Randy Marusyk, October 8th, 2014
Canada’s abounds with underground riches—the mining, quarrying, oil and gas sectors contributed $124.6 billion to Canada’s economy in 2012, but it faces big competition on the world stage. Staying relevant in the global market will be a key to Canada’s continued economic success. Canada can only stay relevant by continuing to innovate—we must establish ourselves as leaders in cutting edge mining innovation and technology.
The international agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is a critical tool in the protection of Canada’s innovation—it’s intellectual property. Through the TRIPS agreement, Canadian inventors can file their patents worldwide, and receive extended periods of protection, dating back to their Canadian filing date. Filing for a patent early gives the innovator protection not only in Canada, but in all of the 160 countries that are party to the TRIPS agreement.
Canada’s Patent Act is the legal instrument that rewards the first person to file for a patent. Innovators may sometimes feel like an idea ‘just isn’t ready yet’, but that should not prevent inventors from filing for a patent. The Patent Act’s three requirements for patentable technology are as follows: 1. the technology must be new; 2. the technology must be useful; 3. the technology cannot be an obvious permutation of an existing technology. Inventions do not have to be sold or even marketed to qualify for patents. Early filing is key to protecting Canada’s innovation.
Of equal importance to seeking early patent protection for mining technology is whether one has freedom to operate a given technology in Canada and abroad. The existence of patents owned by others can block a party from operating until they obtain a license under the patent. Worldwide patent databases are powerful tools that can tell a company if they have freedom to operate in any particular technological area.
Databases provide much more than a list of patent titles and owners. With these databases, intellectual property lawyers can explore, monitor and map the patent space for any given field. Visual maps, such as the one shown below, can display the areas within a sector that are crowded, or becoming crowded with patents. Knowing where patents are encroaching can help an innovator keep the space around hers or his technology covered by their own patents. Databases can also tell innovators and corporations whether their operating space is already patented, and whether they may require licenses from third parties. Finally, these patent mapping tools can help innovators identify the competitors’ presence in any given technological area.
Patent Density Map Showing Major Patents owned by Technology Resources Pty.
For more information about the benefit to your company on early filing and use of patent databases, contact Randy Marusyk, Managing Partner at MBM Intellectual Property Law at:
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Federal Court of Appeal Confirms Use of Pop Culture to Demonstrate Fame of a Mark
TEQUILA CUERVO, S.A DE C.V. v. EMPRESSA CUBANA DEL TABACO, TRADING ALSO AS CUBATABACO AND CORPORATION HABANOS S.A., 2015 FCA 15
By Jonathan Roch, January 23rd, 2015
On January 21, 2015, the Federal Court of Appeal affirmed the Federal Court's decision of October 4, 2013 which refused Tequila Cuervo’s application for the mark LAZARO COHIBA in association with rum.
Federal Court
The Federal Court refused the trademark application for LAZARO COHIBA in association with the proposed use of rum on the basis that it was confusing with the registered COHIBA marks used in association with cigars and tobacco.
MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by relying upon references in widely distributed films (Hotel Rwanda, Bad Boys II and Into the Blue), television shows (Sex in the City and The Simpsons), music (including Jay-Z, Lil Wayne, P. Diddy and Busta Rhymes) and magazines (Cigar Aficionado).
Expert evidence was adduced to explain that the COHIBA references described above were more than the average product placement. Rather, the COHIBA references were a means of borrowing the credibility of the brand as a symbol of status, wealth, power, intrigue, luxury and mystery and of reflecting those qualities upon the characters of the pop culture references. Expert evidence also established that smokers are more likely consumers of alcohol products and that in the minds of smokers these products are linked. Finally, additional evidence further demonstrated an overlap in the alcohol and tobacco/cigar trades (LCBO and SAQ agency stores).
Federal Court of Appeal
In its appeal, Tequila Cuervo asserted, amongst other arguments, that the Federal Court’s determination that the COHIBA marks are iconic and/or famous ignored the Supreme Court principles for dealing with famous marks, adopted a new test to determine fame, and fundamentally changed the test for assessing a likelihood of confusion for famous marks. Moreover, they pleaded that the lower court erroneously treated the fame of the COHIBA marks as an overarching factor in the evaluation of the likelihood of confusion. The Court ruled that no errors had been committed and dismissed the appeal with costs.
This decision is significant as it is a positive acknowledgment by the Federal Court of Appeal that the notoriety of a brand may be established by references to the brand in popular culture. This case is an example of how trademark practitioners should not be afraid to creatively use the evidence at their disposal to advance their clients’ causes.
For more information please contact Jonathan Roch or Scott Miller
Jonathan Roch, Partner
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Scott Miller, Partner
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Canada Just Became a More Attractive Jurisdiction to Litigate (2)
By Scott Miller, June 29th, 2015
On June 24, 2015, the Chief Justice of the Federal Court issued a practice notice outlining new procedures to streamline the time and cost of complex litigation, as outlined below:
- There will be a “short notice” wait list for earlier trial dates for those who wish to participate;
- Documentary discovery will be reduced and proportionate to the complexity of the action. A party will only be permitted up to 1 day of oral discovery per week of trial, or portion thereof, to a maximum of 4 days of oral discovery;
- No questions during discovery will be allowed to be taken under advisement. Questions can only be objected to with significant cost sanctions for unreasonable objections. Moreover, refusal motions will be permitted only until discoveries are completed and will be restricted to 1 hour per day of discovery;
- Technology primers may be provided before trial to expedite hearings; and
- All demonstrative evidence must be exchanged at least 60 days before trial;
Canada’s streamlined Federal Court procedural rules may be used as a tool to encourage both Canadian and global settlements. Likewise, if litigation is necessary, Canada’s Federal Court approach provides a speedy and cost effective forum to determine intellectual property rights.
For more information about this topic please contact:
Scott Miller, Partner, Head of the Litigation Department
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