2024 was a better year for trademark owners and their advisors. The impact of the pandemic is behind us, and the processing delays in the Trademark Office are significantly improved.
There have been several important decisions in the Federal Court. These decisions have considered infringement of a trademark registration for a pharmaceutical preparation, the application of the special circumstances exception in section 45 proceedings where there has been a change in the ownership of the mark, the admissibility of evidence based on an internet or online survey, the availability of interlocutory injunctions, and the considerations relating to initiating an application in the Federal Court.
In Novartis AG v. Biogen 2024 FC 52 the plaintiff successfully brought an action for trademark infringement of its trademark registration for a pharmaceutical preparation for use in ophthalmology and pharmaceutical preparations for prevention and treatment of ocular disorders and diseases. The decision illustrates the court’s approach to infringement in a pharmaceutical context.
In Comite Interprofessionnel du Vin de Champagne v. Coors Brewing Company 2024 FC 169 the application of the special circumstances exception in section 45 proceedings where there has been a change in the ownership of the mark was considered. A more detailed comment is available at Section 45 Proceedings, a Change in the Ownership of the Mark and Special Circumstances
In Centric Brands Holding LLC v. Stikeman Elliot LLP 2024 FC 204 at para 40 and following; A decision of the Federal Court considers the impact of the special circumstances exception in section 45 proceedings where there has been a change in the ownership of the mark. The evidence before the court was insufficient to support a conclusion that special circumstances existed. A more detailed comment is available at Section 45 proceedings and a Change in the Ownership of the Mark
In Promotion in Motion, Inc. v Hershey Chocolate & Confectionery LLC 2024 FC 556 an internet or online survey was excluded because questions suffered from a priming bias and the survey was flawed since the participants were not observed when they answered the questions. A more detailed comment is available at Not a Good Day for the Use of Survey Evidence in Trademark Cases An appeal to the Federal Court of Appeal is pending.
It may not be a prudent course of action to institute an opposition that exposes the problems relating to the opponent’s trademark to scrutiny. D.M.C. SRL v. Giusti 2024 FC 605. A more detailed comment is available at Hope Springs Eternal
In Wanakome Inc. v. Martin 2024 FC 688 there was to be a shareholder’s agreement with the Martins and the controlling shareholder, but their relationship soured. Wanakome Inc. applied in Canada for the trademark WANAKOME, which was opposed by the Martins and sued them for infringement, among other claims. The Martins asserted that the plaintiff had misappropriated the Wanakome Brand and was abusively claiming sole ownership of the Brand. The decision illustrates how things can go wrong in this context. For a more detailed comment see How Not To Set Up a Start Up
A decision of the Federal Court illustrates the impact of state of Register use in opposition proceedings. Mécanique de performance Panthera Motorsports Inc. c. Jaguar Land Rover Limited 2024 FC 764. For a more detailed comment see How to Use State of the Register Evidence
Patagonia, Inc. caused the Registrar to issue a notice under section 45 of the Trademarks Act, requiring the Labatt Brewing Company Limited to show use of the trademark PATIGONIA during the three-year period before the issuance of the notice. While the Court emphasizes the summary nature of the section 45 proceedings the fact remains that they can become technical and detailed. Brand owners should realize this when gathering the evidence to support trademark use in the relevant period. Patagonia, Inc. v. Labatt Brewing Company Limited 2024 FC 920. For more detailed comment see The Consequences of Being the First Link in the Chain of Distribution
A recent decision of the Federal Court illustrates the importance of being the first to use a trademark. F.I.A.L. Finanziaria Industrie Alto Lario, S.P.A. v. Galperti SRL 2024 FC 976. For a more detailed comment see The Importance of Being the First to Use a Trademark
In another battle concerning trademark use in section 45 proceedings, no effort was spared in attacking the applicant’s registration. On appeal the court said that section 45 provides a summary procedure for clearing “dead wood” from the Register of Trademarks. It is not intended to resolve contentious issues between competing commercial interests. Biologische Heilmittel Heel GmbH v. Barrette Legal Inc. 2024 FC 1178. For a more detailed comment see The Summary Nature of Section 45 Proceedings
After a long and convoluted history of litigation between the parties, the Federal Court of Appeal granted an accounting of profits to the applicant for passing off by the defendant. The profits were to be determined by way of a reference. In keeping with the history, the reference was hotly contested. Group III International Ltd. v. Travelway Group International Ltd. 2024 FC 1195. For a more detailed comment see An Accounting of Profits for Passing Off
A decision of the Federal Court expunged the registration of a trademark under section 57 of the Trademarks Act based on the applicant’s unregistered trademark. The decision usefully reviews the application of the relevant principles. It comes as a surprise to many people that the owners of unregistered trademarks do have rights. 51.ca Inc. v. Huang 2024 FC 1202 For a more detailed comment see Common Law Trademark Rights
A decision of the Federal Court illustrates the importance of having a clear understanding and a written agreement concerning who owns the underlying intellectual property rights in a new business venture. It is important to work out an appropriate structure at the beginning to deal with intellectual property rights and profit sharing and to have it confirmed in a written agreement. 2572495 Ontario Inc. v. Terlin Construction Ltd. 2024 FC 1366. For a more detailed comment see Get it in Writing!
Care must be exercised when choosing to bring an application in the Federal Court as opposed to an action. iFit Inc v. Safe Sweat Fitness Ltd., 2024 FC 1406 (CanLII). For a more detailed comment see Application v. Action
A decision of the Federal Court deals with the concept of incidental and ancillary services and the obligation to show use of a trademark in association with services. Little Brown Box Pizza, LLC v. DJB 2024 FC 1592. For a more detailed comment see Incidental and Ancillary Services
While there is agreement about the principles that apply to determine whether a trademark is clearly descriptive their application in a specific case may not be. In Auberge & Spa Le Nordik Inc. v. Therme Development (CY) Ltd. 2024 FC 1765 the applicant brought application in the Federal Court to expunge specific services from trademark registrations for THERME, and related marks owned by Therme Development (CY) Ltd. The attacked services primarily related to health spa resort services. The test for determining whether a trademark is clearly descriptive is the immediate or first impression formed by the ordinary user or purchaser of the services in issue. The determination must not be based on research into or critical analysis of the meaning of the words. The common meaning of words in their ordinary and popular sense must be determined and the perspective of experts or people with special knowledge may not be representative of the average ordinary purchaser. Adding design features to a composite mark may not avoid the limitation. A trademark, which when sounded, is clearly descriptive of the character or quality of the services in issue, may not be registrable despite the design features. For a more detailed comment see SPA Days in the Federal Court
A decision of the Ontario Supreme Court clarifies what is required to obtain an interlocutory injunction and shows the risks of not meeting those requirements. Biosteel Inc. v. Cizzle Brands Ltd., 2024 ONSC 5515 (CanLII). For a more detailed comment see Passing OFF by the Elements
In Amer Sports Canada Inc. v. Adidas Canada Limited 2024 BCSC 3 the Judge was not persuaded that potential infringement could be fully remedied by an award of damages. Despite the methodology underlying any approach to assessment, money may be a poor substitute for the uniqueness or distinctiveness of a trademark.
If you have questions, please contact me at mckeown@gsnh.com
John McKeown
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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