Region: North America

The Canadian Trademarks Opposition Board has refused an application to register OH CANADA as a trademark for chocolate bars and candy on the grounds that it was confusingly similar to the mark OH HENRY! used for the same type of products.

21 April 2004

In <i>Mattel Inc v 3894207 Canada Inc</i>, the Federal Court of Canada has dismissed the plaintiff's opposition to the registration of BARBIE'S and design for restaurant services. It held that the proposed registration was unlikely to cause confusion with the plaintiff's famous BARBIE mark for toys because there was no connection between the goods covered by the plaintiff's mark and the services offered by the defendant.

19 April 2004

In <i>Diners Club International Ltd v Planet Explorer Inc</i>, a CIRA panel has ruled that the bad-faith requirement, which is one of the three conditions for transfer set out in the CIRA Domain Name Dispute Resolution Policy, need not be satisfied. The panel found that because the registrant did not have a legitimate interest in the domain names at issue, the existence of bad faith was irrelevant.

15 April 2004

In <i>Alticor Inc v Nutravite Pharmaceuticals Inc</i>, the Federal Court of Canada has ruled that the defendant's use of its NUTRAVITE mark did not infringe the plaintiff's NUTRILITE mark for identical goods. The court gave little weight to the Trademark Opposition Board decision to refuse the NUTRAVITE registration on the basis that it was confusingly similar to the NUTRILITE mark.

07 April 2004

In <i>Best Canadian Motor Inns Ltd v Best Western International Inc</i>, the Federal Court of Canada has refused registration of the trademark BEST CANADIAN MOTOR INNS and design. Contrary to a previous decision, the court held that design elements that are combined with textual components should be disregarded in deciding whether a trademark is descriptive as sounded.

24 March 2004

In <i>Clark O'Neill Inc v PharmaCommunications Group Inc</i>, the Federal Court of Canada has confirmed a decision to expunge the plaintiff's SINGLE SOURCE SAMPLING mark on the grounds of non-use. The court held that use of the mark only stemmed from spillover advertising from the United States and there were no special circumstances justifying non-use of the trademark in Canada.

18 March 2004

A British Columbia court has dismissed an injunction sought by SoftwareGuy, which alleged that (i) Software King's name and domain name were confusinglysimilar to its own, and (ii) Software King's website had been copied from itsown. The court found that Software Guy failed to establish a <i>prima facie</i>case of either passing off or copyright infringement.

12 March 2004

In <i>TELUS Corporation v Telecommunication Workers Union</i>, the British Columbia Supreme Court has granted an interlocutory injunction restraining the defendant - a body representing the plaintiff's employees - from broadcasting television commercials criticizing the plaintiff, which were parodies of the plaintiff's own commercials. The decision follows case law that has established that free speech rights cannot be used in a way that infringes IP rights.

02 March 2004

In <i>In Re Acer America Corporation</i>, the Canadian Trademarks Opposition Board has continued the trend towards expanding the level of trademark protection available to intangible goods and specifically computer software. Following this decision, the concept of use has been further extended to allow greater trademark protection for intangible goods that are not distributed through traditional means.

23 February 2004

The Ontario Limitations Act 2002, which limits the period in which an action may be brought to court to two years from the date a claim is discovered, has come into force. This will affect trademark litigation as the Canadian Trademarks Act does not prescribe a limitation period that would supersede that of the new Ontario act.

17 February 2004